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
 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  EWCA Civ 1371, the
judgment in Symbian v Comptroller-General of Patents  EWCA Civ
1066,  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
Written by Michael Coyle
About the Author
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
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Article Published/Sorted/Amended on Scopulus 2013-11-15 10:09:29 in Legal Articles