SOFTWARE PATENTABILITY
A changing world: computer-implemented inventions
a patent for software and, in contrast, the threshold in the US has been much lower, recent decisions have moved the positions closer together. Avi Freeman of Beck Greener reports.
S
ome fundamental principles surrounding computer-implemented inventions (CIIs) have always seemed to remain the same.
In the UK and Europe a strictly enforced line has been followed that means it is very diffi cult to obtain a patent for soſt ware. In contrast, the threshold in the US was much lower. T e approach of patent offi ces and courts in the rest of the world seemed to lie somewhere between the US and Europe/UK positions. T ere have been some changes in the US that
seem to put it much closer to the positions in the UK and Europe. Conversely, some recent decisions by the UK Intellectual Property Offi ce (IPO), covered below, have reminded everyone that soſt ware is most certainly patentable in these jurisdictions, despite widely held beliefs to the contrary.
Early developments T e European Patent Offi ce (EPO) used to adopt the “contribution” approach, which stems
from the Vicom decision back in 1984, relating to image processing. Vicom established that when considering whether a patent application’s subject constituted an invention, and therefore did not comprise excluded subject matter, it was necessary to consider what technical contribution the subject matter made to the art when claimed as a whole. If there was a technical contribution the subject matter was not excluded and assessments of novelty and inventive step would then follow. T e UK courts quickly followed. In a series of
diff erent cases that passed to the English Court of Appeal, the contribution approach was fi rmly enshrined in UK law, where it remains to this day. Some recent cases have more prescriptively codifi ed what is meant by a “contribution” and how one goes about testing for it, but the position is essentially the same as it was when Vicom was fi rst adopted into UK jurisprudence. T e EPO, benefi ting from its more fl exible
principles of precedent, decided aſt er a few years that the theory and reasoning behind
56 World Intellectual Property Review Annual 2015 World Intellectual Property Review November/December 2014
Vicom were fl awed. How could it be, subsequent boards of appeal asked, that the determination of whether an invention is excluded subject matter is made with reference to a “contribution”? A contribution is something that can only be
measured against the existing art, so working out what it is must entail assessing what diff erences there are between the invention and the prior art. T is, the EPO argued, is the domain of novelty and inventive step. T e contribution approach wrongly confl ates these supposedly independent legal tests. T e EPO stopped using the contribution
approach, adopting through a series of decisions by the boards of appeal the “any hardware” approach, with a qualifi cation. T e “any hardware” requirement means that as long as a claim involves the use of hardware, then it is considered to be technical subject matter. The qualification limits this seemingly free
approach to the question. It specifies that when considering inventive step, it is only
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SERGEY NIVENS /
SHUTTERSTOCK.COM
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