This article on ‘Patenting Software-Related Invention: Trends in the UK and the US’ was written by an intern at Legal Upanishad.
Introduction
Patenting of software is a hastily emerging industry that stood itself in the pool of other economic fields over a period. This led to great confusion regarding patenting of software in the two most important fields which are technology and law. The intricacy and misapprehension related to patenting of software can be ascribed to the hassle that is happening due to the emergence of software that seems to be an important aspect of every advanced and digital life. But this patenting of software is more broadly accepted in the USA than in other nations.
The article will be highlighting the position of patenting software in the USA and UK.
What is Patenting of Software?
Patenting of software has been a debatable topic. Various dissenting and unique opinions were given by the legislature, administration, and judiciary in past years over it. According to some scholars, a genuine patent of software is one that totally embodies software. For software to be patentable, it is appropriate that all the same patenting principles are applied in the software as they are for other inventions. For software to be patented, it must imbibe some technical aspects and it should provide some practical benefit.
Patenting of Software: Trends in the USA
In relation to Patents, the country USA has gone through the process of legal modernization in the past decades. The patenting paradigms are now relieved and the USA grants patents to such inventions that unqualified the paradigm of patent protection earlier like computer programs or business methods etc. we can see that mostly the patentee of software are citizens of America from the data that over 70% of the patents to software is owned by citizens of America and American companies.
Today, all kinds of software and business methods have well-established patentability paradigms in the USA. As per some economic survey and their estimates, USPTO is currently granting approximately 20,000 patents to the software each year and this is increasing hastily. Although this huge granting has been controversial and found to be too speedy yet the justification for increasing the rewards and encouragement overrides the controversy.
Eligibility Criteria for the Patent in the USA
In the USA, the granting of patent rights is governed by The Patent Act of 1952. Under the law, there is no specific exclusion list for non-granting of the patent as compared to A.52(2) of the EPC. But there exist four types of latest discoveries that cannot be patented because the granting of the patent will lead to a monopoly by the inventor over natural inventions. These four types of exclusion are formulae of mathematics, the law of nature, authentic theoretical happening, and the discovery of any substance that exists naturally.
Judicial Decisions over Patenting of Software in the USA
In past years, the patents to software were weak in the USA and were almost shifted towards non-patentable categories of inventions. But the judicial decisions in the case of Gottschalk v. Benson and Parker v. Flook led to a harsh scenario of patents to software.
In the landmark case of Gottschalk v. Benson, an inventor made a claim for the method of converting a binary-code decimal into a complete binary numeral. This was done with the general objective of a computer. It was said by the Supreme Court the invention claimed above is just an abstract formula. Therefore, it cannot be patented as it did not lead to the transformation or formulation of any innovative thing. Finally, it was decided that a mathematical formula cannot be patented but computer programs can be patented.
By this judgment of the court, it was finally concluded that the software cannot be directly patented.
Further, in the case of Parker v. Flook, the court again forbade the protection of the software. The claim in the case was related to the method of advancing the limits of the alarms within a chemical procedure. The court in the case said that the process can be subjected to protection in patents even if it contains the law of nature and any mathematical formula but the same is not applicable merely to a mathematical formula as the formula is considered as prior art and since the inventor only discovered the mathematical formula, it cannot be patented as it does not meet patentability criteria.
As there had been strict criteria for patenting in the USA and software was not subjected to get the patents, the two judicial decisions came as a ray of hope for the software to be patented.
In the case of Diamond v. Chakrabarty, the court said that the subject matter of the patent includes everything that is manmade. This led to the inclusion of computer programs within patent paradigms.
Again, in the case of Diamond v. Diehr, the court finally accepted the patenting of software when the court-ordered USPTO for granting a patent over the invention that comprised software. In this case, the invention made was over-curing rubber. The invention comprised software that controls the heat of the rubber. The court said that this invention includes the process and mathematical formula so qualifies the patentability criteria and shall be patented.
Patenting of Software: Trends in the UK
The granting of a patent is regulated by The Patent Act, 1977 of the UK. The act states certain criteria for the (GOTTSCHALK V. BENSON, 1972) patentability of an invention. For being patentable, an invention needs to be novel, have an inventive step, and shall be industrially applicable. But S.1(2) of the above act forbids certain inventions from getting patented. Such inventions are any scheme, rule, and method of doing any mental activity, games or business and lastly the computer programs.
