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Patenting software related inventions: trends in US and UK

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Introduction

A patent is a helpful mechanism in rewarding new inventions and creativity. It ensures that the work and money spent on a particular product or process is acknowledged and that inventor is valued for their contribution. It rewards the inventors by granting them exclusive rights on the product or process for a limited time period. In terms of leveraging growth, technology and software have an impact across most company sectors, which has substantial consequences for IP and patent regulations.Therefore, software patents are often misunderstood by both technical and legal professionals.The exponential growth of software from a scientific and mathematical calculator to a global product that has seeped into practically every element of modern technology and living is to blame for the complexity and misunderstanding surrounding software patents.

Therefore, this article aims to bring out the trends related to patent software, especially in US and UK, because, patent softwares are widely accepted in these countries.

Patent and Its objective

The patent refers to the privilege bestowed upon someone who has provided a new and helpful article, an improvement to an existing article, or a novel method of producing an article. For a brief time, the exclusive right to manufacture the new goods or invented procedure is granted.The Patentee who is the patent owner has the same rights as any other movable property when it comes to dealing with his “patent.”That is, he can sell all or part of his property, issue others licenses to use the patented property, assign it to others, and so on.

Objective of Patent:

  • The patent is given to acknowledge a patentee’s unrestricted right to profit commercially from his invention.
  • It is aimed to promote inventors to spend their creative talents by assuring them that their discoveries will be protected by law and that no one else will be allowed to reproduce their idea for a set period of time.
  • It helpspromote scientific research, innovative technology, and industrial advancement.

If the monopolies are not granted to the inventors, there is a fair chance that the inventions might not even be disclosed to the public. Therefore, granting monopoly is not only for the sake of protection of the inventions, but also to protect the interest of the public at large.

When it comes to software patentability, it is only recently that the software has become patentable in most countries. Computer-implemented inventions are patentable.Inventions were considered in order to reconcile the understanding of national patentability criteria for computer software-related innovations, including computer-assisted business procedures.

Everything you need to know about Software Patent

The software patent concept entails a logical algorithm for data processing that is executed via stored instructions rather than being ‘hard-wired’. These directives could be stored on a disc or other storage device, or in ‘firmware,’ which is a read-only memory, or ROM, as is usual with embedded systems.The phrase “algorithm” originated as a mathematical phrase, but it has now become more commonly used to describe logical problem-solving approaches or processes. Algorithms don’t have a set way of expressing themselves.To make a computer work, a program is composed of a set of instructions.Algorithms must first be established to describe how information processing will be carried out.When developing a new machine, this is analogous to setting down a design drawing based on particular technological ideas.Algorithms, not programs, are at the heart of software development.

To make a software patentable, the same conditions that apply to other types of inventions should be applied. In most jurisdictions, patentable inventions must have a technical character or technical applicability in addition to novelty and inventive step (or non-obviousness).

Software patent trends in US

Over the last two decades, the United States has undergone an almost unintentional process of legal innovation in the area of patents. Patenting standards have been relaxed, and the United States have now issued patents for inventions that previously would not have been eligible for protection, such as gene sequences, computer programs, and business strategies.

There is no list of banned factors in the US legislative regime that is analogous to Article 52(2) of the European Patent Convention,1973 (EPC.) In general, fewer computer-related inventions have been removed than would be barred under the EPC.The copyright and patent laws were enacted to “promote the progress of science and useful arts, by securing for a limited period to authors and inventors the exclusive right to their particular writings and discoveries,” as stated in the Constitution.This authority is currently exercised under the Patent Act of 1952.

Four types of novel developments that are not eligible for a patent because issuing one would give an inventor an unjust monopoly on something that is “organic”, Formulas in mathematics;Nature’s law;Purely speculative phenomena and newly discovered naturally occurring chemicals.

In Diamond v. Diehr[1], 1981,When the US Supreme Court ordered theUnited State Patent and Trademark Office (USPTO) to grant a patent on an invention that used computer software, it paved the door for patents on software systems.The technology in question was a rubber curing technique.It used a computer to calculate and control the rubber’s heating times.The innovation also contained processes for heating rubber and withdrawing rubber from the heat, in addition to the computer program.Even though the only innovative aspect of this invention was the computer-controlled time method, the Supreme Court decided that it was patentable since it was a process for moulding rubber, not just a mathematical formula.

Patent software trend in UK

The majority of UK patent law is based on the Patent Act 1977, which states that an invention must meet three requirements in order to be patentable. These requirements are, novelty,  inventive step and  capable of industrial application. Certain exclusions from patentability are set out in Section 1(2) of the Patent Act.These include “a scheme, rule, or method for performing a mental act, playing a game, or conducting business, or a computer programme,” but the Patent Office’s Manual of Patent Practice also states that “a matter is not precluded from being treated as an invention merely because some of its integer fall into an excluded category.”

The current situation in the UKPTO regarding software patenting is somewhat confusing.The Supreme Court’s ruling in two well-known cases, Aerotel Limited v Telco Limited; Macrossan’s Application and Symbian Ltd v. Comptroller General of Patents, is causing confusion about a long-standing European policy that prohibits the issue of a patent for a computer programme.

In the Aerotel case[2], the UK Court of Appeal endeavored to lay down clear guidelines and outlined a four-stage methodology to consider when applying the exclusion in Article 52:Properly construe the claimIdentify the actual contribution;Decide if the contribution is solely within the excluded subjectCheck whether the contribution is actually technical in nature.  

In the case of Symbian Ltd v Comptroller General of Patents[3], the UK Court of Appeal followed the principles established under Aerotel for the exclusion in Article 52, regardless of whether the purported invention makes a technical contribution or not. Those principles are:

  1. The claim should be properly construed.
  2. The second step is to identify the actual contribution 
  3. Is the contribution entirely within the scope of Article52(2) (i.e., entirely “computer software”), given the limitation in Article 52(3)?
  4. Check to see if the contribution is technical in character – the court indicated that in many circumstances, this step would not be necessary because this would have been identified at stage three.

The current situation in the United Kingdom is that different judges have differing viewpoints on the patentability of software, and the House of Lords has refused to hear the case. Because the UK is a member of the EPC, which establishes rules for its members on all intellectual property matters, the court of appeal has requested that the EPO provide a judgement on software patents in order to unify and decrease disparities between the EPO and the United Kingdom Intellectual Property Office (UKIPO).


[1]450 US 175, 1981

[2] [2006] EWCA Civ 1371

[3][2008] EWCA Civ 1066

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Contributed by:– Nidhi Jha, Legal intern at LLL

 Patent and Its objectivePatenting softwareSoftware patent trends in US

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