Patentability of Computer

Program
 Software patents under United Kingdom
patent law
● There are four overriding requirements for a patent to be granted under United Kingdom patent law.
Firstly, there must have been an invention. That invention must be novel, inventive and
susceptible of industrial application.
● Patent laws in the UK and throughout Europe specify a non-exhaustive list of excluded things that
are not regarded as inventions to the extent that a patent application relates to the excluded thing
as such. This list includes programs for computers.
● The software patent debate is the argument about the extent to which, as a matter of public policy,
it should be possible to patent software and computer-implemented inventions. Policy debate on
software patents has been active for years. The opponents to software patents have gained more
visibility with fewer resources through the years than their pro-patent opponents.Arguments and
critiques have been focused mostly on the economic consequences of software patents.
● One aspect of the debate has focused on the proposed European Union
directive on the patentability of computer-implemented inventions, also known as the "CII Directive"
or the "Software Patent Directive," which was ultimately rejected by the EU Parliament in July 2005.
 UK PATENT ACT 1977 & EUROPEAN PATENT
CONVENTION (EPC)
THE PATENT ACT 1977
Section 1(2) - It is hereby declared that the following (among other things) are not
inventions for the purposes of this Act, that is to say, anything which consists of

(a)a discovery, scientific theory or mathematical method

(b)a literary, dramatic, musical or artistic work or any other aesthetic creation
whatsoever
(c)a scheme, rule or method for performing a mental act, playing a game or
doing business, or a program for a computer
(d)the presentation of information
ARTICLE 52 OF THE EUROPEAN PATENT CONVENTION
Article 52 reads:

(1) European patents shall be granted for any inventions which are susceptible of industrial application,
which are new and which involve an inventive step.

(2) 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.

(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to
in that provision only to the extent to which a European patent application or European patent
relates to such subject-matter or activities as such.
● Although it is an implicit requirement of Section 1(1) of the UK Patent Act (1977) that
patents should only be granted for inventions, "invention" is not defined anywhere in
the Act.
● Instead, Section 1(2) Patents Act provides a non-exhaustive list of "things" that are
not treated as inventions. Included in this list is "a program for a computer". However
these things are only prevented from being treated as inventions "to the extent that a
patent or application for a patent relates to that thing as such".
● Article 52(2) of the European Patent Convention (EPC) includes a slightly different
list of non-inventions, although "programs for computers" are present. Article 52(3)
EPC then states that patentability for the identified subject matter or activities is
excluded "only to the extent to which a European patent application or European
patent relates to such subject-matter or activities as such".
● The wording of the Patents Act is slightly different from Article 52 EPC, but the UK Courts have
taken the view that since the purpose of Section 1 of the Patents Act was to transpose the
requirements of Article 52 EPC into UK law, any differences between the EPC and the Patents Act
should be ignored. The text of the EPC itself should therefore be regarded as definitive.
● Other things that are not regarded as inventions include mathematical methods, and schemes,
rules and methods for performing mental acts, playing games or doing business.
● These additional excluded categories often overlap with the exclusion of computer programs since
they may be put into practice using a computer.
● As conclusion, we can see Article 52 of EPC as well as Section 1 of Patent Act of UK has a same
meaning on the patentability of computer programme.
 Court Approach in Patentability of Computer
Programme
● In each case it was said that the requested patent concerned an invention consisting of a computer
program, and was not therefore an invention and was unpatentable. In one case a patent had been
revoked on being challenged, and in the other, the appeal was against refusal.
● Jacob LJ said: ‘the court must approach the categories without bias in favour of or against
exclusion. All that is clear is that there was a positive intention and policy to exclude the categories
concerned from being regarded as patentable inventions. We must simply try to make sense of
them using the language of the Convention.’
● The court summarised the history of such applications and the approaches taken. ‘A claim to
hardware alone, deeming the method or software to be part, was insufficient. This would allow the
patenting of a method simply for having been displayed in a book.
● It was wrong to try to assess the three categories of exclusion as having a common characteristic.
● Before you get to the ‘as such’ qualification, you must make up your mind as to the meaning of the
category which is excluded.
● The framers of the EPC really meant to exclude computer programs in a practical and operable
form. They meant to exclude real computer programs, not just an abstract series of instructions.
The court should have a staged approach to assessing a claim.
● It should:

