Is it Possible to Patent Software?

There seem to be obstacles placed in the way of obtaining a patent for software in Europe and especially in the UK. Is this so? First, let us look at the legal position.

Legal Background

The UK Patents Act 1977 section 1.(2) excludes from being an invention for the purposes of the Act in section 1.(2)(c) “………………..or a program for a computer” whose final paragraph adds the rider “only to the extent that a patent or application for a patent relates to that thing as such.”

Various judgments also apply in the UK. Computer Software claims are patentable provided they pass the Aerotel/Macrossan Test, the approach being a 4 step assessment;

(1) properly construe the claim
(2) identify the actual contribution;
(3) ask whether it falls solely within the excluded subject matter;
(4) check whether the actual or alleged contribution is actually technical in nature”.

The Aerotel/Macrossan test must also be tempered with the Symbian judgement. Applications, deemed un-patentable because of the Aerotel/Macrsossan test, can in fact be patentable because of the Symbian judgement. The Symbian judgement deemed that software, which acted as software alone, but nonetheless overcame a problem in a standard processor to increase speed of execution of DLLs, was indeed patentable. To quote the final paragraphs of that judgment:

“What is of significance here is that the claimed invention required no new hardware or arrangement of hardware, did not fix any perceived technical shortcoming in the computer itself, and was purely concerned with the processing of data. This was done and done only by a computer program. ”

“In the present case there is a perceived technical shortcoming caused by modification to the DLL as a result of updates to the computer’s functionality. This is not a case where the invention is limited to the processing of data. If an increase in the speed at which the computer works can take the program out of Art.52 (3) (see Aerotel at paragraph 92) it is difficult to see why the improved reliability of the machine brought about by the re-organisation of the DLL in its operating system does not.”

What about Europe? Article 52 of the European Patent Convention reads: (1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step. (2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
……..(c)………………schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.”

Comparison between UK and Europe Shows that Article 52 of the European Patent Convention is very similar to Section 1 of the UK Patents Act. However, the Aerotel./Macrossan test that a UK patent must pass makes the UK a much harder place to obtain a software patent. The UK portions of patents, granted in Europe, are often considered un-patentable when attempts are made to register the UK portion.

So, that’s the “heavy” stuff over. That defines the problem, what is the solution?

What you can patent

Please note that neither UK nor Europe bans software inventions, only patent claims to the software itself. Even that is not absolutely true, as illustrated by the Symbian judgment.

In general terms, if software does “only what you would expect software to do anyway”, it is probably not patentable. One example of software doing no more than you would expect are Graphic User Interfaces (GUIs). They are notoriously difficult to patent in the UK and Europe. But, if the software does something that provides novel and inventive technical merit, within a machine, system or method, such a machine, system or method may be patentable.

What is meant by technical? It must have a real effect on real “stuff”. The effect may be, to give a few examples, to process images, route and change data signals, control machinery, adjust photocopier image quality, adjust and switch radio frequencies and sending points, recognize and interpret image data, select modes of operation in response to conditions, and many others. Signals and measurements are now thought of as real “stuff”. Computer processors themselves are also considered real “stuff”. If an invention speeds up the efficiency of a processor, saves memory, or otherwise improves the functionality of the computer, it is patentable.

What is not thought of as real “stuff” is usually deemed “business methods”, which are considered un-patentable in the UK and Europe. For example, a motor diagnosis system relaying motor measurements to a remote central point where an expert system analyzed the data and sent back a report for repair was considered patentable. What was not considered patentable was the equivalent part ordering system used to order and ship replacement parts in advance of failure. That was considered a business method.

In another example, a reel spinning mechanism is a “one armed bandit” gambling machine was considered patentable, the mechanism including various software implemented timers employed to control reel startup and braking. What was not considered patentable, in the same machine, was another set of software timers used to control automatic “nudging” of the reels in a pseudo random manner “to keep up the interest of the player”. Keeping up the interest of the player was considered a method of conducting business.

Business operating schemes such as insurance methods, advertising schemes, and stock trading and pricing schemes, even if computerized, are clearly business methods and un-patentable, for that reason, in UK and Europe.

So, how do you go about patenting that part of software that is patentable? An apparatus or device can be implemented in various ways. The fact that one way can include use of a processor controlled by software does not prevent a patent being obtained for the apparatus or device, provided the apparatus or device is itself novel and inventive. A computer, running software, can be though of as a state sequence machine, which can also be implemented, to give a few examples, as hard wired logic such as TTL, ECL or CMOS, or can be embodied in a controller such as a PIC controller, or can be set into a programmable logic array. Numerous other embodiments are possible. The use of a programmed processor generally allows the state sequence to be potentially much larger than using other embodiments, but the principle remains. A computer is just a box of tricks. Provided the box of tricks is involved in doing something new and inventive to real “stuff”, the use of a computer is not, of itself, prohibitive to obtaining a patent.

To increase your chances to obtain a patent, the apparatus, system or method is better described in terms of functional blocks. Each block does a particular thing. Claims should be directed to the block, not the manner of implementation of the block. If calculation is involved, for example, claim the block as “calculating means” or “a calculator” or “a step of calculating”. Set out the blocks in one or more schematic block diagrams, illustrating the functional connectivity between the blocks. The behavior of each functional block can be described and illustrated in one or more flow charts.

Examples of purely software inventions that have gained patent protection in Europe include an optical character recognition (OCR) machine that distinguishes and sets out mathematical equations from other images or text, and a network comprising plural nodes each routing packet data and adjusting packet routing data according to assessed behavior of neighboring nodes. The character recognition machine was a programmed computer. Each network node was also a programmed processor. The activities were “real”.

Things are much easier in the USA. A patent, even for a GUI, can be obtained in the USA. The statutory definition of inventions that are eligible to receive patent protection is found in section 101 of title 35, United States Code. This section makes patents available for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

The USA is liberal in what it considers patentable. Software, even employing a mathematical method that provides an information presentation result, has been deemed patentable. A test of “being useful” is applied. If whatever it is produces a useful result, even as a business method, it is considered patentable.

There has been an inevitable connection in the USA between software and business methods. For those interested in the present state of Business Method/Software patents in the USA, you are invited to consult the ongoing legal situation of the Bilski case and the moderating effect it may have on the State Street Bank decision, which, for many years, was the benchmark for patentability in the USA.

I give a final optimistic note concerning software patents in the UK, sometimes considered the graveyard of all hope.

A claim, to a disc (or other carrier) bearing software, will be allowed provided the claim includes the software “when loaded into a processor causes the processor to perform as part of the (allowed) otherwise claimed apparatus, system or method”.

Who said you cannot patent software in the UK and Europe? You can!

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