By Duncan Jones, associate at Fox Williams LLP

Patents may be granted in the UK for inventions which are new, involve an inventive step and are capable of industrial application. Although computer programs are barred from protection, software related inventions (inventions implemented by computer programs) may be patentable if they make a technical contribution to what is already known.

In Lantana Ltd v Comptroller-General of Patents, Designs and Trade Marks, the High Court recently dismissed an appeal against the rejection of a patent application for a method of transferring data between two computers without requiring them to be in continuous communication. Whilst this application was unsuccessful, the judgment considered the guideposts set by previous case law to determine when a software related invention will be deemed to have a technical contribution.

The guideposts which should be considered are:

1. whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
2. whether the claimed technical effect operates at the level of the architecture of the computer (i.e. whether the effect was produced irrespective of the data being processed or the applications being run);
3. whether the claimed technical effect results in the computer being made to operate in a new way;
4. whether the program makes the computer run more efficiently or effectively;
5. whether a perceived problem is overcome by the invention as opposed to being merely circumvented.

These signposts are not intended to be prescriptive conditions. However, they do appear to be the benchmarks which a Court will consider when determining the patentability of software related inventions (in the United Kingdom).

From previous cases, it is clear “that if only one of the signposts was found to exist, an invention would [not] automatically be patentable”; rather, there must be “sufficient signposts to justify the patentability of the invention”. What will constitute “sufficient signposts” is somewhat unclear; the only certainty being that the more signposts which are satisfied, the greater the likelihood of successfully patenting the invention. In HTC v Apple, the Court of Appeal earlier this year held that a patent in relation to touch sensitive screens which were capable of responding to more than one touch at any one time did have a technical contribution as four of the five signposts were satisfied.

US and European approach
The European Patent Office (EPO) and the US Patent and Trade Mark Office (USPTO) take different approaches to the UK. It is often the case that, whilst a software related invention may not be patentable in the UK, it may be patentable in the US or Europe.

The EPO takes a two step approach, asking:

1. does the invention have a technical means?
2. if so, does the technical function provide a non-obvious solution to a technical problem?

The US approach is much less restrictive. A US Court once stated that “anything under the sun that is made by man [should be patentable subject matter]”. Although questionable following a Supreme Court decision in 2010, the USPTO will generally allow computer programs which provide a “useful, concrete and tangible result” to be patented.

Potential drawbacks

If you have invested time and money in inventing software or a method of doing business, you are likely to want to protect it. A patent will provide a limited monopoly over the use of the invention, but one major drawback is that a patent application must involve disclosure of the invention in a clear and complete manner. Once the patent has expired, others will have this information and be free to use or develop the invention.

Patents are not the only option available when it comes to protecting such assets. Computer programs can enjoy copyright protection and steps can be taken to ensure that the invention is protected against disclosure as a trade secret.

Duncan Jones is an associate at Fox Williams LLP. Duncan can be contacted at DJones@foxwilliams.com.