Patenting the abstract - can you patent code?

As bioinformatics applies computer science and mathematics to biological data ideas can be, at least in part, abstract in nature – how to patent such data processing is challenging. Patent attorney Caroline Day discusses these challenges and explores some of the ways you can protect mathematical concepts and techniques

You would be hard pressed to name a technical field which is as fast moving or as world changing as the field of information technology. More and more data can be packed into or passed through smaller and smaller widgets with ever increasing efficiency. Medical records can be aggregated and patterns which have been invisible to the human eye are revealed. DNA sequencing may be based on some serious chemistry, but it could be argued that the modern era of DNA research did not start until the future chemistry Nobel laureate Michael Smith asked his brother-in-law, Duncan McCallum, a computer programmer working in business administration, for help working through the experimental results.

Innovations in the field of information technology can be hugely valuable in all senses of the word, and when an innovation is valuable it is natural to consider patent protection. However, when it comes to patent law, the harsh truth is that some computer-implemented inventions are deemed worthy and others are not. In the UK and Europe, the law as written both in the UK Patents Act and the European Patent Convention (which governs a unitary application process potentially resulting in patents in a number of European countries) is something of a rollercoaster ride. We are told that a patent may be granted for inventions which are new, involve an inventive step and can be used in industry. Then there's a kicker – a list of things which are deemed non-inventions for the purposes of the law. This list includes, amongst other things, discoveries, scientific theories, mathematical methods, business methods and programs for computers. You may think that’s game over for computer software, you can stop reading there, but you would miss out. Just as it seems the door has slammed shut, a window is cracked open: these things are excluded only to the extent that a patent or application for a patent relates to that thing "as such".

You would be hard pressed to name a technical field which is as fast moving or as world changing as the field of information technology

Patent applicants, and indeed patent attorneys, can spend a lot of time gazing at that window, occasionally hurling rocks at it: where does the line lie between a computer program 'as such' and a computer program which can count as a 'real' invention? There is certainly no hard and fast answer to that and each idea must be assessed on its own merits. What we do have is a body of examples from cases which have been considered by the European Patent Office (EPO) and the UK courts which at least may help to clarify the boundary. In the examples which follow, I have made no particular distinction between cases in the UK and before the European Patent Office (EPO) although in fact there are differences (despite a broad intention of conformity). Currently, the UK Intellectual Property Office (UK IPO) seems much more likely to raise an objection that an idea is excluded from patentability – is a non-invention – than the EPO. That doesn’t mean computer-implemented ideas get a particularly easy ride before the EPO; the EPO’s current practice is only to consider ‘technical’ features as contributing to the inventiveness of an idea and, if your only technical feature is a common computer, the same idea that could be identified as a non-invention at the UKIPO could be determined to be not patentable as it is not inventive when considered at the EPO. That said, if I was asked to choose how to attempt to protect a computer-implemented idea in the UK right now, I’d chose to do so via the EPO – it is my view that the UK IPO is currently less friendly to potential ‘non-inventions’ than the EPO.

What is key in both jurisdictions however is a consideration of what is technical about the idea. In an example which arose fairly early on in the development of the law, video image processing software was considered. The point of the invention was to provide a better computer program for image filtering, suggesting the use of a relatively small kernel (for example, an image sharpening or smoothing kernel) scanned across a data array to generate a new data array (which may itself be processed using another scanned kernel). This method may be familiar to those working in image processing, or indeed those working on machine learning techniques, for example those used in convolutional neural networks such as AtomNet, which works to predict the bioactivity of candidate molecules for drugs. In the context of the patent application, this small scanned kernel replaced operations carried out using larger kernels and meant that the number of computations required could be reduced while still producing a good result.

[caption id="attachment_55919" align="alignnone" width="620"] Patent law around code varies hugely between Europe and the USA[/caption]

The EPO noted that the computer program could be implemented by a computer which was utterly conventional. Moreover, the filters appeared to be essentially mathematical methods. Surely then this idea was directed towards two non-inventions? But the EPO also noted that electrical filters were intrinsically patentable, even when manufactured according to a mathematical method. Even more, there was a real technical benefit provided by this invention, which saved processing resources while producing a real world result – an image. The EPO decided there was no basis for treating digital filters differently from analogue filters. On top of that, in this case, the mathematical methods were used as part of a technical process, carried out by technical means (a computer) on a physical entity (an image stored as an electrical signal). This, therefore, was not an attempt to secure protection for the mathematical method or a computer program as such; instead the patent application was directed towards a technical process carried out under the control of a computer.

Compare this then to an application directed to a tool for modelling crystal structures, which could automatically combine input compounds and display the structure. This was much more time efficient than the sticks and balls manual techniques previously used. So there was no arguing that the innovation was useful, but was it patentable? This case was before the UK courts, but they reached across the channel and applied reasoning similar to that used by the EPO: was there a contribution which could be considered to be ‘technical’? Despite the fact the invention would save time and frustration, the courts thought no. The invention provided only the advantages you would expect from a computer, mostly speed. This is not technical, and the application was refused. Themes emerge, including some clear hooks from which to hang patent eligibility of software: Does your software have direct a real world effect, like giving you a longer lasting lightbulbs?

