When is software patentable?

A common question.

There are three basic hurdles to clear in order for an idea to be patentable. It must be:

  • within an area of technology in which patents are permitted,
  • new (i.e. different to that which was previously known) and
  • inventive (i.e. not an obvious development of what was known).

The first criterion is usually called “inherent patentability”.  It is defined negatively – in other words, there are a number of areas which as declared to be unpatentable, and a patent application that sets out an invention which relates to one of those areas as such is liable to be refused. The “as such” qualification is important; it means that inventions which merely use or (indeed) rely on an excluded area in order to achieve some other effect are still patentable, because the invention is mainly concerned with that other effect, not just the excluded one.

There are four exclusions from patentability in European patent laws that usually cause problems for applicants. These are:

  • a method for performing a mental act
  • a method for doing business
  • a program for a computer, and
  • the presentation of information

From a practical perspective, to obtain a patent you need to identify something new about an idea that can be expressed in terms of an invention whose benefits lie outside these excluded areas. One way of looking at this is to start from the basis that an invention is one that makes a contribution to the field, and to then identify the field that is being contributed to. If it is the field of programs for computers (for example), then the invention is unpatentable.

However, if the contribution that is made by the invention lies outside these excluded areas, then it is patentable – even if the “new bit” lies within an excluded area (such as the software).  Thus, if you think of a novel operating method for a piece of known machinery that performs some function, and you then encode that operation method as software within a control module, then you have an “inherently patentable” invention (i.e. one that passes the first test and which is patentable if it is novel and inventive).  Here, the contribution to the art is the improved machine.

Alternatively, a piece of code that allows a PC memory to be addressed more efficiently is also patentable.  The contribution made by this invention is a PC that responds more quickly.

However, a new function for a word processor which allows an interesting new effect to be created on the page, or which allows the word processor to interact more efficiently with another program, is not patentable.  The contribution from these inventions is a better word processor, i.e. a computer program as such.

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