In a recent success for one of our clients, we overcame an objection raised by the UKIPO that the invention in question was excluded from patentability as being a computer program. Such “excluded matter” objections at the UKIPO are notoriously difficult to overcome, with the UKIPO often (but not always) taking a stricter approach to software-related inventions compared to the EPO (see our blog Software inventions at the European Patent Office: an in-depth study). Below, we present an overview of the arguments that succeeded in overcoming the objection, leading to grant of the patent application.
The difficulty for software-related inventions arises from Section 1(2) of the UK Patents Act 1977, which indicates that computer programs “as such” are excluded from patentability. The implication of this wording is that an invention that goes beyond being merely a computer program “as such” can be the subject of a patent, however the Act does not define what a computer program “as such” actually is. As a result, a large body of case law has developed over the years around the question of where the boundary between computer programs “as such” and patentable inventions lies.
The main test from the case law that is now used by the UKIPO when examining patent applications for software-related inventions is the Aerotel/Macrossan  test, which effectively asks whether the contribution made by the invention is “technical” in nature. The UKIPO also refers to the so-called AT&T signposts , which provide indicators for what might make a software-related invention “technical”. Typically, a software-related invention may be found to be “technical” if it provides some effect in the real (i.e. physical) world. For example, this may be the case if the software is used to control a physical machine, or if the software leads to improved performance of a physical computing system, e.g. increased processing speed or improved energy efficiency of the computing system. On the other hand, if the software simply manipulates data stored in a computer, it may be difficult to tie it to a technical effect in the real world, such that the UKIPO will be likely to reject the invention as being excluded from patentability. Further details on how software-related inventions are assessed at the UKIPO and the EPO are provided in our information sheet here.
The invention disclosed in patent application GB1802728.4, from applicant Sourcecode Technology Holdings, Inc., provides an online platform for enabling collaboration on a software project between multiple developers working from different locations. Thus, the invention is highly relevant in the context of the ongoing pandemic, where new solutions are needed to enable teams to effectively collaborate on projects remotely.
Conventionally, when multiple developers are working on a software project, a local version of the software is stored at each developer’s computer. Then, changes made by one of the developers to their local version are propagated to the other developers’ local versions, to ensure that distributed local versions are all up-to-date. This involves re-compiling all of the local versions each time one of the developers makes a change to the project. This can result in frequent lag and freeze issues if several developers are working on the project simultaneously, as well as use a large amount of processing power to perform the re-compiling at each developer’s computer.
The invention addresses these issues by centrally storing and compiling a single executable version of the software project, and distributing a “typescript” version of the project to the developers. The typescript version of the project is a visual representation of code from the software project, however it is not itself a piece of software that can be executed. Thus, developers can edit the typescript version of the project, and changes to the typescript version can be easily shared amongst multiple developers without having to repeatedly re-compile local versions of the software. This avoids the freeze and lag issues experienced with the prior art techniques, and effectively enables multiple developers to simultaneously work and share changes on a software project in real-time.
In the examination report, the UKIPO Examiner objected that the invention was excluded from patentability, arguing that it related to a computer program as such. The Examiner considered that the invention did not provide any technical effect, and was of the view that none of the AT&T signposts were fulfilled. In particular, the Examiner considered the invention did not have any effect outside of the computer system, with the computer system itself operating “entirely conventionally”. Further, the Examiner considered that the invention does not actually overcome the lag/freeze problem from the prior art, but merely circumvents this problem by means of the typescript version of the project.
In view of this serious objection, the Examiner was minded to refuse the application.
To counter the Examiner’s objection, we undertook an in-depth analysis of the case law around software-related inventions, in order to identify key decisions that could be used to support patentability of the invention.
Here are some of the key decisions and arguments that we relied on in our response to the UKIPO:
- T 0115/85 from the EPO Board of Appeal, which indicates that giving visual indications automatically about conditions in a system is basically a technical problem. Here we drew analogy with the fact that the invention enables users to see changes made in real-time to the project, and so the invention effectively provides a visual indication about the condition of the project.
- PKTWO , which is a High Court decision where the judge held that automatic generation of an alarm solves a technical problem lying outside the computer. Here we argued that the invention serves to notify users of updates to the project, and so is analogous to the alarm in the decision.
- T 0006/83 from the EPO Board of Appeal, which states that improvements in communication resulting from software features can provide a technical contribution. We argued that the invention results in improved communication efficiency between the computers and servers in the system, as it is no longer necessary to transmit full executable versions of the software project between the developer’s computers. So, by analogy to this decision the invention provides a technical contribution.
We further pushed back against the Examiner’s assertion that the invention “circumvents” rather than “overcomes” the problems of the prior art. In our view, the Examiner was making an entirely arbitrary distinction between “circumventing” or “overcoming” a problem, and this distinction was not supported by any case law.
Following our response to the examination report, the objection was withdrawn and the patent application proceeded to grant.
Our experience with this case clearly shows that, when an excluded matter type objection is raised, an in-depth analysis of the case law and detailed argumentation based on supporting decisions can be critical for overcoming the objection. In particular, where possible, drawing clear analogies between case law decisions and the invention in question can be highly persuasive when arguing that the invention achieves a technical effect.
- Aerotel Ltd v Telco Holdings Ltd Ors Rev 1  RPC 7
- HTC Europe Co Ltd v Apple Inc  EWCA Civ 451
- Protecting Kids the World Over (PKTWO) Ltd’s patent application,  EWHC 2720 (Pat);  RPC 13
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