Patenting Software – A False Sense Of Security?

British software companies are becoming increasingly aware of the need to protect their market position and value by obtaining patent protection for their key software products. As the market for private and public equity funding becomes more competitive, investors will look out for companies with clear intellectual property protection programmes that include software patent protection. Providing exclusive rights to an invention, the idea itself, a patent offers a valuable monopoly to the creator separate from the protection of copyright, which covers only the expression of an idea.

Whilst traditionally software products have not per se been protectable through patent law, a change is now seen in the new and more flexible approach being taken by the European and UK Patent Offices. The Patent Office shows no sign of reversing this trend following the commencement of an important and broad consultation process that has just begun, the deadline for responses to which is 15th December 2000, aimed by the Patent Office at all key participants in the software industry, programmers, systems analysts, investors, home users and general business persons. The consultation paper raises the critical question, is the current UK regime for patent protecting software adequate? Should we follow the US example, where generally computer software and business techniques are patentable? The European Commission is also consulting on those issues. However, while the administrative approach may be progressing, it is unclear whether the English courts will embrace this flexibility to recognise pure software patents other than in cases of exceptional technical contribution. The consequence may therefore be that, while you may be able to register a UK software patent, you may not be able subsequently to enforce it in English courts, absent of revised legislation.

A patent prevents anyone other than the owner of the patent (and anyone authorised by the owner) from implementing the invention claimed in the patent for 20 years without the owner's permission. It is a temporary monopoly over the invention, an exclusive right to exploit that invention. It differs from copyright in that copyright protects the expression of an idea rather than the idea itself. It is, in general, a more comprehensive protection. To enforce a patent, you do not need to prove that someone has copied you work. It may prohibit the independent creation of some inventions. In practical terms, copyright subsists automatically whereas a patent must be applied for.

Not all inventions may be protected by a patent. There are specific requirements that must be met if a patent is to be granted, set out in the Patents Act 1977 and the European Patent Convention ("the EPC").

1. The invention must be new. This means that before the patent is first filed, there must not have been a disclosure of the invention, even by the inventor. However, an inventor may wish deliberately to release details of an invention into the public domain to prevent a third party from subsequently claiming prior right to the invention and thus preventing the former inventor from exploiting the invention. It may otherwise be difficult to show that he got there first if such a dispute subsequently arises. At least disclosure will allow him to exploit the invention although not exclusively.
2. The invention must involve an inventive step. Thus, it must not be obvious to someone who would be skilled in the relevant technology at the date of filing.
3. The invention must be capable of industrial application, meaning any physical activity of a technical nature (not including an aesthetic art).
4. The invention must not:

• be a discovery, scientific theory or mathematical method;
• be a literary, dramatic, musical, artistic or aesthetic work;
• be a scheme, rule or method for performing a mental act, playing a game or doing business on a programme for a computer; or
• be the mere presentation of information.

However, these exclusions only apply to the extent that the patent application relates to the exclusion "as such". So if the application relates to a software programme "as such" it is, on a literal interpretation, not patentable!

The question of whether these requirements are met will be considered when the patent application is submitted to either the UK Patent Office or, for a pan European application, to the European Patent Office.

The requirements may also be considered if the patent owner ever seeks to enforce the patent against someone he believes is infringing it. The court may consider whether the patent is enforceable at all. If there is a divergence between these two authorities on the circumstances in which a software product may be patent protectable, the security granted following a successful application may be illusory if subsequently not accepted in the courts.

The UK Patent Office has, since April 1999 adopted a flexible approach to determining the acceptability of software patent applications. Traditionally their policy was generally not to accept claims to programs on the basis that the claim did not deliver the technical contribution that underpinned the invention. Now the Patent Office accepts claims to computer programs themselves, provided that when run on a computer, the program produces a technical effect which is more than would necessarily follow merely from the running of any program on a computer and which is such that the solution created by the program is not itself an excluded matter under the Patents Act. Automated methods for performing mental acts and programs concerning the mere presentation of information should continue to be refused patent protection.

Unfortunately, there is a contrast between the approaches taken by the different authorities in determining whether a program makes a technical contribution. The UK Patent Office claims to follow the approach of the English courts and European Technical Board of Appeal. However, there is a lack of a consistent approach between these two bodies. The English courts have in many cases been reluctant to recognise a technical contribution so that the relevant invention could not be regarded as consisting of a computer program per se. They insist that each case must be decided on its own facts and provide little guidance, save for identifying what does not amount to a technical contribution. Thus, in one case, the mere fact that a computer program provides a new tool which avoids labour and error did not mean that it made a technical contribution because the avoidance of labour and error was the sort of advantage that was provided by computer in any event. A program that could amalgamate two crystal structures to create a third synthetic structure was merely automating a process traditionally done by hand using plastic models.

The European Technical Board of Appeals, interpreting the EPC, has taken a more permissive approach in two IBM cases, which acted as the catalyst for the change of policy at the UK Patent Office. It considered that so long as programs are able to produce a technical effect, which can mean the ability to solve a technical program or creating further effects of a technical character, all computer programs must be considered as inventions.

The Board specifically refers to the standard physical modifications of the hardware deriving from the execution of the program as being a technical effect that cannot amount to the technical character required for the product to be patentable. But this is a very low hurdle to overcome in order to claim patentability. Thus, a program relating to a method of displaying information on a computer screen operating under a windows environment in the event that multiple open windows would otherwise result in the obscuring of information was patentable. This decision is at variance with the approach of the English courts and the Patents Act 1977 that the technical contribution must not amount to a solution that is itself excluded, in this case the more presentation of information or a computer program per se.

The problem of judicial bodies interpreting patent protection issues differently may be resolved following the introduction of the proposed single EU wide patent. It would offer a simpler application and more consistent enforcement procedure compared to the current procedures, which require inventors who wish to obtain Europe wide protection to obtain separate patents for each country through the European Patent Office.

The European Commission has also suggested that disputes relating to a Community Patent should be dealt with by a new centralised tribunal to be set up within the European Court of Justice.

Despite the potential divergence in approach taken by the UK Patent Office, the English courts and the European Patent Office and Technical Board of Appeal, companies who consider their proprietary software products to be a critical element of their business should do all they can to implement an effective intellectual property protection program. Patent protection must form a critical part of this program. Demonstrating the key patent requirements in respect of future software developments and impending product launches is vital, and being able to demonstrate the technical contribution made by the product is required even at the application stage. But applicants should be aware that a successful patent application does not necessarily guarantee successful enforcement if your patent is brought before the courts.