by Bruce Burniston
Two cases were decided in the Court of Appeal in October 2006, which have clarified
the extent to which software programs, or methods of doing business, can be patented. Programs and business
methods are excluded from patentability by Section 1(2) of the Patents Act 1977. As a result of these cases the Patent Office issued new guidelines in November 2006 which will govern all future
questions in this area.
Aerotel Ltd had developed a system for making telephone calls through a credit account held with someone other than the normal telephone operators. The credit holder used a piece of equipment called a "special exchange" which facilitated a call via that equipment using the normal public exchanges. Aerotel's patent for this was challenged on the ground that none of the individual parts of the system were new and it could be implemented using conventional computers. The High Court decided that it amounted simply to a method of doing business using known equipment. Aerotel's patent was declared invalid. However the Court of Appeal disagreed. It decided that the key to whether or not it was a new invention, capable of being protected by a patent, was that it was a new physical combination of hardware, and therefore not just a business method. It was the use of new apparatus for such a method.
Conversely, a system invented by a Mr Macrossan for generating documents to form a limited company using a program which allowed customers to produce documents online ready for filing with the Companies Registry was denied patent protection by the Court of Appeal. In this case the essential fact was that data inputted by the customer was collated by the system to determine the necessary documents and generate them in an electronic form. It did not involve any technical step or different hardware. The Court decided that this was no more than a method of doing business and a computer program. It was merely an interactive system to do the job normally done by a solicitor or company formation agent.
As a result of these two cases, the test for patentability for business methods and computer programs will be the following steps in order
The Aerotel / Macrossan cases were followed in three more cases in the High Court in the first half of 2007 covering programs for tracking financial data (Bloombeg's application), for algorithms for maximising road carrier efficiency (Capellini's application) and a program for a new method of inventory management (Raytheon's application) all of which were held to be either solely computer programs or a mixture of programs and a method of doing business and as such were not patenable. All were found to have no "technical effect". This seems to settle the law, for the time being at least. However, as computer programs can be more easily patented in the USA, it is likely to remain an area of controversy in Europe. There have been attempts, through the EU, to devise better patent protection for computer programs but these have so far not succeeded.
Nova had developed a computer game based on the game of pool called Pocket Money. It sued Mazooma for copying its game with their games of Jackpot Pool and Trick Shot. Nova alleging infringement of its copyright in
The court decided that although there were some similar features of the
games, there had not been reproduction of a substantial part of the artistic or literary works and that only ideas had been
taken by Mazooma's programmer. Even though Mazooma admitted that it had brought a copy of "Pocket Money" into its office for some 5 or 6 days and that its programmer had spent a whole day
playing it, he had done so only in order to get an idea of how to produce a game with more realism and requiring more skill. Specifically there had been no access to the program code and none of that
code had been copied. Nor had Mazooma copied any individual frames or graphics showing the movement of cue and ball. The visual appearance of the rival games, when played, was very
different.
Therefore, as Mazooma had not copied the source code, and its individual screenshots had a different appearance to Nova's, the Court decided that Nova's copyright had not been infringed .
A similar claim involved the 2004 case of Easyjet and Navitaire. EasyJet was licensed to use Navitaire's electronic reservations system, but then commissioned its own. So far as possible users were not to notice any difference. The finished product functioned in much the same way as Navitaire's system and looked very much like it. However, again, no source code had been copied and the court decided that the interfaces, although similar, were very simple and that no infringement had taken place, save in respect of a few of the icons.
So as far as computer programs are concerned, therefore, it is clear that it is not the idea which is protected by copyright but only the form in which it is expressed. Moreover, the form generally means the source code or program architecture, although it can include the graphics if the individual frames (e.g. in a game) of one product are a "substantial reproduction" of an earlier one.
For more information contact Bruce Burniston on b.burniston@johncollins.co.uk or telephone him directly on 01792 529687.
About the author
Bruce Burniston is a Consultant at John Collins & Partners LLP. Bruce qualified in 1981 and has over 25 years experience in corporate and
commercial transactions. He joined the Corporate Commercial Team as a Consultant in February 2001 having been a partner of a national practice for 11 years. Bruce specialises in company and asset
sales, commercial contracts of every description, agency and distribution agreements, intellectual property licenses and sales, EU Procurement and competition law. He has for more than 20 years acted
for a large number of public sector and quasi public-sector organisations.
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