The question of patenting a computer program was accepted by the court in the UK in Merrill Lynch Application. A suit was filed and an application was made that contained about the data processing system to create a trading securities market. The court relied on the decision made by the EPO Board of Appeal in Viacom computers and said that the exclusion provided in S.1(2) of the Act, 1977 can make an inventive step that can create a patentable invention.
Judicial Decisions Over Patenting of Software in the UK
Today in UKPTO, the patenting of software is still a conflicting matter. The two famous cases Aerotel Ltd v. Telco Ltd and Symbian Ltd v. Comptroller General of Patents cause confusion over the previous regulations regarding patenting of computer programs.
In the case of Aerotel Ltd v. Telco Ltd, an inventor from Israel filed an application related to “a special telephone exchange”. Initially, the patent was granted in this case but later it got revoked stating that it is a non-patentable invention. In the court, the patent mentioned herein seemed to be patentable but the judges said that it is more than a mere method for making business. Further, the court in the UK laid some principles and formulated a four-stage process while excluding an invention under S.52. The four stages were:
- Appropriately construe with the claim.
- Recognize the genuine contribution.
- Decide whether the contribution is completely falling within the exclusion criteria.
- To check if the contribution made is of technical form or not.
These principles got subjected to criticism in most of the cases but these principles were yet applied in many similar cases in the UK.
In the case of Symbian Ltd v. Comptroller General of Patents, Symbian Ltd made an application for the patents and the application got rejected by the UKIPO. The patent was asked for the system which was accessing dynamic link libraries. It got rejected on the basis that the innovation done was merely a computer code that is excluded from the patent. But Court said that the same system can be patented. But the Comptroller refused to register the system in the UK patent register on the basis that it is merely a computer program.
In this case, the principles of the above case were applied and asked the comptroller to grant the patent on the fact the contribution it is making is technical and technical invention can be patented.
This judgment of the court was surprising yet was good on the following grounds that the approach followed by the EPO and UK is now more aligned than before. Further, a large hope was given to those inventors who were working on the software for getting the IP protection as any other invention.
But today’s scenario in the UK is there are various judicial opinions over patenting of the software. UK is being a member of EPC that forms guidelines for its contracting members over IP-related issues, the court has ordered EPO to formulate rule over patenting of the software to eliminate any form of discrepancies arising between EPO and UKIPO.
Conclusion
Despite a well-established mechanism of protection, both countries are affected by their individual detracting factor. Granting patent protection is one of the strongest types of protection in IP law and the patentability criteria in same is stringent. The main issue related to patents is what type of paradigm is desirable. Granting software a patent is one of the golden steps taken by these countries as it will eventually motivate the inventor to invent more forms of it.
References
- AEROTEL V. TELECOM LTD, EWCA Civ 1371 (COURT OF APPEAL OCTOBER 27, 2006).
- BHANDARI, S. S. (2008). PATENTING SOFTWARE-RELATED INVENTIONS: TRENDS IN US AND UK. SSRN, 41.
- BUTTERWORTH. (2006). OPEN SOURCE AND LAW. NEW DELHI: LEXIS NEXIS.
- DIAMOND V. CHAKRABARTY, 447 US 303 1980 (US SUPREME COURT JUNE 16, 1980).
- DIAMOND V. DIEHR 450 us 175 (1981) (US SUPREME COURT MARCH 3, 1981).
- GOTTSCHALK V. BENSON, 409 US 63 1972 (U.S SUPREME COURT NOVEMBER 20, 1972).
- GOTTSCHALK V. BENSON, 409 US 63 (1972) (US SUPREME COURT NOVEMBER 20, 1972).
- PARKER V. FLOOK, 437 US 584 (1978) (US SUPREME COURT JUNE 22, 1978).
- SYMBIAN LTD V. COMPTROLLER GENERAL OF PATENTS (2008) EWCA Civ 1066 (COURT OF APPEAL October 8, 2008).
- USPTO. (2018, MARCH 21). USPTO. Retrieved from USPTO. GOV: https://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf
- USPTO. (2021, MARCH 16). US PATENT ACT. Retrieved from USPTO.GOV: https://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf