Is Software Patentable in the UK?
Are you wondering if your software is patentable in the UK? There are four overriding requirements for patentability: it must be an invention, novel, inventive, and capable of industrial application. Read this article to find out if your software is patentable in the UK. It will also help you avoid common mistakes that patent attorneys make. After reading this article, you should feel more confident about filing for a patent in the UK.
Obtaining a uk patent
If you are in the software industry, you may be wondering how to obtain a UK patent for your software. First of all, you need to know that there is a different process for software patents than for hardware ones. Software patents can be granted for a number of different technologies, and you should be aware of each one before you start. You can make an application either directly or through a patent agent. It is recommended that you use a Chartered patent agent, as they are experienced and professionally qualified. After the application has been filed, you will receive a date and number from the UK Intellectual Property Office, as well as a receipt. Once you have received this number, you may use your software or invention, subject to other people’s rights.
The UK Intellectual Property Office (UKIPO) is responsible for awarding patents for new inventions. Patent applications are published in the UK’s Official Journal, and then a certificate is issued to the inventor. Obtaining a UK granted patent usually takes four years. You can reduce the timeframe by paying fees early and responding promptly to UK IP Office letters. This process may take a while, but it is certainly worth the effort.
While this method is generally the same for software, a UKIPO practice note addresses specific differences that arise when dealing with software patents. For example, if a software program is being distributed using a CD, the UKIPO will reject the application on the basis of a lack of novelty. The UK IP office has consistently applied a different approach to software patents than the EPO, and this has attracted criticism from those who advocate harmony in Europe.
Exclusions from patentability
The Supreme Court recently decided to address the issue of exclusions from software patentability. While the Supreme Court did not issue a broad ruling in Alice, it narrowed the case by applying existing exclusions from patentability. This decision may have implications for software patents because the UPC will need to define what constitutes a technical contribution or solution in the context of prior art. The balance between obviousness and exclusion will need to be reassessed.
In the US, business methods and software were previously considered patentable. However, recent case law has interpreted this language differently. For example, a process to generate a gif, such as a digital image, cannot be patentable simply because the process involved a computer. To meet the “machine-or-transformation test,” a process must be tied to a machine and transform an article.
The European Patent Convention harmonises patent law. It states that “methods of doing business” and “computer programs” are excluded from patentability. Despite this, an invention can relate to an excluded subject matter “as such.” This two-word qualification has been at the heart of numerous exclusion from patentability arguments. In this case, the European Patent Office has taken a different approach to exclusions from software patentability than the English courts.
Other exclusions from software patentability are the use of computer interfaces and abstract ideas. Computer interfaces are often excluded as being a “process” because they are not a product. However, this exclusion can be circumvented by including a tangible feature in the claims. This could be a computer, a network, or some other physical hardware. For example, a novel circuit design that implements logic might qualify as a computer-implemented invention.
Technical contribution test
There is a difference between the tests applied by the EPO and the UKIPO when determining whether computer software is patented. The EPO takes into account the inventiveness of the invention, while the UKIPO looks at the technical contribution of the software. In the UK, the courts use the ‘any hardware’ test, while the EPO takes a different approach. While the two tests are similar, the EPO considers excluded subject matter separately.
The UK patent statutes do not contain a definition of “technical,” but case law provides some guidance on how to interpret it. The word can be used to describe computer software that implements industrial control methods or physical data processing. It can also apply to software that processes data internally within a computer. This makes the software technically-significant and useful. It also means that computer software that results in a faster computer is likely to be patented.
The UK courts should look to the European Patent Office to establish how to determine the value of computer software. The EPO has adopted the “technical contribution test” for this purpose, which confirms the EU Patent Office’s decision in Fujitsu. This test, however, does not apply to business methods. Instead, a patent is granted only when the software contains an element of the technical contribution that makes it patented.
While the Merrill Lynch decision clarifies the approach to exclusions in the UK, it does not expand the scope of software. In fact, the decision appears to be marked by regret. It is not clear whether the Court of Appeal could reconcile conflicting EPO authorities and applied the Merrill Lynch test that places an emphasis on the technical contribution. The decision seems to reinforce the underlying principle that the technical contribution of the software is inherent, but it would have preferred the opposite approach.
Method of manufacture test
In its recent Symbian case, the UK Patent Office ruled that the operating system used by mobile phones is eligible for patent protection. The reasoning for the ruling was the four-step test developed from the cases Aerotel v Telco and Macrossan’s Application. In short, the test establishes whether a piece of software produces an identifiable technical effect outside of a computer, which makes it patentable.
Unlike the EPO, the UK Patent Office (IPO) has not embraced software and business method patents. However, in the State Street Bank & Trust Co v Signature Financial Group Inc case, the US Court of Appeal ruled that a data-processing system was patentable. This case focused on the practical utility of the invention, which is a key element in the process of determining patentability.
The UK Patent Office has adopted the same approach to software patentability as the EPO. While the UK provision applies similar language to that of the EPC, case law differs. Interestingly, the UK Patent Office has begun to align its opinions on the subject, and the UK courts have recently issued a practice note on the subject. The UK courts are now closer to European Patent Office decisions. In the meantime, however, it remains a challenge to enforcing software patents in the UK.
Despite the EPO’s recent decisions, the UK courts have forged their own path when it comes to computer-implemented inventions. In the case of software, the UK uses a seminal case called Aerotel to determine whether a new contribution to technology is sufficiently inventive over existing technologies. The question is whether the contribution is a computer programme or an application that relates to excluded subject-matter.
Calculation of pension benefits
Computer-based systems for calculating pension benefits have become increasingly common. However, in order to obtain a patent, the method must be both technically complex and novel. In this case, the EPO rejected the claim, which was directed to a method of controlling a pension benefit program. Although it made reference to technical means, the EPO found that the claim was not novel or inventive. Its rejection reflected the growing trend in patents to exclude features that are not technically necessary.
The present value calculation includes discounted effects for expected mortality, health risk adjuster, retirement and withdrawals, and other relevant factors. These calculations are particularly useful when calculating a person’s pension benefit over the course of their working career. However, they may not be as accurate as they should be. That’s why a software patent is essential for the implementation of a pension-benefit calculation system. As an example, FIG. 8A illustrates an exemplary embodiment for calculating contributions from a DPPSP to a pension plan. In the process, computer code is written to calculate the contributions to an employee’s retirement income and the pension benefit. The computer code then calculates a result for Step 815.