Computer Implemented Inventions In The UK: Clarity From The High Court?

Introduction

In a recent decision of the High Court, Halliburton v Comptroller of Patents ([2011] EWHC 2508), relating to the high-profile area of patent law (patentability of computer-implemented inventions), His Honour Judge Colin Birss has made some interesting and useful comments that can serve as a helpful guide to those seeking patent protection in this area. The court's conclusions may be summarised by stating that the "contribution approach", explained below, holds, but when considering whether or not a computer program is patentable subject matter, it is necessary to look to see what task it is that the program, or programmed computer, actually performs. As discussed below, this should be borne in mind when drafting a new application in this area for filing at the European Patent Office (EPO) and/or the United Kingdom Intellectual Property Office (UKIPO).

The general, legal provisions for having a patent granted are that first there must be an "invention", and second that invention is considered new and involves an inventive step when considered against everything that has gone before. Within the law there is no positive definition of what something must be or do to qualify as an invention. Rather, a list of exclusions is provided that define those things that are considered not to be inventions. In general the list includes abstract ideas, and specifically includes, computer programs and rules and methods for performing mental acts. Something will only fall foul of one of the exclusions if it is considered to relate to that thing "as such". Accordingly, in the history of patent law many cases have focussed on exactly what it takes to escape the exclusions.

The EPO Position

Technologists and engineers in the area of computer implemented inventions are probably aware of the oft repeated mantra that computer software is excluded from patent protection in the UK unless there is some "technical contribution". This can be traced back some 25 years to the well-known Vicom decision (T208/84 OJ EPO 1987) of an EPO (Technical) Board of Appeal. This decision related to an invention comprising a method of digital image processing using "operator matrices" for convolving with a data array representing an image. The Board of Appeal considered the specific exclusion from patentability of computer programs as such and decided that an invention which would be patentable in accordance with conventional patentability criteria should not be excluded from protection simply because it was implemented using...