(1) properly construe the claim

(2) identify the actual contribution;

(3) ask whether it falls solely within the excluded subject matter;

(4) check whether the actual or alleged contribution is actually technical in nature.’
Aerotel Ltd v Telco Holdings Ltd &
others; Re Macrossan’s Application
(2006) 71 IPR 398
Aerotel’s patent
Application procedure:
● Zvi Kamil, an Israeli inventor, filed his UK patent application number 8600691 for a "telephone
system" on 13 January 1986, claiming priority from two previous Israeli patent applications filed on
13 January 1985 and 10 November 1985.
● The application related to a "special" telephone exchange.
● A caller has an account with the owner of that exchange and deposits a credit with him. The caller
has a code. To make a call he calls the number of the special exchange and inputs his code and
then the callee's number. If the code is verified and there is enough credit he is put through, the call
will be terminated if his credit runs out.
● The application was published as GB application 2171877 on 3 September 1986 and the patent
was granted with effect from 21 December 1988. Kamil assigned his patent to Aerotel Limited on 12
April 1999. The patent expired on 12 January 2006.
High Court
● Aerotel sued Telco Holdings Limited for patent infringement in February 2005 and Telco
counterclaimed for revocation of the patent.
● The action started in the Patents County Court, but HHJ Fysh QC transferred it to the High Court in
November 2005.
● In February 2006, Telco applied for summary judgment on its counterclaim, basing the application
on the exclusion to patentability. This application succeeded before Lewison J who ordered
revocation of the patent on 3 May 2006.
● The patent was later restored under appeal, but then re-revoked at the subsequent hearing by HHJ
Fysh QC on 23 May 2008.
● A number of document templates were also stored and the data processor was configured to merge
at least one of these templates with the user's answers to generate the required legal documents.
The documents could then be sent to the user in an electronic form for the user to print out and
submit, mailed to the user, or submitted to the appropriate registration authority on behalf of the
user.
● The UK patent office did find that Macrossan's process was both novel and involved an
inventive step, but nonetheless rejected the application for a patent since the claimed subject
matter was not patentable subject matter under UK patent law. The UK patent examiner found that
the claims related to a method for doing business and a computer program as such.
Application in the Court of Appeal in UK
● The correct approach in determining whether an invention was patentable
within the terms of Article 52 (2) and (3) was to take the following four steps;

Step 1: Properly construe the claim – decide what the monopoly is before going on to question whether it is excluded.

Step 2: Identify the actual contribution – what has the inventor really added to human knowledge? Consider factors such as
the problem said to be solved, how the invention works, what its advantages are.

Step 3: Ask whether it falls solely within the excluded subject matter – this captures the "as such" qualification.

Step 4: Check whether the actual or alleged contribution is actually "technical" in nature – Jacob LJ observed that this step
may not be necessary as it should have already been considered by Step 3, but decided to include it in the test in order to
follow the previous Court of Appeal authorities.
APPLICATION FOR METHOD CLAIM

(1) Properly construe the claim

The method is essentially the use of the new system. A method of making a
telephone call from any available telephone by obtaining a special code by
making a prepayment

(2) Identify the actual contribution;

The contribution is not just a method of doing business but the use of a new
apparatus for such a method. By inserting the prepayment in a memory in a
special exchange in order to be allocated to the special code in the memory for
use in verifying a calling party call. This will result in dialling the special exchange
when a telephone call connection is desired which connects the call to the calling
parties' stations in response to said verification
(3) Ask whether it falls solely within the excluded subject matter;

There is more than just a business method. Other than monitoring the remaining
prepayment and disconnecting the call when the remaining prepayment has been
spent by the running cost of the call, it also helps in connecting the called and
calling parties' stations in response to said verification.

(4) Check whether the actual or alleged contribution is actually technical in nature.

The method involves the use of apparatus and so is technical.

