Patentability of a programme for a computer and computer-implemented inventions: A South African perspective

03 May 2021

The Patents Act 57 of 1978 of South Africa (the South African Patents Act) provides that, among other things, anything which consists of:

• a programme for a computer; or
• a scheme, rule or method for performing a mental act, playing a game or doing business,

shall not be an invention for the purposes of the South African Patents Act.

The South African Patents Act further provides that only the excluded subject matter (e.g. a programme for a computer or software), as such, shall not be an invention for the purposes of the South African Patents Act.

It follows that, in South Africa, a programme for a computer (i.e. a set of instructions fixed or stored in any manner and which, when used directly in a computer, directs its operation to bring about a certain result) does not qualify for patent protection.

However, a method that utilises a programme for a computer to bring about a certain result (i.e. a computer-implemented invention), may be patentable. However, such methods often take the form of a scheme, rule or method for performing a mental act, playing a game or doing business, all of which are also specifically excluded from patentability.

Our courts have not yet had an opportunity to consider the validity of any patent granted for a computer-implemented invention on the basis that it is inherently not patentable.

In applying the provisions of the South African Patents Act, it is customary for our courts to take cognisance of relevant United Kingdom and European Patent Convention case law. This is especially true if our courts have not yet considered a specific provision of the South African Patents Act. Furthermore, in the above regard, the South African Patents Act is aligned with legislation of the United Kingdom and of the European Patent Convention.

The Patents Act 1977 of the United Kingdom (“the UK Patents Act”), like the South African Patents Act, provides that anything which consists of:

• a programme for a computer; or
• a scheme, rule or method for performing a mental act, playing a game or doing business,

shall not be inventions for the purposes of the UK Patents Act.

The leading case in the United Kingdom governing the application of the above exclusions is that of Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7. This case sets out a four-step test which is to be applied when considering the validity of a claim which is directed towards or includes any of the excluded subject matter. The four steps are:

1. properly construe the claim;
2. identify the actual contribution [i.e. what the inventor has added to human knowledge];
3. ask whether it [i.e. the contribution] falls solely within the excluded subject matter; and
4. check whether the actual or alleged contribution is actually technical in nature.

Determining whether the actual or alleged contribution is actually technical in nature can be quite difficult. The concept of “technical” is imprecise and could mean different things to different people. In the UK-case of AT&T Knowledge Ventures/CVON Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat), Lewinson J provided useful signposts which may be used to confirm the presence of a technical effect. The presence of a technical effect may render the actual or alleged contribution technical in nature. The signposts are:

1. whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
2. whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
3. whether the claimed technical effect results in the computer being made to operate in a new way;
4. whether there is an increase in the speed or reliability of the computer; and
5. whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

Lewinson J continued to state that if there is a technical effect in the above sense, it is still necessary to consider whether the claimed technical effect lies solely in the excluded subject matter. If the claimed technical effect lies solely in excluded subject matter, it is disqualified and shall not be considered an invention for the purposes of the UK Patents Act.

The Guidelines for Examination of the European Patent Office provides that computer programmes, as such, are excluded from patentability, but that the exclusion does not apply to computer programmes which have a technical character.

The Guidelines for Examination of the European Patent Office also provides that claims directed to computer-implemented inventions should define all the features which are essential for the technical effect of the process which the computer programme is intended to carry out when it is run.

There is nothing in the South African Patents Act which would suggest that a programme for a computer which has a technical effect would be an invention for the purposes of the Act.

The above notwithstanding, the writer submits that the presence of a technical effect in a method that utilises a programme for a computer to bring about a certain result may assist an applicant in South Africa to overcome the excluded subject matter of a scheme, rule or method for performing a mental act, playing a game, or doing business. Here, an applicant would be well advised to have cognisance to relevant UK and European Patent Convention cases, including the above-discussed cases.

Ultimately, the patentability of a computer-implemented invention has to be assessed on a case-by-case basis, whilst having due cognisance of the legislation and case law of each jurisdiction where patent protection is sought. This is an exercise for which a South African patent attorney is best qualified.

See also:

• Do you even code, bro? – Ownership of computer programs
• Copyright protection for works created prior to 1978
• The Jerusalema IP challenge
• Science, Technology & Innovation and Intellectual Property: Leveraging openness for sustainable development in Africa

(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)