Patent Applications GB 0226884.3 and 0419317.3 by CFPH

According to section 1(2) of the Patents Act 1977, business methods and computer programs “as such” are excluded from patentability. However, a series of cases in the UK over recent years and the practice of the UK Patent Office (UKPO) shows that software which provides a technological effect, and has the capability of being applied in industry, will be treated as patentable subject matter.

This approach was reconfirmed by the Patents Court in the matter of Patent Applications GB 0226884.3 and 0419317.3 by CFPH LLC (CFPH). The two patent applications in issue related to computer-networked interactive wagering on the outcomes of events. The patent applications were rejected by the UKPO because they were “business methods” and did not provide a technical contribution.

On appeal, the court agreed with the UKPO decision and set out a new 2-stage test (subsequently endorsed and applied by the UKPO). The new, 2-step procedure is to: (i) identify what is the advance in the state of the art that is said to be new and non-obvious (and susceptible to industrial application); and (ii) determine whether it is both new and non-obvious (and susceptible to industrial application) under the description of an “invention”.

Despite the new test, the UK position in relation to the patentability of software (and certain other excluded subject matter) remains in some respects unclear. What is clear, however, is that provided that part of an invention is new and has a technical effect, it may be patentable even if it is software.

This article first appeared in our Technology Annual Review, March 2006. To view this publication, please click here to open in a new window.