For a while, the so-called “machine or transformation” test led the way as a key indicator of patent eligibility in the US

Does it result in a better computer (for example, providing a better interface, operating at the level of the architecture of the computer and/or resulting in it running more efficiently and effectively as a computer)? If so, it may be patentable. Of course, the idea still needs to be judged to be new and non-obvious. Conversely, other considerations need to be considered: Is the contribution made by your program in a non-patent eligible field, such as providing a better business method? Is it just one of those things that computers do (e.g. think faster than a person, hold more records in a smaller area and with better accessibility than a storage cupboard, etc.)? If so, you may struggle in the UK and Europe. That said, in practice, the patent eligibility of software in Europe and the UK is more complex than I have space for here so it is always best to speak to a patent attorney to determine the chances for your idea.

While over the years case law in the UK and Europe has made general, if meandering, progress towards clarity, the same is not currently true of the US. Not so long ago, a European patent attorney would shake their heads sadly at a client – prospects in the UK or before the EPO for their invention did not look good. Still, we’d say a little more brightly, there’s always the US, land of the free and easy software patent. There’s no mealy mouthed ‘as such’ in the US. Instead, it is proclaimed that, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore.”

For a while, the so-called “machine or transformation” test led the way as a key indicator of patent eligibility in the US. This test considered whether a process is tied to a particular machine or apparatus, or transforms an article into a different state or thing. In practice, it was difficult for a computer-implemented invention to fail this test if software was described running on a computer. Then along came Alice. Alice (or more correctly, Alice Corp. v. CLS Bank) determined that a computer-implemented invention for managing settlement risk was unpatentable as being directed to an abstract idea. A two-part test arose for patent claims: 1. Is the claim "directed to" an abstract idea; and, if so, 2. Does the claim contain an "inventive concept" outside the abstract idea? This second test requires "an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” While this test is clearly stated, its application is not, in practice, straightforward (at least while the dust settles). It seems that improvements in technological processes, and in functioning of a computer, may give rise to an acceptable inventive concept. However, other, less technical ideas have been struggling before the US Patent and Trademark office. All of which sounds quite familiar to those of us practising in Europe.

Many in the US view Alice as a blip – a nadir in the patent eligibility of software in the US which may in time be corrected. US patentees have taken some comfort in subsequent cases in which software-related ideas have been deemed patent eligible (and there have been a couple now). In a recent case, a court commented: “We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract... Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract... Software can make non-abstract improvements to computer technology just as hardware improvements... Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea...” And so would-be patentees and their professional advisors in the US hope to ride out storm Alice – only time will tell if the US crackdown on patentability of software will continue or pass. When protecting your computer-implemented invention, consider working with a patent attorney to draw out the patent eligible features. It may be the case that the feature you view as the key selling point is different to the feature which draws the eye of your patent attorney. It can help to have the right people in the room – this may include the visionary whose bright idea sparked the development project, but it may also include the software engineer, who may have quietly solved technical problems in order to make the vision a reality.

Asking yourself what problems arose and what solutions were applied in development. Where they depart from the mundane, these solutions may very well be the stuff that software patents are made of.

 

To patent or not to patent?

Which of the following examples are eligible? - X-ray apparatus in which X-ray tubes are controlled by a software routine to provide an optimum exposure combined with adequate protection against overloading of the X-ray tubes. A conventional computer may be used. Patent eligible? Absolutely! X-ray tubes last longer a clear technical effect. Any time running a computer program results in a direct technical effect on a physical entity, it is unlikely to be considered a computer program ‘as such’.

- An automated securities trading system implemented on a conventional computer and caring out trading activities. Patent eligible? No the contribution made by the invention was in the area of business methods, which as mentioned above are deemed ‘non-inventions’ according to the law. The contribution made by the invention should itself be in an area which is outside the listed non-inventions.

- A patent application related to touch screens allowing multi touch input, for example, ‘pinch’ and ‘de-pinch’ actions. The application described proposes checking if a multi-flag functionality is enabled for a particular portion of a screen before transmitting or ignoring a second touch. This provides a simple option to effectively short circuit a multi-touch event where the functionality is not required, removing a burden from software developers. Patent eligible? Yes the device operates in a new and improved way on a basic internal level and presents an improved interface to application software writers, making it easier to write application software.

- A patent application in which values in RAM were used to determine if a power up was a ‘power on’ event or a software reset. If a software reset is identified, the restart could skip steps such as re-initialisation of the registers and reloading of the application program. Patent eligible? Yes. It made a contribution, quicker restarts, which was not in an excluded field and which employed technical means (in this case, microprocessors communicating a decision as to the type of restart). This changed the way the computer itself worked.

Caroline Day is Associate and UK and European Patent Attorney at major European intellectual property firm, Haseltine Lake. www.haseltinelake.com