A presentation given as a CIPA Webinar on 25 February 2014. Provides an introduction to software as it relates to patenting and an overview of current practice in UK and Europe. Details of relevant legislation and case law are provided, together with some tips for drafting. Provided according to the terms set out here: http://www.eip.com/legal.php - i.e. does not constitute legal advice and should be taken as guidance.

1. Software & Patenting
IP Outside Your Comfort Zone
Prepared for
CIPA Webinar
25 February 2014
© EIP 2014 – Bath, Cardiff, Leeds, London & San Diego
eip.com

2. Your Speakers:
Matt Lawman
Ben Hoyle
@EIP_strategy
@bjh_ip

3. Software Patents: Simple Innit?
“You cannot patent
software”
“Err - not quite”

4. Overview
• Instant Expert – Software – 5/10 minutes
• Excluded Subject Matter – 15/20 minutes
― UK Approach
― EPO Approach
― US Approach
• Practical Tips – 5 minutes
• Questions – 15/20 minutes

5. Hardware
VS
Software

6. Hardware
PROCESSOR
(with ALU)
Data Programs
Fast bus
Controller
Fast bus
V
Main
Memory
Graphics
Processor
BUS SYSTEM
Peripherals Bus
Hard
Drive
Sound
Card
Controller
Network
Interface
USB
Interface
BIOS
ROM

7. Software – Simple Answer
More Complex Answer
A software program
= a set of instructions loaded from main memory
and sequentially executed by a processor
PROCESSOR
D
A
T
A
© @KostaHristov

8. Software – General Trend
For example:
Hardware
Patentable
Software
Unpatentable?

9. Patents

10. Excluded Subject Matter
UK: Section 1(2) Patents Act 1977
EPO: Article 52(2) EPC
Patentable inventions
Patentable inventions
(2) … the following (among other things) are NOT INVENTIONS…
(2) … the following (in particular) shall NOT be regarded as
(a) a discovery, scientific theory or mathematical method;
INVENTIONS…
(b) a literary, dramatic, musical or artistic work or any other
(a) discoveries, scientific theories or mathematical methods;
aesthetic creation whatsoever; [COPYRIGHT]
(b) aesthetic creations; [COPYRIGHT]
(c) a scheme, rule or method for performing a mental act,
(c) schemes, rules and methods for performing a mental act,
playing a game or doing business, or A PROGRAM FOR A
playing games or doing business, and PROGRAMS FOR A
COMPUTER;
COMPUTER;
(d) the presentation of information;
(d) presentations of information;
only to the extent that a patent or application … relates to
(3) only to the extent to which a European patent application
that thing AS SUCH.
or European patent … relates to such subject matter or
activities AS SUCH.

11. Symbian 2008 EWCA Civ 1066 (C of A) at [6]:
“It is clear that, when deciding whether a computer program is patentable or
not, precisely the same principles must apply under section 1(2) of the 1977
Act as apply under art 52 of the EPC.”

12. A computer 1973

13. Application of the Law
UK Citation
UK Case Name
EPO Citation
EPO Case Name
1989 RPC 147
Genetech
T 208/84
Vicom
1989 RPC 561
Merrill Lynch
T 115/85
IBM
1991 RPC 191
Gale
T 931/95
Pensions Benefit
1997 RPC 608
Fujitsu
T 1173/97
IBM
2006 EWCA 1371 Aerotel/Macrossan
T 641/00
Comvik
2008 EWCA 1066 Symbian
T 258/03
Hitachi
2009 EWHC 343
T 154/04
Duns
2011 EWHC 2508 Halliburton
G 03/08
Referral
2013 EWCA 451
T 1670/07
Nokia
AT&T/CVON
HTC v Apple

14. Vicom – Sets the Stage
• “..a claim directed to a TECHNICAL PROCESS which process is carried out
under the control of a program (be this implemented in hardware or in
software), cannot be regarded as relating to a computer program as
such”
• “making a distinction between embodiments of the same invention
carried out in hardware or in software. “
• “Decisive is what TECHNICAL CONTRIBUTION the invention as defined in
the claim when considered as a whole makes to the known art.”

