The debate about whether companies and individuals
should be able to patent software has received particular
prominence in recent years due to the EU's proposals for a
directive on the patentability of "computer implemented
inventions".
However, what is less well known is the extent to which software
can be and is already being patented within Europe.
Although it is generally understood that patents for software
can be obtained in the US, European companies frequently do not
appreciate that such patents are being obtained in Europe through
the European Patent Office and some national patent
offices. Indeed, the applicants for these patents tend to come from
outside the EU - in particular US and Japanese companies.
They are pressing ahead with software patenting strategies
regardless of the ongoing European debate on what should be
patentable, and are leaving many of their European competitors
behind.
So what approach to patenting should companies adopt, and what
can be patented?
What is most important is that companies consciously take some
basic measures to protect what their employees invent. Ideally,
these should ensure that inventive ideas are collected, evaluated
and converted to patent applications where appropriate.
However, alternative steps might include ensuring clear records
of inventions are kept (even where these are not to be patented or
exploited), and then deciding whether to keep these confidential or
to publish sufficient details of them so as to prevent competitors
obtaining patents (a potentially risky strategy).
In this context, it is important to realise that owning patents
can act as a deterrent to being sued, as well as providing a means
of inhibiting your competitors and creating revenue streams. Many
patents are now obtained as much for their defensive value to the
applicant (for example, to use against an aggressor who is trying
to assert its own patents), as for offensive reasons.
The European Patent Convention governs the position at European
level and provides that certain things are not to be considered
"inventions" for the purposes of patentability.
These include computer programs and methods of doing business
but these exclusions from patentability only apply where the
invention relates to that thing "as such".
The two words "as such" have caused considerable difficulty.
Similar provisions are contained in the national laws of the UK and
other EPC member states.
However, the current situation is confused - not only have
national courts come to inconsistent decisions on what can be
patented, but the decisions of the European Patent Office (EPO) on
this issue are themselves contradictory.
The EPO's current approach is broadly to allow patent claims
incorporating software as long as the claim involves the use of
hardware or other apparatus, however mundane. This is subject to
the other basic criteria for patentability being met: ie, that the
relevant invention is both novel and inventive (or non-obvious)
when compared against what is known in the relevant field at the
time.
However, this approach has evolved relatively recently and
differs from the approach previously followed by the EPO, when it
used to ask instead whether the invention made a so-called
"technical contribution" to what was known at the time. If not,
then the invention was not patentable and, for these purposes, a
computer program in itself did not count as a "technical
contribution".
The difference in effect between the EPO's old and current
approach is fairly significant, with the current approach setting a
much lower bar for patentability than used to be the case and thus
making software patents easier to obtain.
In October 2006, the English Court of Appeal gave a judgment
which laid down the criteria to be used by the English courts and
UK Patent Office in deciding whether a computer program (or
business method) could be patented. Although influential, this
decision is not binding on other national courts in Europe or on
the EPO which may take different views on this issue.
However, the judgment emphasised the need for European patent
judges to be consistent with one another and called for
clarification in this area at a European level. According to Lord
Justice Jacob, this was an area in which the approach taken
mattered, as "billions (euros, pounds and dollars) turn on it".
The English judgment concerned two cases: one relating to a
patent application for an electronic document assembly system (for
which the inventor had already secured patents in Australia, New
Zealand, Singapore and South Africa) the second relating to a
patent for a system for managing pre-payment for telephone
calls.
The court decided that, as it was bound by previous English
Court of Appeal decisions on patentability, it was required to
follow the "old" EPO approach rather than the current one. (The
court was also rather critical of the current EPO approach.) This
"old" and narrower approach is thus what will be applied by the UK
Patent Office and English Courts for the moment.
However, in an attempt to clarify this approach, the court also
laid down a four step test to be applied in practice.
The Court of Appeal decision does not radically change the
position in the UK. However, by laying down a "four step" test, the
judgment gives clearer instructions about how to approach the
software exclusions on patentability.
This may make it easier for the UK Patent Office and Courts to
apply them and may therefore lead to less disputed decisions and so
more certainty for UK business.
Nevertheless, one might say that the decision still does not
fully address the underlying problem: what exactly should and
should not be patentable in the context of software?
The question of whether in any particular case there can be said
to be a "technical contribution" is still likely to lead to
uncertainties in interpreting the position.
However the request for clarification at European level may be
the beginning of the road to more clarity - and consistency - in
this area of law.
In the meantime, the fact remains that patents are available and
obtainable for novel and inventive computer programs. While these
may be easier to obtain in the EPO than the UK Patent Office and
may still be subject to attack in the English courts, the approach
taken by US companies and the likelihood of further changes in the
law mean it would be short-sighted for UK companies to ignore the
area completely.
Mark Taylor is a senior associate at law firm
Lovells
Qualcomm patent action
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