|04/02/2010 - Hi-tech companies must stay focused on IP protection|
By Nick Wallin, patent attorney at Withers & Rogers LLP
Hi-tech companies in the Midlands are increasingly aware of the need to make IP strategy a priority business issue. Inventions in this field can be all too easily disclosed and the pace of research and development activity requires advance planning. However, for some innovators in the IT sector, obtaining patent protection on some types of invention can prove difficult and the devil is always in the detail.
The reason for this is that UK patent law specifies that certain types of invent
ion are ‘exceptions’ and are ineligible for patent protection. These exceptions include ‘mathematical methods’, ‘methods of doing business’, computer programs’, ‘aesthetic creations’ and ‘presentations of information’. However, the law is complicated in this area and in the past it has been difficult to know whether inventions will qualify or not.
Despite some confusion surrounding the meaning and use of these ‘exceptions’, the interpretation of the law since it was enacted in the mid 1970s has evolved. Inventions that can show that they provide a technical effect or a technical improvement are generally considered eligible for patent protection.
In most cases, proving that an invention is technical is quite clear cut. For example, a software invention that improves how memory is managed in a computer so as to increase memory access times, or improve memory capacity would clearly have a technical effect. However, what about a software-based accountancy program - can that be described as technical?
As a result of such perceived problems in this regard, in 2006 the UK Intellectual Property Office (UKIPO) promulgated a test in front of the Court of Appeal in a case called Aerotel that tried to do away with the “technicality” requirement. This test was accepted, and for a couple of years used in the UKIPO as the test for patentable subject matter. Patent application refusal rates in the ICT sector soared.
In Europe, however, the test for patentability still included a requirement that technical aspects of the invention be considered when deciding on patentability. This was despite UK and European patent law having been harmonised in the late 1970s. Hence a UK company in the ICT sector would find it much harder to obtain a UK national patent on its home turf than would a Continental European company. From a competitiveness point of view, this was clearly less than ideal.
Until along came UK-based software company, Symbian Ltd, designers of the mobile operating system of the same name. Now foreign owned, at the time the company was still independent, and keen to obtain UK national patent applications. With Withers & Rogers acting for them, Symbian challenged the UKIPO interpretation in the High Court in 2007, insisting that the UK’s position was out of step with Europe. The High Court agreed, and said that the UKIPO had to start considering technicality again. Somewhat put out, the UKIPO appealed, but in 2008 Symbian was able to defend the High Court judgment, and won again (constituting the first time the UKIPO had ever lost on this issue in the Court of Appeal). “Technical” inventions were back!
So where does this leave us now, two years on? Contrary to popular belief, software inventions are now patentable in the UK, provided they have some sort of technical effect, and meet the other requirements for patentability, i.e are new, and inventive. The main thing for company Technical Directors and CTOs, to consider therefore, is whether an invention is worth protecting commercially.
Patents exist to protect the commercial value of their R&D activities and to compensate them for their investment. This right to protection is important and should not be over-looked. If an invention is commercially important, there is probably some technical effect that can be found to support patentability - as noted, the devil, or the opportunity in this case, is in the detail.