Patent Box for Software in the UK

Software patents are generally regarded as difficult to obtain in the UK, as there are numerous exclusions set out by the UK Patents Act (UKPA) and the European Patent Convention (EPC).

These exclusions include:

• Software relating to discoveries, scientific theory or mathematical methods
• Software that is an aesthetic or artistic work, such as literary, musical or dramatic
• Software which, if commercially exploited, would be “contrary to public policy or morality”
• Software which functions to present information

Further confusion arises from the fact the UKPA excludes computer programs “as such” from patentability; however, it doesn’t clearly define what a computer program “as such” actually is.

The challenge, therefore, is in defining the difference between a computer program and a patentable software invention.

Can software innovation qualify for Patent Box in the UK?

So, what software might qualify for a patent, and therefore the patent box regime? While it is not a simple categorisation of qualifying versus non-qualifying software inventions, there are some general rules.

As with all things R&D, the focus is on using technical solutions to solve technical problems. In the modern world, many technical problems are resolved by new and innovative software. This could be improving performance or resolving issues in a sales or customer service process, or a unique and novel way to manage data or web security.

In practice, to be eligible for a patent, the software invention must:

• Be novel: This means it must be unique and not available to the public at any time before the patent is filed, this includes information about the product’s technical features.
• Involve an inventive step: The technical solution cannot be obvious to a skilled person. A patent is unlikely if another skilled person tackling the same problem would arrive at the same solution through routine experimentation.
• Have a clear industrial application: Is the software useful? Does it solve a technical problem or challenge in an industrial setting? If so, then it likely has an industrial application.

Software is recursive and constantly evolving, which makes it difficult to be sufficiently innovative to satisfy the patent criteria. Furthermore, software technology can also be quite abstract, making it difficult to put the patent application together and fully establish that the invention satisfies each of the criteria.

Examples of software inventions that may qualify for Patent Box

Due to the complexity of the eligibility criteria, and the importance of “inventive steps” in its design and production, it is not possible to determine a software invention’s eligibility for Patent Box based on a product description or function alone.

A new algorithm for facial recognition on mobile devices, for example, could be eligible if it satisfies the patent criteria (e.g., if it could not have been developed by another skilled person through routine experimentation alone).

If a company has successfully developed a new data compression process, with clear industrial applications, but the solution was not sufficiently different to existing technologies, it would be unlikely to be accepted for a patent. If it was completely new (“novel”), however, then it would be more likely to qualify.

Seek advice on your eligibility

In order to determine whether a software invention qualifies for a patent, it is important to discuss it with a patent and intellectual property expert. They can look at your case in isolation and help determine eligibility based on the unique characteristics of your product, and the specific way it was developed.

For more information about the Patent Box regime in the UK, we encourage you to download our free Patent Box Guide.