The Court of Appeal has recently overturned a decision of the High Court that two of Apple's iPhone-related patents were invalid. Of particular interest was the "948" patent which related to computer devices with touch sensitive screens which are capable of recognising single and multiple touch events. The Court of Appeal held that Floyd J had incorrectly found that claims 1 and 2 of the "948" patent were invalid because they related to computer programs. Lord Justice Kitchin was of the view that "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."
Today's multi-touch enabled devices such as Apple's iPhone, can be touched in any number of ways and locations on the device's touch screen. Ensuring that applications on the device are able to assess and process all of these different touches and respond to the correct touches has caused difficulties and complexities for programmers. If every application had to consider every possible multi-touch event, the application would need to process large amounts of incoming touch data driving up cost and results in applications becoming highly complex, even though they may only have simple functionality.
The "948" patent addressed the problem of how to deal with multiple simultaneous touches by proposing the use of two particular different types of "flags" associated with different parts of the display ("views"). The two types were: 1) multi-touch flags which indicate whether a particular view is allowed to receive multiple simultaneous touches; and 2) exclusive touch flags which indicate whether a particular view allows other views to receive touches while the flagged view is receiving a touch. The invention operates at all levels of the computer software and the flags control events passed from the lower layers.
"A program for a computer" is one of several exclusions from patentability (see s.1(2)(c) Patents Act 1977). In assessing whether an invention falls into this excluded category, the Court of Appeal felt the key question to answer was whether the invention made a technical contribution to the art i.e. what does the computer program in this case actually contribute? Lord Justice Kitchin felt this included whether the invention solves a technical problem within the computer, and considered it appropriate to apply the four step test in Aerotel Ltd v Telco Holding Ltd; Macrossan's Patent Application  EWCA Civ 1371,  RPC 7.
In answering this question the Court of Appeal considered a number of cases, concluding that it was not possible to define a clear rule to determine whether or not a program is excluded, and each case must be determined on its own facts. The case of AT & T Knowledge Ventures LP's Patent Application  EWHC 343 (Pat),  FSR 19 was also agreed to provide some useful guidance ("signposts") as to what to look for to help answer the question.
Lord Justice Kitchin felt that Apple's invention in this case does make a technical contribution to the art and its contribution did not lie solely in excluded matter. He felt the problem the patent addresses was essentially technical, and the solution using flags causes the device to operate in a new and improved way. He said "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."
It is interesting to note in Lord Justice Lewison's judgment his disappointment that the wording of s.1(2) Patents Act 1977 (which implements Article 52 European Patent Convention), had not been clearly interpreted by the courts, but instead focused on applying the "technical contribution" test (as discussed above). Lord Justice Lewison surmised the situation thus "we now ignore the words "computer program….as such" and instead concentrate on whether there is a technical function".
The case provides useful guidance going forward on how to answer this question, and makes clear that just because a computer program is software related does not necessarily mean it will fall within excluded subject matter.
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