Article 52 (2) determines what is and is not patentable subject matter within the EU:
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.
My business partners and I are filing for a UK patent. The patent is for software and has an application number. We are still to file the claims.
Throughout the entire time we have been dealing with our patent lawyer we have been unable to get out of him a straight answer on UK software patents. This is likely due to the nature of the invention and the extremely complicated guidelines in the UK. Most people tend to point you to Aerotel v Telco and Macrossan as they don't really know the answer themselves.
The invention is a program. It will mostly be used on the internet. The user enters data (raw material) into the program, tweaks settings and receives a downloadable document (end product).
Article 52 (2) (c) states that "programs for computers" are non patentable matter. However, after the A v T case the UK patent office developed a new method for what describes an invention:
- Properly construe the claim;
- Identify the actual contribution;
- Ask whether the contribution falls solely within excluded subject matter; and
- Check whether the contribution is technical in nature.
Steps 1, 2 and 4 are easily passed. It is step three where most software patents fail and what we are hoping to beat.
From the IPO site, Patentable Subject Matter page, point 14:
14 - Also left open is a question over permissible forms of claim: can claims to a computer program (or a program on a carrier) be allowable when other claims in a different form, claims covering the use of that particular program, would be allowed? In the past, the Office has allowed such claims on the basis that substance should prevail over form. Whilst the judgment maintains the emphasis on substance over form, it also characterises the first step as deciding what the monopoly is, and if the monopoly does not go beyond the program, the contribution is also unlikely to go beyond "a program for a computer". Accordingly, whilst examiners will continue to assess each case on its merits, it seems likely that few claims to programs in themselves (or programs on a carrier) will pass the third test.
So, since the user will using the program for the end product and not for the program itself will this mean that we have patentable subject matter under UK law?
This is hotly debated topic but unfortunately not well understood by many.