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Case law: Software which merely 'circumvented' rather than solved technical problem was not patentable in the UK

Businesses developing software should consider whether the software is capable of being protected by a patent in the UK, given that software 'as such', which does not have a technical effect outside the relevant computer system, cannot be protected.

Legal Alert

This update was published in Legal Alert - February 2015

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

A company developed software enabling users to retrieve data from a remote computer across a network by sending an email containing machine-readable instructions to that computer, which it would read, and then email back the data requested in those instructions. This meant data could be retrieved via the internet, avoiding network problems. The issue was whether the software was an invention capable of being protected by a patent.

Software 'as such' is not an invention and is not therefore patentable under UK law. However, it can be protected by patent if it results in a technical effect or process outside a computer system that makes an innovative, technical contribution.

The signposts that indicate whether or not there is a relevant technical effect are:

  • Whether the claimed technical effect has a technical effect on a process carried on outside the computer
  • Whether the claimed technical effect operates at the level of the architecture of the computer, ie whether the effect is produced irrespective of the data being processed or the applications being run
  • Whether the claimed technical effect results in the computer being made to operate in a new way
  • Whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer
  • Whether the perceived problem is overcome by the invention as opposed to merely being circumvented
In this case, the Court of Appeal ruled that the software:

  • Had no effect outside the computers (except for the transmission of emails)
  • Did not operate at the level of the architecture of the computers
  • Did not cause them to operate in a new way - it ran on conventional computers connected by a conventional network and the task it performed (moving data from one computer to another) used email - a conventional technique for carrying out that task
  • Merely 'circumvented' a problem in computer networks rather than actually solving it
Its effect was merely to combine and control known computing and networking technology.

The Court of Appeal therefore concluded that the patent application was therefore merely an application for a patent for software 'as such', and that a data retrieval solution whereby an email containing data retrieval instructions, which then triggered a data retrieval process that emailed back the required data, was not a patentable invention.

However, this was a decision of the UK courts and the UK Intellectual Property Office. The European Patent Office does not approach patents for software in the same way. On occasion, software that is not patentable under one system may be patentable under the other.

Operative date

  • Now

Recommendations

  • Businesses developing software should consider whether it is capable of being protected by a patent in the UK, as software 'as such' cannot be protected in the UK but must produce a technical effect outside the relevant computer system, or by a patent at the European Patent Office.
Case ref: Lantana Limited v Comptroller of Patents [2014] EWCA Civ 1463

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.

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