Patentability of Software in the UK

The Court of Appeal concluded that Aerotel’s patent falls on one side of the line of patentable subject matter, and Macrossan’s application falls on the other. Does this help us find that elusive bright line between technical and non-technical subject matter? The Court of Appeal conducted a wide-ranging review of UK and EPO case law, and even considered US case law, but onlookers expecting a clear new direction on determining patentability of computer-implemented inventions in the UK may be disappointed. The effect of the judgment will merely be to maintain the status quo exemplified by the earlier Court of Appeal decision in Merrill Lynch [1989] RPC 561.

Click here for the facts of the combined cases. On this page we look at “test” now to be applied when analyzing the issue, and we look at the subsequent practice note published by the Patent Office.

The Court felt obliged to follow its own precedent, which requires one to ask

whether the invention as defined in the claim makes a technical contribution to the known art,

with the rider that

novel or inventive purely excluded matter does not count as a technical contribution.

The Court has expressly rejected recent EPO case law that has been rather more lenient to the patentee, partly because the judges found the EPO’s case law to be inconsistent and to have the potential to give rise to anomalous findings of patentability.

The Court held that the exclusion on computer programs should be given a broad scope, stating:

"the framers of the EPC really meant to exclude computer programs in a practical and operable form… to exclude real computer programs, not just an abstract series of instructions."

On the mental act exclusion, the Court of Appeal expressed doubt as to whether the exclusion extends to electronic means of doing what could otherwise have been done mentally. There is no particular reason to suppose that “mental act” was intended to exclude things wider than, for instance, methods of doing mental arithmetic (every now and then someone comes up with a trick for this, for instance Trachtenberg’s system) or remembering things (e.g., in its day, Pelmanism).

Turning to the business method exclusion, this exclusion does not require any degree of abstraction of a business method. The exclusion can apply even to a tool or facility which might be used in a business.

The judgment sets out a new four part test for assessing patentability, which now supersedes the test set out in CFPH’s Application (which was adopted by the UKPO):

(1) properly construe the claim;

(2) identify the actual contribution [vis-à-vis the known prior art];

(3) ask whether it falls solely within the excluded subject matter; and

(4) check whether the actual (or alleged)* contribution is actually technical in nature

* During the application stage, the Office can consider the alleged contribution. Before the Court, however, the actual contribution must be assessed.

Unfortunately, the judgment is rather unhelpful in that it provides little clear guidance on how one can distinguish inventions that are patentable by virtue of a technical contribution from those whose technical contribution is insufficient to confer patentability. The UK Patent Office has consequently issued a new Practice Note (see below) with a view to explaining how the Office interprets the Decision and will fill in the gaps.

 

Rejection of PENSION BENEFITS and HITACHI

Notable in this judgment is a rejection of the approach in EPO Board of Appeal Decisions T0931/95 PENSION BENEFITS and T258/03 HITACHI, that a claim passes muster under Article 52(2) EPC if it calls for any kind of hardware, but fails for obviousness if there is no inventive contribution outside an excluded field. In his judgment, Lord Justice Jacob said:

Consider for instance the following:

i) a claim to a book, e.g. to a book containing a new story the key elements of which are set out in the claim;

ii) a claim to a standard CD player or iPod loaded with a new piece of music.

Everyone would agree that the claims must be bad – yet in each case as a whole they are novel, non-obvious and enabling. To deem the new music or story part of the prior art (the device of Pension Benefits and Hitachi) is simply not intellectually honest.

 

TRIPS and EPC 2000

TRIPS (the Agreement on Trade Related Intellectual Property Rights) says that (subject to certain exceptions roughly relating to “ordre public”/morality, plant or animal varieties, methods for treatment of the human or animal body, and diagnostic methods, all corresponding to Article 53 EPC) patents shall be available for any inventions . . . in all fields of technology (provided always that they are new, involve an inventive step and are capable of industrial application) and that patents shall be available and patent rights enjoyable without discrimination as to … the field of technology. These treaty obligations will be implemented in EPC 2000 coming into force in December this year, which has a revised Article 52(1), which reads

European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application

Might this mean that in December the law will change? Perhaps not. The computer program exception of Article 52(2) will remain unchanged. The Court of Appeal noted the TRIPS angle but appears satisfied that if computer programs are indeed “technology”, nevertheless computer programs per se are positively excluded from patent protection.

 

Questions to the Enlarged Board of Appeal

The Court of Appeal took the extraordinary step of formulating questions for consideration by the EPO Enlarged Board of Appeal. The Enlarged Board of Appeal is the EPO’s highest appeal instance, and it was the Court’s hope that a decision by the Enlarged Board would bring into conformity the disparate practices of the EPO and the national courts and patent offices of EPC contracting states. By letter of March 2007 to Jacob LJ, the President of the EPO, Alain Pompidou, ruled out a referral of the subject to the Enlarged Board, saying:

"I believe there are insufficient differences between current Board of Appeal decisions dealing with Article 52 EPC exclusions on important points of law that would justify a referral at this stage."

 

UK Patent Office Practice Note

The Patent Office practice note considers how to apply the four steps of the Court of Appeal’s test.

It notes that the Court saw the first step (properly construing the claim), as something that always has to be done and involves deciding what the monopoly is before going on to the question of whether it is excluded.

The second step amounts to identifying what the inventor has really added to the stock of human knowledge. The substance of the invention is important rather than the form of the claim adopted. (E.g. the presence of conventional hardware elements in the claim does not change the contribution.) What the applicant alleges he/she has contributed is not conclusive and ultimately it is the actual contribution that counts, but at the application stage, it is quite in order to consider the third and fourth steps on the basis of the alleged contribution.

The Patent Office will continue the practice of issuing a report under Section 17(5)(b) Patents Act 1977 that a search would not serve any useful purpose if the application seems to have little prospect of maturing into a valid patent and a search is not necessary for the purposes of the second step.

The third step comprises deciding whether the contribution is solely unpatentable subject matter (i.e. matter excluded under Article 52(2) EPC). “Solely” is merely an expression of the “as such” qualification of Article 52(3). If the contribution falls wholly within one of the listed categories, the invention is not patentable. If the contribution falls partly within one or more of those categories and partly outside, it passes the third step.

This leads to the fourth step (often redundant), which is whether the contribution is technical in nature. The Patent Office has published reviews of four earlier decisions of its hearing officers in the light of the Court of Appeal’s decision, and in each case concludes that the cases would have been decided the same way under the new approach. Two of the examples given were held unpatentable, and one (an application by ARM Limited for a compiler) was held to be patentable. The fourth example had claims (to a system which takes an action based on an assessment of a number of possible actions) that were not patentable and claims (to the system and method restricted to a robotic operating system) that were.

 

 

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