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The patent puzzle: how to patent software

|26 October 2016|


Caroline Day, an Associate at major European intellectual property firm, Haseltine Lake, discusses the challenges of patenting computer programs in the UK and Europe and explores some of the solutions available.

The information technology sector is incredibly fast moving and new developments have the potential to impact significantly on 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.  Innovation is relentless and 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, while others are not.

The law, as written both in the UK Patents Act and the European Patent Convention (which governs a unitary application process potentially resulting in patents in a number of European countries), 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.  This 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 the use of a relatively small kernel (for example, an image sharpening or smoothing kernel) scanned across a data array to generate a new data array (which may itself be processed using another scanned kernel).  This method may be familiar to those working in image processing, or indeed those working on machine learning techniques. In the context of the patent application, this small scanned kernel replaced operations carried out using larger kernels 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.  Even more, 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). This, therefore, 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 then 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. So 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.

How about X-ray apparatus in which X-ray tubes are controlled by a software routine to provide an optimum exposure combined with adequate protection against overloading of the X-ray tubes for which a conventional computer may be used?Is it 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 and which carried out trading activities?

Patent eligible?  No – the contribution made by the invention was 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.

Some themes start to emerge, including some clear hooks from which to hang a patent application directed towards software: Consider the contribution provided by your computer program. 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.

Practical aspects

When protecting your computer-implemented invention, consider working with a patent attorney to draw out the patent eligible features.  It may be the case that the feature you view as the key selling point is different to the feature which attracts the attention of your patent attorney.  It will help to have the right people in the room, which could mean not just the innovator whose bright idea sparked the development project, but also the software engineer, who may have quietly solved technical problems in order to make the vision a reality. Ask yourself: what problems arose and what solutions were applied in development?  Where these solutions depart from the mundane, they may very well be the stuff that software patents are made of.

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Written By

Iain is a creative writer, journalist and lecturer, and formerly an editor of two international business publications. Iain is now editor of Innovators Magazine, as well as the strategic content director for OnePoint5Media.


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