03-11-06

No Patent Protection for Software* The Court of Appeal has provided a welcome clarification on the extent to which a computer program (i.e. software) is protectable by UK Patent Law: none (*except where the computer program has a "technical effect"). In two appeals heard together, Aerotel Ltd v Telco Holdings Ltd and Re: Macrossan [2006] EWCA Civ 1371, Telco was sued for patent infringement and counter-claimed for revocation of Aerotel's patent, whilst Mr Macrossan had appealed against his patent application having been refused for "unpatentable" subject-matter. The appeal from Mr Macrossan was dismissed, the appeal from Aerotel was allowed and the Court took this opportunity to examine the patentability of software and business methods. Under UK and EU law, "computer programs" and methods for "doing business" or "performing mental acts" cannot not protected by a patent, but the question of what a computer program or a business method actually is has long been uncertain. The main problem in this area is so many inventions and gadgets use software as a element that the line is vague between what is and is not a "computer program". The Court likened it to an elephant: "you know it when you see it but you can't describe it in words". The Court set out a staged test for patentability of a computer program which begins with an effectively-drafted application followed by an identification of the software's substantial "contribution" to the state of the art (i.e. are there any "new" inventive elements) and finally - crucially - showing that the contribution is "technical". This test is largely based on the existing EU test of whether the software has a "technical effect" and is, to some extent, based on whether the invention uses hardware or a new physical combination of hardware. This suggests that an entirely virtual invention would have a very difficult path to a patent registration. A "method for doing business", such as Amazon's "1-click" patent for a method of online purchasing, Priceline's patent regarding a "reverse auction" method for online air tickets, or Aerotel's application in this case for a new method of telephone exchange connection, would also be subject to the patentability test. This complexity in Patent Law is made worse for the IT industry by the fact that the US routinely grants patents for these and nearly all types of inventions. As the Court put it: "Since [inventors] can get them there, they must as a commercial necessity apply for them everywhere [and] an arms race in which the weapons are patents has set in". The Court stressed that, most importantly, computer programs have protection under Copyright Law that is, after all, a more convenient shield under which software developers can take cover for up to life plus 70 years. The full text of the judgment may be accessed via: http://www.patent.gov.uk/2006ewcaciv1371.pdf
Article by Tom Frederikse