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Can I patent a computer program


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 20 October 2013

Can a computer program be capable of being a patent ?

Many patents are refused at first application based under the exclusions under s1(2) of the Patents Act 1977.

This implements Article 52 of the EPC which (as amended) reads:
(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
(d) presentations of information.
(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

But it's now 2013!

Well the law on this issue has very recently been considered by the Court of Appeal (Richards, Lewison and Kitchin LJJ) in HTC v Apple [2013] EWCA Civ 451.

Kitchin LJ reviewed the English authorities on the question of computer programs as such, including the approach set out in Aerotel Ltd v Telco Holdings Ltd; Macrossan's Patent Application [2006] EWCA Civ 1371, the judgment in Symbian v Comptroller-General of Patents [2008] EWCA Civ 1066, [2009] RPC 1 and the position in the European Patent Office.

It is fair to say that Aerotel is good law. Kitchen LJ said:

"For the reasons given in Symbian, I believe we must continue to consider whether the invention made a technical contribution to the known art, with the rider that novel or inventive purely excluded subject matter does not count as a technical contribution. Further, in addressing that issue I believe it remains appropriate (though not strictly necessary) to follow the four stage structured approach adopted in Aerotel."

What is the four stage approach?

The four stage approach is :
i) properly construe the claim;
ii) identify the actual contribution;
iii) ask whether it falls solely within the excluded subject matter;
iv) check whether the actual or alleged contribution is actually technical in nature.

 So if you tick the boxes in 1-4 then you may well have the chance!!

Written by Michael Coyle

About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.

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Article Published/Sorted/Amended on Scopulus 2013-11-15 10:09:29 in Legal Articles

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