Computer implemented patents potentially face exclusion from patentability by way of section 1(2) of the Patents Act 1977 as "a program for a computeras such".

The Court of Appeal in Aerotel framed the following four-step test:

  1. Properly construe the claim;
  2. Identify what the actual contribution is (i.e. identify what the claimed invention adds over the prior art);
  3. Ask whether the actual contribution falls solely within the excluded subject matter; and
  4. Check whether the actual or alleged contribution is actually technical in nature.

The fact that the High Court rejected the first post-Aerotel patents considered in Cappellini and Bloomberg (Pumfrey J) and Oneida (Floyd) will not be welcome news to patentees. However, the Court has at least shed a little light on the application of the test. The two take home points being:

  • The Aereotel test ultimately relates to the form of the claims; and
  • Step 4 is redundant, although relevant technical effects must be identified in step 3.

The Aereotel test ultimately relates to the form of the claims

In Cappellini and Bloomberg Pumfrey J explained that "questions of patentable subject matter are essentially questions relating to the form of the claims…objections…are primarily objections to width of claim, although it must be remembered that it may be impossible to draft a claim to patentable subject matter that is properly supported by the disclosure"

So, despite these recent rejections, there is some good news for software patentees; Claims can be "tethered" to a relevant technical effect to increase the prospects of patentability. In drafting a software patent, patentees should consider, for example tethering claims to:

  • novel and inventive hardware.
  • novel and inventive physical arrangement of known hardware.

Step 4 is redundant, although relevant technical effects must be identified in step 3.

In Aerotel the Court stated that step 4 "may not be necessary because the third step should have covered that." However, the concept of "technical effect" may be considered in applying step 3. i.e. if a technical effect is merely the effect of entirely excluded subject matter, it is not a "relevant technical effect". This point is illustrated in the recent case law.

Bloomberg's patent claimed a method of distributing data in which the data transmitted to a user was mapped to a form suitable for the application to be used by the user in question. The contribution lay in the idea of appropriately treating data to match the requirements of a particular end user prior to its transmission to that end user. Crucially, the physical aspects of the system were not important. Bloomberg's patent was rejected as the contribution made was a computer program as such. In other words, although the new computer processing amounted to a "technical effect", the "technical effect" was merely the effects of loading a program onto a computer. This is the effect of entirely excluded subject matter (a computer program) and therefore not a "relevant technical effect".

Cappellini’s invention was a novel algorithm for determining the routes to be taken by a carrier when delivering packages. The contribution lay in the instructions given to the drivers as to where and when to begin, break and end their journeys. Cappellini’s patent was rejected as the contribution made was a method of doing business as such. In other words, although moving vehicles around according to a routing algorithm did amount to a "technical effect", the "technical effect" was the effect of entirely excluded subject matter (a business method).

The claimed invention in Oneida related to gaming apparatus arranged to perform the two stage gaming method. The contribution was an improved gaming system: the number of processing steps per bet were reduced; the number of data transmission steps were reduced; there was no need to make an account check for every bet and the system was more secure and robust. However, these contributions were simply the effects of placing the new business method program on to a computer. Although the claims were tethered to the physical apparatus, there was nothing new or inventive in the claimed physical apparatus and the patent was rejected as a method of doing business as such.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.