Published Autumn / Winter 2010

The difficulty of obtaining patent protection for software is well known. We have previously commented in detail on cases where attempts have been made (some successful) to obtain such patent protection.

Given the value of patent protection, to recap, the grounds that need to be established for a “software” patent application to be successful are:

  1. the invention must be new;
  2. it must involve an inventive step;
  3. it must be capable of industrial application; and
  4. it must not fall into one of the exclusions contained in Sections 1 (2) or 1 (3) of the Patents Act 1977.

The problems associated with patenting software revolve around the fact that a program for a computer falls firmly into one of the exclusions of the Patents Act. In a recent case, the Nokia Corporation completed a patent application regarding the developing of mobile phone functionality. The invention uses software elements stored on a smart phone whilst the software developer inputs and creates further software scripts on a computer which are then transferred to the phone and which combine two or more of the software elements stored on the phone, to produce applications. The result of this process is that non computer programming experts can easily change the functionality of the phone and the previous technical problems in doing this are avoided.

The UK Intellectual Property Office allowed the application having reviewed case law, on the basis that the Nokia invention overcame previous technical problems and therefore provided a technical contribution and was not simply a computer program. This recent case confirms the approach taken in Symbian Limited v Comptroller General.

However, it is interesting to note that in the Nokia case the patent was granted even where the software acts as an interface for other software applications. The advantages of having a patent are that the owner or software inventor will have an absolute right against any unauthorised use of the software that has been patented.

This means that the inventor can stop other people using their invention without their permission. It also means that if any other invention falls within the scope of the patented software then the owner can claim damages or even an injunction to enforce their rights.

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