Patents confer on their owners, for a specified period, the right to prevent others making, using, selling, importing or otherwise exploiting the patented invention without consent. For this reason most software developers would like to be able to obtain patent protection for their software. They could then control the underlying idea behind the software. Copyright is very helpful, as it automatically comes into existence without registration, but only protects the way that the idea is expressed. In other words, someone that uses entirely different code and methodology to achieve the same application functionality does not infringe copyright.

Most cases in Ireland regarding patents settle without decisions, and so there is very little patent case law that is relevant to software. With little Irish case law to guide us, it is useful to see how other courts have ruled when applying similar tests in their jurisdiction.

In October of this year, the UK Court of Appeal ruled on the tests applicable to software patents. The Court ruled on two cases at the same time regarding the same issue. The decision has been the subject of much debate. One of the reasons for debate is that the decision is not completely aligned with the position taken by the European Patent Office. Latest reports suggest that one of the inventors, Neal Macrossan, is seeking to appeal the Court of Appeal's decision to the House of Lords.

Perhaps the Irish courts will follow the UK courts approach? It is interesting to look at the tests that the UK Court of Appeal applied in one of the cases in order to consider the tests used.

Neal Macrossan invented a computerised system designed to help people fill out the series of forms required to register a company in the UK, and had applied for but was refused a patent by the UK Patent Office. He challenged the decision, taking the case to the Court of Appeal. The Court of Appeal adopted a four-step test in determining whether the claimed invention was patentable:

1. Construe the claim properly.
   There was no difficulty over step 1. The description of the invention that Macrossan claimed a patent for was clear.
   
   
2. Identify the actual contribution.
   A patent must involve an inventive step and contribute to what is already in existence (called 'prior art'). Here, what was the inventor's contribution? Macrossan had come up with an interactive system that would do the job which otherwise would have been done by a solicitor or company formation agent. The Court found that the interactive system contribution to what was already in existence.
   
   
3. Ask whether the actual contribution falls solely within the subject
   matter excluded by the law.
   In UK law, 'a scheme rule or method of doing business as such' cannot be patented, nor can a 'computer program as such'. That wording is similar to the Irish exclusion referred to in the box below. Here, Macrossan's inventions contribution was found to be solely within both of these exceptions. The application of this test is the subject of the most controversy.
   
   
4. Check whether the actual or alleged contribution is actually 'technical'
   in nature.
   Here, the judges found that Macrossan's invention was the 'mere fact of the running of a computer program'. They found there was nothing technical about the contribution to what already was in existence which might allow the idea be patented. Patent rights are valuable commercial and property rights. Applying these difficult tests, with the relatively high possibility of disputes, challenges and litigation, is not very satisfactory.

In 2002, in an effort to harmonise the position across the EU, the EU Commission produced a draft directive on software patents. After much debate, in 2005 the EU Parliament rejected the draft directive and the EU Commission has said that it has no current plans to take the matter further. It is impossible to know what, if any, developments there will be in this area in the future. In the meantime we must grapple with the tests that we have, and consider the Macrossan decision in that light.

Irish patent law is contained in the Patents Act 1992, as amended. This law sets out the tests for what can be patented, and what cannot. The Act specifically states that you cannot patent 'a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer'. This is what the Irish Patents Office has to say on the matter:

'While it is not possible to obtain a patent on software per se, patents may be granted for inventions requiring the use of software to achieve their purpose. This, however, is conditional on the software having a technical effect when the program is run. Such effect may, for example, be found in the control of an industrial process or in the internal functioning of the computer itself.'

Irish Patents Office website.

What does this mean in practice? Well, needless to say, this test is difficult to interpret and to apply. The European Patent Office and UK Patent Office also apply a similar tests.

For further information, please contact Deirdre Kilroy or Áine Matthews.


Winter 2006.