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Statutory Background

Keeping in mind the exclusive rights that need to be attributed to an inventor, the UK Patent Act, 1977 was enacted. The , 1977 is the main patent law in the UK. It sets out the legal rights and duties for UK patents and patent applications and how UK law relates to the European Patent Convention (EPC) and the Patent Co¬operation Treaty (PCT). Section 1(1) of this act clearly stated that an invention has to be new, must involve an inventive step and must be capable of industrial application.

In furtherance of the abovementioned provision, Section 1(2), UK Patent Act, listed out some non-¬inventions, i.e., prima facie inventions that are non-¬patentable.

Inter alia, the section entails –

“a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer”.

Thus the statutory provision, at the very outset, ousts computer programs from being patented. However the proviso for section states as follows: ¬

“but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.”

Section 130(7) of the Patent Act is the international compliance provision, i.e. it establishes a synergy between the international instruments and the municipal laws. With regard to this section, the judiciary has taken the view that the purpose of Section 1 of the Patents Act is to transpose the requirements of Article 52 (EPC) into UK law and thus any differences between the EPC and the Patents Act should be ignored. The text of the EPC itself should therefore be regarded as definitive.

Article 52(2) of the European Patent Convention (EPC) includes a slightly different list of non-inventions, although “programs for computers” are present. Article 52(3) EPC then goes on to state that patentability for the identified subject matter or activities is excluded “only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.”

This rider clause, as mentioned above has created a lot of controversy and has granted numerous software patents to inventors that are ex-¬facie wrong and illegal.

Common Law Development –

The first ruling in Europe as to how far the granting of software patents was prevented by the qualified exclusions set out in the European Software PatentPatent Convention 1973 was the Vicom decision in 1986 by the (European Board of Appeals) EBA. It was stated by the EBA that ¬

“1. Even if the idea underlying an invention may be considered to reside in a mathematical method a claim directed to a technical process in which the method is used does not seek protection for the mathematical method as such.

2. A computer of known type set up to operate according to a new program cannot be considered as forming part of the state of the art as defined by Article 54(2) EPC.

3. A claim directed to a technical process which process is carried out under the control of a program (whether by means of hardware or software), cannot be regarded as relating to a computer program as such.

4. A claim which can be considered as being directed to a computer set up to operate in accordance with a specified program (whether by means of hardware or software) for controlling or carrying out a technical process cannot be regarded as relating to a computer program as such. ”

This decision is important from UK’S perspective because in Merrill Lynch’s Application., Fox LJ made Vicom as close to a binding law in the UK jurisdiction, and said at page 569 that, while it was “impermissible to patent an item excluded by section 1(2) under the guise of an article which contains that item”, it would be possible to obtain a patent for a program which contributes “some technical advance on the prior art in the form of a new result (e.g., a substantial increase in processing speed as in Vicom).”Justice Fox stressed on the words “decisive is what technical contribution the invention as defined in the claim when considered as a whole makes to the known art.” He opined that it cannot have been intended for a patent to be granted for an item excluded by art. 52 (2) EPC under the guise of an article that contains an excluded item, such as a conventional computer loaded with a program. “Something more” was required and that something was a technical advance on the prior art.

In 1991, Gale’s Application was refused on the basis of the deductions made in the case of Merrill Lynch’s Application. The application was for a read only memory containing a computer program. Nicholls LJ accepted that a computer programmed with the applicant’s software would be a better computer. But the software did not embody a technical process that existed outside the computer. Nor did that software solve a technical problem lying within the computer. The application was denied for being both a mathematical method and a computer program as such.

In Gale, Nicholls LJ, made the following observation

“ though computer programs are not patentable as such they may represent, for instance, a technical process for the reason that they may record the means for carrying out a technical process with the aid of a computer……it is difficult in identifying clearly the boundary line between what is and what is not a technical problem for this purpose ”

The same problem was faced by Aldous LJ in the Fujitsu case. In this matter two major questions were asked to decide the question on software patentability:

1. Does the application consist of a program for a computer as such?

2. Does the claim consist of a method of performing a mental act as such?

With respect to the first question Fujitsu out rightly denied patent grant to a computer program on the grounds of being statutorily barred. With respect to the second question the judgment was mum and further clarifications with regard to the same were made later in the obiter view of the Aerotel case where the court of Appeal expressly admitted that the mental act exclusion did not extend to acts done using computers.

The settled law in today’s context is that “acts done on a computer” are excluded from patentability because they fall under the excluded category of “mental acts”.

Another major observation made in the Fujitsu case was that the courts need to comply with the express provisions of the EPC, namely Articles 52 and 53 while adjudicating upon any issue relating to patentability subject matter. This inference was drawn by reading Section 130(7) of the UK Patent Act. In the year 2006, Jacob L.J., while writing the landmark judgment in the Aerotel case summarized the various approaches the UK courts have taken while determining the issue patentability subject-¬matter with regard to software patents . The relevant findings were as follows: ¬

“(1) (The contribution approach) ¬ Ask whether the inventive step resides only in the contribution of excluded matter – if yes, Art.52 (2) applies. This approach was supported by Falconer J. in Merrill Lynch with reference to the Viacom case.

