May has been an interesting month in the world of software patents. This post is about a decision of a UK court ruling that a particular software invention is patentable. I’ve written another post about a US court decision that represents a missed opportunity to bring some clarity to this area.

The UK Court of Appeal decision was in the matter of HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451.  In fact HTC did not appear at the appeal following a settlement agreement reached between themselves and Apple. However, the UK Patent Office took up an invitation to appear at the hearing “to protect the public interest by intervening to the extent necessary to prevent invalid patents being restored to the register”.

The decision relates to two Apple patents, EP2098948  and EP1964022, both of which were found to be invalid by the High Court in a previous action.

The ‘022 patent relates to Apple’s “slide to unlock” feature made famous by the iPhone. That patent was originally rejected as lacking inventive step and that decision was upheld. However, this blog post concentrates on the ‘948 patent.

The appeal concerned just two claims of the patent, claims 1 and 2. In the original decision, both claims were held to relate to computer programs as such and so claim excluded subject matter. In addition, claim 1 was held to lack an inventive step. No such objection was raised against claim 2. The appeal decision ruled that both claims should not in fact be excluded from patentability as being “computer programs as such”. The lack of inventive step of claim 1 was upheld, but claim 2 was deemed as having an inventive step and therefore being valid.

The ‘948 patent relates to a “touch event model” for processing touch events in a multi-touch enabled device (such as a mobile phone or tablet), i.e. a device that can interpret touches made at two or more points on the device’s screen – for example, “pinch” and “de-pinch” gestures used for zooming. Touch events are received by the operating system (OS) of a device and passed to software applications for processing. The patent specification explains that software applications need to process and act upon touch events that are passed to them by the OS, but that writing an application to deal with multiple touch events involves additional complexity. So, there is an additional programming overhead for applications that do not need to make use of multi-touch capabilities, and for legacy applications.

The patent’s solution is to provide two flags on a per-view basis. The first flag is a “multi-touch flag” that indicates whether a particular view is allowed to receive multiple simultaneous touches. The second is an “exclusive touch flag” that indicates whether a particular view allows other views to receive touches while the flagged view is receiving a touch. In combination, these flags mean that a muti-touch enabled device can run software elements that are relatively simple and that are programmed to handle only a single touch event at a time, but can also execute more complex elements that use the multi-touch functionality.

Now, it is well established in the UK that “programs for computers … as such” are not regarded as inventions for which patents can be granted; but that patents may be granted for an invention where it makes a technical contribution to the known art. That contribution means that the invention is not a program “as such” and a patent can be granted on the basis of that contribution, provided of course that the contribution goes on to be proven as new and inventive.

In the original case, “the judge came to the conclusion that the invention was not patentable because it related to a computer program as such. He held … that one aspect of the contribution lay in the software that processed multi-touch inputs and this was plainly excluded subject matter; and the other aspect of the contribution was the advantage that it made it easier to write software for multi-touch devices, and this too lay wholly within excluded subject matter” (see paragraph 54 of the judgement).

However, the judgement in this appeal disagrees, stating “The problem which the patent addresses, namely how to deal with multiple simultaneous touches on one of the new multi-touch devices, is essentially technical” (see paragraph 56 of the judgement).

This is elaborated at paragraph 57: “Now it is fair to say that this solution is embodied in software but, as I have explained, an invention which is patentable in accordance with conventional patentable criteria does not become unpatentable because a computer program is used to implement it. I believe the judge took his eye off the ball in focussing on the fact that the invention was implemented in software and in so doing failed to look at the issue before him as a matter of substance not form. Had he done so he would have found that the problem and its solution are essentially technical in nature and so not excluded from patentability.”

So, the key point here is that the question of whether an invention should be excluded from patentability as relating to a program for a computer as such should be decided on the basis of the substance of the contribution that is made, rather than focussing only on its form.

In its reasoning, the judgement also emphasises that it is relevant to ask what the invention contributes “as a matter of practical reality over and above the fact that it relates to a program for a computer”. The distinction between whether the invention happens to be improvements made to software programmed into a computer or hardware forming part of a computer should not in itself be the decisive factor in determining whether the exclusion should apply.

In my view, this decision does not represent a radical departure from previous practice, but instead provides some helpful guidance on where the boundaries should lie. I am optimistic that this may lead to a more consistent approach from the UKIPO when they carry out examination of patent applications.

This may result in more software patents being granted by the UKIPO, but only in the context of a more consistent and logical approach being taken. I don’t see this decision as “opening the floodgates” to dubious quality software patents. The requirement for a technical contribution will continue to represent a meaningful restriction on the types of inventions that can be patented in the UK, and decisions that clarify the law without having a deleterious effect should be welcomed.