Decision demonstrates difficulties when patenting computer implemented inventions in the UK

In a recent hearing at the UKIPO, Canadian company Thoughtwire Holdings Corp were unsuccessful in arguing that their patent application – “Method and system for sharing data between software systems” – related to more than excluded subject matter.

The invention related to a system for sharing data between multiple software systems, providing an intermediate data sharing function which holds data provided by the various systems and information on which systems require which specific data to perform their function.

As expected in a case of this type, when assessing patentability the Hearing Officer used the Aerotel/Macrossan four step test, which has been standard in UK law for some time when assessing the patentability of computer implemented inventions.

The applicant also attempted to rely on the ‘AT&T signposts’ (subsequently updated in HTC v Apple) in which the Courts have provided additional guidance on what constitutes a “technical contribution”. Thoughtwire argued that the invention:

  • Resulted in a computer being made to operate in a new way, as “the intermediate sharing service resulted in the system performing a different sequence of operations…with the data sharing service effectively acting as a “manifold””; and
  • Resulted in a better computer because it provides “a different way of resolving data requests because the service allows scaling up of the number of systems that are interacting without increasing the integration complexity.”

Both of these correspond to signposts that the Courts have indicated could be indicative of a technical contribution. In this case the Hearing Officer was not convinced. In the Hearing Officer’s opinion the subject matter did not make a contribution further than “a database program setting out how data is stored and accessed for use in other systems. Whether it is a better program than previous ones is immaterial – it is still a program for a computer and one which in my view does not make a technical contribution”. Consequently the application was refused.

It is interesting to note that this application was allowed in the US. Even with the changes brought about by Alice in the US this case demonstrates that it is still more difficult to obtain protection in the UK for this type of subject matter.

It is notable that the applicant chose to file a UK national application, rather than a European application, as is more common.  The applicant also filed a German national application, and may have adopted this approach to save costs, since two national applications are often less expensive than a single European application.  The corresponding German national application remains pending, and it will be interesting to see how this case is dealt with at the German Patent Office.

See here for more information on patenting computer implemented inventions.

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