US, EPO and UK approaches to patenting software
Produced in partnership with Julian M. Potter
US, EPO and UK approaches to patenting software

The following IP practice note produced in partnership with Julian M. Potter provides comprehensive and up to date legal information covering:

  • US, EPO and UK approaches to patenting software
  • General
  • UK approach to patenting software inventions
  • The Aerotel test
  • Practical application of the 'as such' test
  • Technical contribution
  • European Patent Office approach to software inventions
  • EPO approach to inventive step—the 'problem and solution approach'
  • US approach to patenting software inventions
  • Action points when considering the protection of a software or computer implemented invention

General

There is a widespread misconception among both those who devise computer programs and those who advise them that there is a general prohibition on the patenting of inventions involving computer programs. This is not the case. Patents for computer implemented inventions are routinely granted by patent offices worldwide.

The misunderstanding arises from the fact that most jurisdictions include limitations on what can and can not be patented and frequently computer programs are mentioned in this context. However, often the practical effect of such exclusions is only to prevent the mere computerisation and automation of existing processes from being patented.

Difficulties in obtaining patent protection can arise if the description of an invention in a patent application focuses or dwells on the non-technical aspects and contribution of the process and does not describe in detail the technical implementation of the process. When describing a software invention it is necessary to describe actions and processes from the perspective of what the computer does (ie how data is structured and processed) and its interaction with technology outside of the computer to the extent that is relevant to the invention, rather than just to describe the results that are achieved. A software invention will be adequately described if it is described in sufficient detail so that a competent software engineer could reproduce the invention starting with the patent application as

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