15. UK Current Approach
Aerotel / Macrossan [Jacob]
+
AT&T / CVON [Lewison]
Four stage approach:
Five signposts:
1.
Properly construe the claim;
1.
Technical effect on a process carried
on outside the computer?
2.
Identify the actual contribution;
2.
Operates at the architecture level?
3.
Ask whether it falls solely within
the excluded subject matter;
3.
Results in the computer operating in
a new way?
4.
Check whether the contribution is
actually technical in nature.
4.
Increase in the speed or reliability of
the computer?
5.
Perceived problem is overcome
rather than circumvented?

16. A Recent UK Example: HTC v Apple
•
European Patent No. 2 098 948 = excluded
subject matter at first instance - LJ
Lewison disagreed on appeal
•
“How to deal with multiple simultaneous
touches on one of the new multi-touch
devices” = “technical”
•
Applied approach set out above (33 + 50)
•
•
Signposts are not determinative – simply
guidance
•
Fourth signpost can be interpreted broadly
Method concerned “the basic internal
operation of the device and applies
irrespective of the particular application
for which the device is being used”.
•
What matters is right kind of technical
effect = technical contribution = technical
character – over and above standard
effects of computer
•
It caused the device to “operate in a new
and improved way and it presents an
improved interface to application software
writers”.
•
140 to 155 = comments on excluded
subject-matter

17. EPO Current Approach
T641/00 - COMVIK
What are “technical” features?
• If some “technical
means” not excluded…
• Provide a “technical” solution
to a “technical” problem
• …but only “technical”
features can contribute
to an inventive step.
• Do not relate to the categories
of Article 52(2) EPC
• Involves some form of
engineers or scientific
considerations

18. “Technical” vs “Non-technical” - Examples
TECHNICAL
NON-TECHNICAL
• Control of industrial process
• Measuring internet “virality”
• Processing data which represents
physical entities
• Scheduling (goods / time)
• Cryptography / security
• Image processing
• OS processes / drivers
• Chip testing / simulation (EPO)
• Buying goods on the internet
• Psychological effects on a user
(EPO)
• Parallel processing code
substitutions (UK)

19. A Trip Across the Pond: The US
35 U.S.C. 101
Case Law
Inventions patentable.
1998 - State Street (CAFC)
Whoever invents or discovers
ANY NEW AND USEFUL PROCESS,
MACHINE, MANUFACTURE, OR
COMPOSITION OF MATTER,
or any new and useful improvement
thereof, may obtain a patent therefor,
subject to the conditions and
requirements of this title.
Patentable = IF (“it produces a useful,
concrete and tangible result.”)
2008 - Bilski v Kappos (CAFC en banc)
Machine-or-transformation = test
2010 - Bilski v Kappos (Supreme Court)
Machine-or-transformation != sole test

20. Infringement
• Problems for distributed / clientserver architectures
• E.g. anything connected to the
Internet
• Not considered in examination
• “System” claims may fulfil
patentability requirements but
may never be infringed by a
single entity
• Go for single “server” cases

21. Drafting Tips
1. Identify invention and prepare
draft claim.
2. Identify “technical” effect and
features – as per UK / EP
approaches.
3. If no identifiable “technical”
effect / features – revise filing
strategy or consult with inventor.
4. Develop “structural” and
“process” representations –
show in Figures.
5.
Identify potential infringers –
add independent claims
accordingly.
6.
For UK/EP describe a “technical”
implementation and variations.
7.
Make clear technical effects for
UK/EP in detailed description.
8.
Develop US version if
appropriate.

22. Thank You - Questions?
Matt Lawman
Ben Hoyle
@EIP_strategy
@bjh_ip