SUMMARY OF THE JUDGEMENT
● In the Aerotel case, the Court of Appeal held that, although the system could be implemented using
conventional computers, the contribution was a “new physical combination of hardware”. It was
therefore more than just a computer loaded with a program and it was also more than conducting a
method of doing business. As a result, it did not fall solely within the subject matter excluded by
Article 52, and passed step 3 of the four-step approach. It was also clearly technical in nature and
so passed step 4. It was patentable subject matter.
● Through the 4 inventive step, the claim are free from Section 52(2) and Section 52(3) objection so
the appeal was allowed.
Macrossan’s Patent Application
Application procedure:
● Macrossan's GB application 2388937 has a December 2000 priority date. It was for a new
automated method of acquiring the documents necessary to incorporate a company.
● It involved a user sitting at a computer and communicating with a remote server, answering
questions. By posing questions to the user in a number of stages, enough information was gleaned
from the user's answers to produce the required documents.
● Questions posed in the second and subsequent stages were determined from previous answers
provided and the user's answers were stored in a database structure. This process was repeated
until the user had provided enough information to allow the documents legally required to create the
corporate entity to be generated.
High Court

● Macrossan then appealed to the High Court. The High Court concurred in finding that the
application related to a computer program as such, and to a method for performing a mental act as
such and was unpatentable for each of those two reasons.
● However, the High Court specifically overruled the UKPO hearing officer on one of the three
grounds of exclusion, by holding that the application did not relate to a method of doing business as
such.
Application by the Court of Appeal
Mental Act
● The point of invention is to arrive at the appropriate company with the
appropriate incorporation documents on the basis of information supplied by
the user. This act of applying the criteria to arrive at the correctly documented
conclusion is clearly a mental act. Without a computer a skilled individual
would do the same thing in much the same way. It seems for the judge to be
very like an expert system where the computer is programmed to provide
expert advice.
● The judge is satisfied with the hearing officer’s conclusion.
Method of Doing Business
“To my mind, the production of legally compliant documents is just the sort of activity that falls within the
business method exclusion. It is something that solicitors are paid to do. Thus, I find the present invention
to fall potentially within the "business method" exclusion"

-However. the judge found that the hearing officer erred in their finding because the officer
seemed to have relied heavily on the fact that the activity in question is carried out for
remuneration by solicitors. That is true, but it does not mean that the invention embodies a "
scheme or .. method ... of doing business" within the Act. The activity involved in the invention is a
business service, or end product, for which the customer is prepared to pay and for which the
customer contracts. That may entitle the invention to the title "a method of providing business
services", but that is not what the exclusion in the Act is aimed at. The exclusion is aimed more at
the underlying abstraction of business method - the market making technique or the way of doing
the auction.
-The invention in the current application does not. It is merely a facility which might be used in a
business; or, to put it another way, a tool. While that does not claim to be, and should not be
A Program for a Computer
“ the form of the claim is of no importance when determining whether the substance of the in- vention is
such that it falls into one of the excluded categories. Claim 1 is drafted in terms of a method involving
various pieces of hardware and at first glance does not look like a program for a computer. However, in
the absence of any indication to the contrary in the specification, I am in no doubt that the means of
implementing the invention is via a piece of computer software. I conclude therefore that claim 1 falls
within the ambit of the "computer programs" exclusion"

-The judge agrees with the hearing officer. If one looks at the substance of the invention it is
basically a computer program. Eventhough, Mr Macrossan's submissions seek to say that it is
more than a computer program because the process involved ending up with the production of
some thing - appropriate corporate documents. Other cases in which inventions have been held to
be computer programs do not have such an end product, the judge found that there is nothing to
indicate that the result would have been any different if it had been a physical printout rather than
a computer display.
Technical Contribution
“the shortcomings in conventional procedures which the invention was said to overcome did not
amount to technical problems, so the invention did not make a technical contribution. It provided a
solution to a business or administrative problem by providing a stand-in for a legal expert. It
merely reduced cost, labour and error, but did not go further and make the necessary technical
contribution”

