Patents for computer programmes are not patentable in Europe. That seems like a simple statement. But a recent high level decision shows that it is far from simple to apply.
In Lantana v Comptroller General, the English Court of Appeal has looked again at the exclusion of software from patentability.
Lantana applied for a patent relating to a method of extracting and transferring data between computers. Someone working abroad, for example, could use the method to access documents on her home computer. By avoiding the need for continuous connection between the two computers the user is not subject to being hacked or losing connectivity.
European patent law rules out patents for computer programmes ‘as such’. This rather slippery concept comes from Article 52 of the European Patent Convention, and is made law in the UK by the Patents Act 1977. There have been numerous cases around the borderline both in the national and European patent offices and in the courts.
What a court or office has to do is to identify the contribution made by the invention and decide whether it constitutes purely excluded matter. To get past the exclusion of computer programmes, the court or office looks for some inventive step outside the computer programme - a ‘technical contribution’.
This is not a straightforward matter. In a case decided last year the Court of Appeal said ‘it is not possible to define a clear rule to determine whether or not a program is excluded, and each case must be determined on its own facts’. (HTC v Apple). That decision continues the thought process (see paragraphs 45-49) with the following ideas:
- The analysis must be of substance rather than form – the fact that improvements are made to software or hardware does not make a difference;
- The exclusions operate cumulatively – you cannot, for example, patent a combination of a mathematical method and a computer programme when each is in an excluded category;
- Consider what the invention contributes to the art as a matter of practical reality over and above the fact that it relates to a computer programme;
- Consider whether the invention solves a problem which is essentially technical. It may be patentable if it solves a technical problem within the computer, resulting in an improved device, or if it solves a technical problem outside the computer, for example, controlling an improved technical process.
In Lantana’s case, there was no dispute about the novelty and inventiveness of the claim. It all revolved around the exclusion. The Court of Appeal agreed with both the UK Intellectual Property Office and the High Court that Lantana’s invention fell the wrong side of the line.
Although all three levels deciding this case came down on the same side, once again the reasoning is not easy to apply more generally. And the approach of the European Patent Office to the same question is not the same. This leaves those operating in software related fields in a difficult spot. If you are faced with an infringement suit, or applying for your own patents, how can you be sure whether the exclusion destroys patentability? In many situations working through the guidance in the cases will answer the question, but it will not always get you to the level of certainty you need.