The approval by the Intellectual Patent Office (IPO) of a software based patent lodged by the Nokia Corporation has created fresh hope for software owners looking to protect software via a patent. Whilst software itself is still not patentable, the “technical contribution” produced by Nokia’s software was patentable.

Typically, software developers have been refused patent protection in the UK as the English Courts and IPO adopted a strict approach to the interpretation of the Patents Act. The Act states that something cannot be patented if it consists only of a program for a computer. This was viewed as highly unsatisfactory for enterprises and was not considered a sufficient reward for innovation.

The UK approach was also in stark contrast to the mindset of the U.S. which took the general attitude that “anything under the sun that is made by man” should be patentable (Diamond v Chakrabarty [1980] 447 US 303, 206 USPQ 193]). More importantly, there has been a considerable body of case law emerging from the European Patent Office (EPO) demonstrating a more liberal attitude to software patentability. This division sparked controversy and has led to the English courts slowly changing their position.

The current UK approach in setting out patentability was laid out in Aerotel Ltd v Telco Holdings Ltd and Macrossan [2007] R.P.C. 7 which applied a four step approach to patentability and much needed clarification in this area of law. The test adopted a consolidation of earlier case law but still did not reconcile with the more liberal approach adopted by the EPO. The four step test applied was as follows:

1. Properly construe the claim;

2. Identify the actual contribution;

3. Ask whether the contribution falls solely within the excluded subject matter; and

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

This test was further synthesised in the case of Symbian Limited v Comptroller General of Patents [2008] EWCA Civ 1066. The court in this case allowed computer programs to be patented on the basis that the contribution to the computer program produced a better and faster computer and therefore it made a “technical contribution”. This “technical contribution” was patentable.

The more liberal approach adopted in Symbian has recently been applied in the case of Nokia Corporation, BL O/107/09 where it was held that the invention in question had made a technical contribution by solving a technical problem and thus improving the product.

This approach has been confirmed by the IPO who issued a further guidance note on this matter on 8 December 2008 for patent examiners. It confirmed that examiners should continue to follow the approach set out in Aerotel but to bear in mind that a program resulting in a computer running faster or more reliably can amount to a technical contribution.

Whilst the move from the English courts has been slow and the divide between the approach of the IPO and EPO is still visible, recent case law still does not detract from the fact that the IPO is taking steps to recognise the value of software products and is slowly but surely accepting the patentability of software programs.

This can only be good news for software developers.

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