Software, Copyright and Patents

Computers and software play an integral part of everyone’s lives in modern day society. The computer industry is highly profitable and one only needs to look to the personal wealth of Microsoft’s Bill Gates to see how valuable computer software and hardware alike have now become. It is therefore logical that those companies investing huge sums of capital into software development wish to protect new programs from being used by others for commercial gain. Under UK intellectual property law, copyright protection has been the only way to protect computer software. However, recently there have been instances where software has been granted patent protection which has led to debates over when a piece of software can obtain patent protection, rather than copyright protection, in the UK.

Currently under UK intellectual property law software is protected by copyright in the same way that any author’s expression of an idea is protected from anyone else copying the expression of their idea. There are, however, distinct differences between expression of an idea in a literary sense and the expression of an idea in a computer program. The idea behind a piece of software can easily be presented again in a different form in which copyright offers little or no protection whatsoever. It is therefore understandable that those wishing to protect their software have started to look at alternative ways to protect their ideas.

Section 1(2) of the Patents Act 1977 specifically excludes computer programs and business methods from patentability. Also excluded from patentability are discoveries, scientific theories and mathematical methods, aesthetic creations, scheme rules and methods for performing mental acts, games, doing business and presentations of information. However, the exclusion of computer programs from patentability only applies to the program itself and when assessors consider a patent application they will consider the invention as a whole, which in some instances may allow for the computer program to receive a patent under the umbrella of an invention which requires the use of the software to fully function. A number of cases since 1981 have shown that in limited circumstances computer software is patentable, but the law is far from clear cut on when such patent protection will be granted.

In the U.S. case of Diamond –v- Diehr [1981] the U.S. Supreme Court found that a computer program involved in a process for curing rubber was patentable, but only as part of the whole process. In 1994 the case of Alappat, a computer program which smoothed out a waveform in a graph-displaying device known as an oscilloscope was found to be patentable as part of the total package. These early cases suggested that a patent would be refused for a computer program in itself, but a patent may be granted for the practical results of the program. However, these practical results must make a technical contribution to the state of the art. In accordance with this stance Merrill Lynch’s patent application in 1989, which related to a data processing system for implementing an automatic trading market for shares, was found not to be patentable because there was no technical effect. The Court of Appeal stressed that a successful application must have some technical advance over the existing state of knowledge in the form of a new result. Although the application by Merrill Lynch could be regarded as a technical advance, the result would simply be the production of a trading system and would be excluded from patentability as being a method of doing business. Therefore, what the program is doing is more important than the fact it does it in a new way and if the software is doing an excluded activity, it cannot be patented.

In Vicom System’s 1987 patent application, a digital image processor package was patentable under the European Patents Convention on the basis that it incorporated a complete system comprising a method and apparatus for filtering digital data which represented visual images. Having a computer program as a major ingredient of the process did not affect the patentability of the process. The patent was protecting the image manipulation process, which had to be judged on its own merits and not simply excluded because software was a major ingredient. Indeed, it should make no difference whether a product worked by mechanical means or by means of a suitable computer program. The success of Vicom System’s application seems to show that it is easier to demonstrate that there is a technical effect for process control software or operating system software than for application software.

In 1990 IBM tried to patent a system which applied a method for correcting various common errors in text typed on a computer. The application was rejected on the basis that the computer program was simply carrying out a conventional mental process and was therefore not patentable. The differences between how the computer operated as part of a larger process in the Vicom application and the IBM application is far from clear, which highlights the problems with patenting software.

Two cases decided in the Court of Appeal in October 2006 led to the Patent Office issuing new guidelines in November 2006 on the test for patentability for business methods and computer programs. In the first of the two cases, Aerotel Limited had developed a system for making telephone calls through a credit account held with someone other than the normal telephone operators. The piece of equipment called a “special exchange” facilitated calls using the normal public exchanges. Aerotel’s proposed patent was challenged on the grounds that none of the individual parts of the system were new and it could be implemented using conventional computers. Thus, it was decided by the High Court that this was simply a method of doing business using known equipment. However, the Court of Appeal disagreed and decided that the key to whether or not it was a new invention capable of being protected by patent was whether it was a new physical combination of hardware and therefore not just a business method.

The second case involved a system invented by a Mr Macrossan for generating documents to form a limited company using a program which allowed customers to produce documents online ready for filing with Companies House. A Patent was denied on the basis that the essential fact was that data inputted by the customer was collated by the system to determine the necessary documents and generate them in an electronic form. This did not involve any technical step or different hardware and it was therefore no more than a method of doing business and a computer program.

As a result of the Aerotel and Macrossan cases the Patent Office outlined the test for patentability for business methods and computer programs in the following steps:

• Properly construe the patent claim;
• Identify the contribution;
• Ask whether it falls solely within excluded subject matter; and, if the invention passes the first three steps;
• Check whether the actual or alleged contribution is actually technical in nature.

The important point to note from the Patent Office’s guidelines is the need for the process to have technical effect. Without this, any process involving computer software will be refused patent protection under the current law. Consequently, most computer programs will receive copyright protection only, which has its limitations. In the case of Nova Productions Limited –v- Mazooma Games Limited & Others (2007) Nova Productions Limited alleged infringement of its copyright in the artistic works and literary works of its computer game Pocket Money. In relation to the artistic works, Nova alleged infringement of the bitmap graphics in the frames generating the display to the user and the literary works, being the designer’s notes and the program he wrote to implement the game. The Court of Appeal decided that although there were some similar features of the games only ideas had been taken by Mazooma’s programmer. In particular, there had been no access to the program code and none of that code had been copied, nor had Mazooma copied any individual frames or graphics. On this basis, the Court of Appeal decided that Nova Productions Limited’s copyright had not been infringed.

The question as to whether standalone computer programs could benefit from patent protection in the UK was explored again in Astron Clinica Limited & Ors [2008]. The High Court ruled that computer programs which make substantive inventive contributions may be eligible for patent protection under English law, even if they are distributed on disk or downloaded from the internet. The judge, however, stopped short of ruling that the computer programs in this particular case were patentable and merely remitted the case to the UK Intellectual Property Office for reconsideration. The ruling in Astron Clinica Limited & Ors suggests that it might not be too long until standalone software could be granted patent protection in the UK. Nevertheless, the debate for allowing software patent protection still seems likely to continue for quite some time.

 

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Members of our team specialising in this area:

Mark Thompson