(2) (The technical effect approach) ¬ Ask whether the invention as defined in the claim makes a technical contribution to the known art ¬ if no, Art. 52(2) applies. A possible clarification (at least by way of exclusion) of this approach is to add the rider that novel or inventive purely excluded matter does not count as a “technical contribution”. This approach was adopted in the disputed matters relating to Gale and Fujitsu Applications.

(3) (The “any hardware” approach) ¬ Ask whether the claim involves the use of or is to a piece of physical hardware, however mundane (whether a computer or a pencil and paper). If yes, Art. 52(2) does not apply. This approach was adopted in three cases, Pension Benefits, Hitachi and Microsoft/Data transfer (the “trio”). However there are variants of the “any hardware” approach:

(3)(i) Where a claim is to a method which consists of an excluded category, it is

excluded by Art. 52(2) even if hardware is used to carry out the method. But a claim to the apparatus itself being “concrete” is not so excluded. The apparatus claim is nonetheless bad for obviousness because the notional skilled man must be taken to know about the improved, excluded, method. This is the Pension Benefits approach.

(3)(ii) A claim to hardware necessarily is not caught by Art. 52(2). A claim to a method of using that hardware is likewise not excluded even if that method as such is excluded matter. Either type of claim is nonetheless bad for obviousness for the same reason as above. This is the Hitachi approach.

(3)(iii) Simply ask whether there is a claim to something “concrete”, e.g. An apparatus. If yes, Art. 52(2) does not apply. Then examine for patentability on conventional grounds ¬ do not treat the notional skilled man as knowing about any improved excluded method. This is Microsoft/Data Transfer approach. ”

After having traced the previous approaches the court set forth its own formulation in the form of a 4  step test. The test stated the following:

“40. the approach is in 4 steps:

(1) Properly construe the claim

(2) identify the actual contribution;

(3) ask whether it falls solely within the excluded subject matter;

(4) Check whether the actual or alleged contribution is actually technical in nature”.

It is clear from the above findings that this judgment left open a question about the wording of patent claims: Can claims to a computer program (or a program on a carrier) be allowable when other claims in a different form or claims covering the use of that particular program, would be allowed?

The UK¬IPO concluded that claims to computer programs or to programs on a carrier were not allowable. This change of practice was challenged jointly by a group of patent applicants. They argued that if their computer implemented methods and apparatus were patentable, they should also be able to protect the underlying computer programs themselves. This challenge led to a hearing before Mr. Justice Kitchin in the High Court in the Astron Clinica Application. In his judgment, Kitchin J has now clarified the law in this area, and decided that patents should, as a result of applying the test formulated in Aerotel/Macrossan, be allowed to protect a computer program if, and only if, the program implements a patentable invention.

The UK IPO decided not to appeal to this judgment and follow it with immediate effect. Thus, the Aerotel’s case set aside all controversies relating to patentable subject-¬matter and as of today stands as the law of the land and is substantially relied upon as precedence. Despite the 4-point test mentioned supra, some ambiguity remained with regard to the fourth condition, i.e., technical nature.

What exactly is the ambit of “technicality”?

The explanation relating to the unexplored territory of technical contribution as stated in Aerotel’s case was first briefly explained in the case of Symbian v. Comptroller General of Patents and then re¬iterated in the case of AT&T Knowledge Ventures LP and CVON Innovations Limited v Comptroller General Of Patents.

The findings in this regard were as follows:

i) Whether the claimed technical effect has a technical effect on a process which is

carried on outside the computer;

ii) Whether the claimed technical effect operates at the level of the architecture of the

computer; that is to say whether the effect is produced irrespective of the data being

processed or the applications being run;

iii) Whether the claimed technical effect results in the computer being made to operate in a new way;

iv) Whether there is an increase in the speed or reliability of the computer;

v) Whether the perceived problem is overcome by the claimed invention as opposed to

merely being circumvented.”

Thus the settled law relating to software patents maybe inferred from the Aerotel findings read with the principles established in the Symbian case. An illustration of the same has been seen in the case of Cranway Ltd v Playtech Ltd and others where the Royal Court of Justice, based on abovementioned analysis held an online gambling application to be non-¬patentable and thus there was no charge of infringement.


Conclusion –

Thus, in nutshell it maybe said that the law as it stands today in relation to the software patents comes from a cumulative deduction from the Aerotel case and the Symbian case.

The abovementioned deducible law has to a great extent suppressed the equivocality and ambiguity created by the concept of Technical Contribution. However, this creation of judicial adventurism will always be exploited and abused by notorious and cantankerous individuals who are competent to bypass or circumvent any law. Also, this development will adversely affect the open source community by creating additional grounds on which software patents maybe granted.

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