Can you patent software?

23 January 2017

The information technology sector is incredibly fast moving and new developments have the potential to significantly impact our lives. Whether it be a new phone release, a new processing chip or a new data compression algorithm, behind these technological advances inventors are working towards processing increasing amounts of data through smaller widgets with greater efficiency.

Such innovation can be immensely valuable, and when an innovation is valuable, thoughts turn to patent protection. However, there are particular considerations when patenting code – some computer-implemented inventions are deemed worthy of patent protection and some are not.

The law, as written both in the UK Patents Act and the European Patent Convention can appear confusing – a patent may be granted for inventions which are new, inventive and can be used in industry. However, there is a list of things which are deemed non-inventions for the purposes of the law, which includes scientific theories, mathematical methods, business methods and programs for computers. At this point, you may think there’s no hope for computer software, but you’d be wrong. These things are excluded only to the extent that a patent or application for a patent relates to that thing, "as such".

Patent applicants and attorneys spend considerable time arguing that their computer program counts as a 'real' invention, more than just a computer program ‘as such’. The boundary can be hard to define simply, but consideration of some example cases which have been considered by the European Patent Office (EPO) and the UK courts can help to identify some ground rules.

An early case considered video image processing software. The invention provided a new computer program for image filtering, suggesting processing a data array representing the image a bit at a time, each time performing a relatively easy computation. (In the context of the patent application, this replaced relative complex processing operations, including those which processed the data array all in one go, and meant that the number of computations required could be reduced while still producing a good result.

The EPO noted that the computer program could be implemented by a computer which was utterly conventional. Moreover, the filters appeared to be essentially mathematical methods. Surely then this idea was directed towards two non-inventions? But the EPO also noted that electrical filters were intrinsically patentable, even when manufactured according to a mathematical method. Furthermore, there was a real technical benefit provided by this invention, which saved processing resources while producing a real world result - an image.  

The EPO decided there was no basis for treating digital filters differently from analogue filters. On top of that, in this case, the mathematical methods were used as part of a technical process, carried out by technical means (a computer) on a physical entity (an image stored as an electrical signal). Therefore this was not an attempt to secure protection for the mathematical method or a computer program as such; instead the patent application was directed towards a technical process carried out under the control of a computer.

Compare this to an application directed to a tool for modelling crystal structures, which could automatically combine input compounds and display the structure. This was much more time efficient than the sticks and balls manual techniques previously used. There was no arguing that the innovation was useful, but was it patentable? This case was before the UK courts, but they applied reasoning similar to that used by the EPO: was there a contribution which could be considered to be ‘technical’? Despite the fact the invention would save time and frustration, the courts thought no. The invention provided only the advantages you would expect from a computer, mostly speed. This is not technical, and the application was refused. 

Inventions to consider

How about X-ray apparatus in which X-ray tubes are controlled by a software routine (operated on a conventional computer) to provide an optimum exposure combined with protection against overloading of the X-ray tubes? Patent eligible? Absolutely! X-ray tubes last longer - a clear technical effect. Any time that running a computer program results in a direct technical effect on a physical entity, it is unlikely to be considered a computer program ‘as such’.

What about an automated securities trading system implemented on a conventional computer? Patent eligible? No - the contribution made by the invention (automation of trading) is in the area of business methods, which - as mentioned above - are deemed ‘non-inventions’ according to the law. The contribution made by the invention should itself be in an area which is outside the listed non-inventions.

In programming for touch screens allowing multi touch input (e.g. ‘pinch’ actions), a check is made as to whether multi-touch functionality is enabled for a particular portion of a screen before transmitting or ignoring a second touch. This can ‘short circuit’ a multi-touch event when the functionality is not required so a programmer does not have to consider the possibility. Patent eligible? Yes- the device operates in a new and improved way and presents an improved interface to application software writers.

Using values in RAM to determine if a power up was a ‘power on’ event or a software reset. If a software reset is identified, the restart could skip re-initialisation and reloading steps. Patent eligible? Yes- It makes a contribution- quicker restarts- which was not in an excluded field, and which employed technical means (in this case, microprocessors communicating a decision as to the type of restart). This changed the way the computer itself worked.

A theme start to emerge: when considering the patentability of computer implemented inventions, consider the contribution provided by your computer program. For example, does it have direct a real world effect, like giving you a longer lasting lightbulb? Does it result in a better computer (for example, providing a better interface, operating at the level of the architecture of the computer and/or resulting in it running more efficiently and effectively as a computer)? If so, it may be patentable. Of course, the idea still needs to be judged to be new and non-obvious.

Caroline Day

Caroline Day

Partner

Our Expert
Caroline Day
Caroline Day
Location: Bristol (UK)

Haseltine Lake - Cookie Disclaimer

Our website uses cookies to provide you with a better online experience. If you continue to use our site without changing your browser settings, we'll assume you are happy to receive cookies. Please read our Cookie policy for more information.

Do not show this message again