How did we get in this mess?

It's useful to know the background to this problem, in terms of the law, and the legal maneuverings behind the scenes that happened to allow software patents to get past the wording of the law. It could be described as quite an effective slippery slope: we started from a position of not having software patents, but with a little legal wiggling, we now have a situation where they're still not allowed, but are getting passed anyway. The current struggle and future struggles to prevent software patents are attempts to stop us sliding futher down the slope, and indeed to regain some of the ground we have lost.

What does the law say?

Let's start at the beginning, with the The UK Patents Act 1977 as we saw in the introduction. To refresh, this is what it currently says:

Section 1(1)

A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say -

1. the invention is new;
2. it involves an inventive step;
3. it is capable of industrial application;
4. the grant of a patent for it is not excluded by subsections (2) and (3) below;

and references in this Act to a patentable invention shall be construed accordingly.

(If anyone has an electronic copy of the original 1977 Act, I would be most interested in seeing it!)

This doesn't obviously block patenting software. However, it's the fourth condition which does, because it excludes the things listed in subsection 2, and subsection 2 says:

Section 1(2)

It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of -

1. a discovery, scientific theory or mathematical method;
2. a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
3. a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
4. the presentation of information;

but the forgoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.

And here we see the blocking of software patents. But, sadly, we also see the feint shine of light - yes, indeed, there it is, a loophole: ".. to the extent that a patent .. relates to that thing as such.". This is known as the "as such" clause, and is the cause of our current predicament.

The "as such" loophole

The first attempts to use this loophole consisted of people writing software, putting the software on a floppy disk, and then claiming the software as patented. The reasoning, as it went, was that since the claim (a floppy disk) was not software as such, it should be patentable. This argument didn't get very far...

"It would be nonsense for the Act to forbid the patenting of a computer program, and yet permit the patenting of a floppy disc containing a computer program, or an ordinary computer when programmed with the program; it can well be said, as it seems to me, that a patent for a computer when programmed or for the disc containing the program is no more than a patent for the program as such."
Dillon IJ, RPC 147 [1989], Genentech Inc's Patent

So the attempts to make the loophole work got slightly more sophisticated. The decisive EPO cases were IBM/Computer program product II (T 935/97, [1999], RPC 861) and IBM/Computer program product (T 1173/97). Before looking at the judgement, let's take a quick peek at European Patent Convention Article 52, the European law in question:

Article 52: Patentable Inventions

1. European patents shall be granted for inventions [ in all fields of technology ], as far as they are new, involve an inventive step and are susceptible of industrial application.
2. The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
   1. discoveries, scientific theories and mathematical methods;
   2. aesthetic creations;
   3. schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
   4. presentations of information.

You can see the close harmony between European law, and UK law. Indeed, there is also the "as such" clause in Article 52. Anyway, onto the decision in the IBM cases:

In a recent decision of a Board of Appeal of the EPO (T 1173/97), the Board noted that a computer program is considered to have a technical character, if it causes, when run on a computer, a technical effect which may be known in the art but which goes beyond the "normal" physical interactions between program and computer. Such effect may, for example, be found in the control of an industrial process or in the internal functioning of the computer itself.

(The actual decision is not currently online; it should be available from this page, but the link to the document doesn't go anywhere..)

So, what does the above mean? I'm not really sure. I don't think anyone is really sure. Anything which goes beyond the "normal" interaction between software and hardware is usually a bug to most people. However, the above decision added the grease necessary to allow software patents to slip in the back door. This was followed by national practice notices, aimed at re-aligning national practice to this new European system of deciding whether or not something was excluded. The UK note included:

"The Technical Board of Appeal of The European Patent Office has decided .. that the practice of The European Patent Office under Article 52(2) and (3) of the European Patent Convention should be changed in certain respects in relation to claims to computer programs. The Board decided that given that claims to a computer system when programmed, or to the equivalent process, are currently accepted if the running of the program involves a technical contribution, it is not logical to refuse claims .. provided the claims properly define and delimit the program in question. The Board considered that such claims should be patentable because the program has the potential to produce a patentable technical contribution."

This delightfully circular logic - that "[software] should be patentable because [there is] potential to produce a patentable technical contribution" is now current practice. Software should be patentable because.. well, because. Presumably this logic will also be applied to other excluded items: that is, if a version of skip-rope is invented that has suitable technical effect (perhaps going beyond the usual interplay between rope and skipper) then it would be patentable also.