-Suffice it to say for these purposes the judge agrees with the hearing officer. It is hard to see what
technical contribution is provided by the invention. It is, or it involves, a technical process, but that
process is itself a computer program. All the attempts to break into that argument seem to involve
describing aspects of the computer program or pre-cursors of the program. The heart of its effect
is an automation process, but what it automates is a mental act
New Approach by the Court
As regards to the mental act:

The Comptroller does not support Mann J’s decision as to a mental act as he is in doubt as to whether
the exclusion extends to electronic means of doing what could otherwise have been done mentally. But it
is unnecessary to decide the point, for he is firmly of the opinion that the patent is both for a method of
doing business as such and for a computer program as such.
A method of doing business

Step 1: construe the claim causes no difficulty.

Step 2: calls for an assessment of the inventor’s contribution. That again poses little difficulty. Mr
Macrossan does not suggest he has invented any new kind of hardware. What he has thought of is an
interactive system which will do the job which otherwise would have been done by a solicitor or company
formation agent. Questions are asked, the answers incorporated in the draft, and depending on some
particular answers, further questions are asked and the answers incorporated. That is his contribution.

Step 3: is that contribution solely excluded matter? first that there must be something abstract about a
method before the exclusion can apply and second that the exclusion only applies where what is claimed
involves the completion of a business transaction – the cash register must ring or at least a debt become
due. Mr Macrossan’s method is for the very business itself, the business of advising upon and creating
appropriate company formation documents.

Step 4: The final step is to ask whether there is anything technical about the contribution – there
obviously is none beyond the mere fact of the running of a computer program.
Computer programme as such

Step 1: there is no difficulty

Step 2: What is the contribution? – is again straightforward. It is to provide a computer program (in
practice probably an interactive website) which can be used to carry out the method. The hardware used
is standard and is not part of the contribution.

Step 3: is the contribution solely of excluded matter? – is again easy. The contribution is just the devised
program up and running.

Step 4: is that contribution technical? – is again easy. No. So the exclusion applies.
Summary of the Judgement
● In the Macrossan case, the Court of Appeal held that, as an interactive website with no new hardware, the
contribution under step 2 was merely an up-and-running computer program and so was excluded subject matter. In
addition, it was also purely a system for doing what would otherwise be done by a solicitor or company formation
agent, so it was excluded under step 3 as being solely a method of doing business. Accordingly, the system was not
patentable as it fell within both the computer program and the method of doing business exclusions.
● In this case, the appeal is not allowed as it does not fulfill the four-steps test.
The Effect on UK Practice
Following this judgment, the UK Patent Office (now the UK Intellectual Property
Office) issued a Practice Note[29] on 2 November 2006 announcing an immediate
change in the way patent examiners will assess whether inventions relate to
patentable subject matter. The Patent Office also prepared four case studies as
examples of how they saw the test being applied in practice.[30]

One change in practice that occurred was that claims to a computer program were
rejected on the basis of the form of the claim, even if the process that was
performed by the computer program was itself considered to be patentable. This
new practice was challenged by Astron Clinica Ltd and others and the UK Patents
Court[31] judged that the practice was incorrect.
Position in Malaysia (Patents Act 1983)
Section 13. Non‐patentable inventions.

(1) Notwithstanding the fact that they may be inventions within the meaning of section 12, the following
shall not be patentable:

(a) discoveries, scientific theories and mathematical methods;

(b) plant or animal varieties or essentially biological processes for the production of plants or animals,
other than man‐made living micro‐organisms, micro ‐biological processes and the products of such micro ‐
organism processes;

(c) schemes, rules or methods for doing business, performing purely mental acts or playing
games;

(d) methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods
practised on the human or animal body:
As we can see, in our statute (Patents Act 1983) regarding Patentability of
computer program it does not clearly stated whether a computer program can be
patented or not as compared to EPC and Patent Act 1977 of UK. Thus, there is
possibility of computer program being patented as it does not ever mention under
section 13 of Patent Act 1983 as one of non-patentable invention.

However, as we all know, under Copyright Act 1987 it clearly stated that computer
program can be protected under this Act, under the category of literary works.
THANK YOU