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Wednesday, 6 June 2007

No computer program claims at the UK-IPO?

The IPKat is puzzled by a recent decision at the UK-IPO. In WesternGeco Limited's Application (BL O/135/07), the applicant appealed against an examiner's decision to refuse an application (GB0329367.7) to patent a method of processing seismic data. The method involved various complicated multi-dimensional mathematical analysis, and the claimed invention attempted to cover this method as applied to geophysical data.

The hearing officer found that the claimed invention was excluded under section 1(2) for being a mathematical method as such, following the four-step test of Aerotel/Macrossan.

Various dependent claims, which further detailed the mathematical method, were also found to be excluded for the same reasons. Two dependent claims, however, were found to be not excluded because they limited the method to seismic surveying, including a step of "determining one or more parameters relating to the physical properties of the earth's interior". The hearing officer found these claims to be acceptable, because they did not fall solely within the meaning of a mathematical method.

The hearing officer considered that a further claim to a computer program, dependent in part on the allowable claims, was not allowable. A practice notice from November 2006, issued shortly after the Aerotel/Macrossan judgment, was cited as the reason for not allowing this form of claim. The relevant part of the practice notice, which refers to questions that were left open by the judgment, reads (at paragraph 14):

"Also left open is a question over permissible forms of claim: can claims to a computer program (or a program on a carrier) be allowable when other claims in a different form, claims covering the use of that particular program, would be allowed? In the past, the Office has allowed such claims on the basis that substance should prevail over form. Whilst the judgment maintains the emphasis on substance over form, it also characterises the first step as deciding what the monopoly is, and if the monopoly does not go beyond the program, the contribution is also unlikely to go beyond "a program for a computer". Accordingly, whilst examiners will continue to assess each case on its merits, it seems likely that few claims to programs in themselves (or programs on a carrier) will pass the third test".
To this Kat's mind, this does not call for all claims to a computer program to be rejected but merely expresses a view that such claims are unlikely to be allowed. In this case, two of the method claims were viewed as being allowable, but a computer program claim dependent on either of these claims was not, even though the computer program would need to perform all the steps of the allowable claims.

This decision appears to be directly in contradiction to EPO practice, which (after T 1173/97) effectively allows computer program claims dependent on allowable method claims.

Another appeal against this sort of reasoning is being considered at the UK-IPO (see here for more details), the result of which is expected in the next couple of months. If the result is to be consistent with this decision, it appears that we will have an established practice at the UK-IPO that directly contradicts (rather than merely altering the grey areas of) the practice of the EPO. The IPKat suspects the story will not end there.


Anonymous said...

I claim:

1. A method of processing feline data, the method comprising: determining the number of male cats in a region; determining the number of female cats in said region; and adding the two numbers together.

2. A method as claimed in claim 1 comprising the further step of determining one or more parameters relating to physical properties of the cats from the processed feline data.

3. A storage medium containing a program for controlling a programmable data processor to carry out a method as defined in either of claims 1 or 2.

So, ignoring obviousness (and novelty?), claim 1 is a mathematical method - not allowable; claim 2 has a technical effect - allowable; and claim 3 is a computer program - not allowable.

What a joke of a patent system we have in this country.

David said...

Along with obviousness and novelty, you appear also to be ignoring sufficiency. The key to the sort of invention you describe would have to be the particular way the physical parameters are determined. It's pretty much a free beer claim otherwise. The particular way described in WesternGeco's claims was quite detailed, but could not be claimed as such since it was only an abstract mathematical method. As with many other inventions, once the method is 'grounded' in its proper technical field, it becomes patentable. This is not controversial. What is controversial is the Office's refusal to allow claims to a computer program product to do the allowable method.

So which bit is the joke?

Anonymous said...

The "determining one or more parameters" step in WesterGeco's claims is a further step, and is not described in detail in the claims.

If you start with geophysical data, whatever you do to it, you're likely to end up with something relating to "physical properties of the earth's interior". Claim 18 hardly seems to be "grounding" claim 1 in any meaningful way.

But more generally, all this messing around with the semantics of a claim in order to demonstrate a "technical effect" is the joke. Computer programs and mathematical methods are inventions, whatever the Patents Act says. They should be protectable as such.

Just my tuppence-worth.

Anonymous said...

I very much that the claim 2 would pass the fourth step of the A/M test. Also the whole invention seems to lack industrial applicability.

Anonymous said...

As far as sufficiency is concerned, I would reckon you could determine an upper bound on the physical parameter that is the total mass of the cats pretty easily.

As for the 4th step of A/M, that is exactly the point - claim 2 above is exactly analagous to the allowable WesternGeco claim 18...

"18. A method as claimed in any of claims 1, 7 or 12, or in any one of claims 3 to 6, 9 to 11, and 14 to 16 when dependent directly or indirectly from claim 1, 7 or 12, and comprising the further step of determining one or more parameters relating to physical properties of the earth's interior from the processed geophysical data."

Anonymous said...

"This decision appears to be directly in contradiction to EPO practice, which (after T 1173/97) effectively allows computer program claims dependent on allowable method claims."

I would write it the other way around:

"This decision appears to be directly in compliance with the EPC, which is being destroyed by the EPO TBA practice, which (after T 1173/97) is illegaly allowing computer program claims dependent on allowable method claims."

Maybe someone can sue the EPO at the ECJ? It does not seem possible, since they are located somewhere on a boat in the international waters.

David said...

My comment is objectively correct, whereas yours seems to express a view that the EPO TBAs have incorrectly applied the EPC. I am trying not to express a view one way or another, but pointing out the apparent contradiction between UK and EPO practice. Whether the solution is to bring the UK into line with the EPO or to bring the EPO into line with the UK is not the point. UK patent law should be the same as European patent law. At the moment, it is not.

The EPO has no relation to the ECJ, which can only rule on European Community law matters, not on the European Patent Convention, which is not a part of the Community acquis. To change the EPC would require a further amendment to the Convention by agreement of the member states.

Anonymous said...

The point is that a computer program claim is *not* (really) a dependent claim, because it covers activities not covered by the preceding claims (eg distribution of such a program for others to test against their own solutions).

It is the activity of using such a program for particular purposes that may be patentable under EPC 52, not the program itself.

-- J Heald.

David said...

Good point. So is T 1173/97 wrong then?

Gerontius said...

Another point, though, is that a person running a computer program would be directly infringing the method claim, even without a computer program claim. To get direct infringement of the person supplying the computer program, though, you need a claim to the computer program which can execute the method.

So where we stand with the UK decision is that the "real" infringer (making and selling the computer program to perform the infringing method, perhaps at profit) is able to distance themselves from the patent, whereas an end user (who may have bought that program in good faith) is the only person liable for direct infringement. There's something wrong with that picture.

Just occurred to me: Is this the inverse of a product by process? :)

Gerontius said...

Addendum to my previous comment: if the invention is shown to be a method of doing something, then a claim to a computer program for performing that method is arguably not a computer program "as such" because the claim is only excluded "to the extent that" it relates to a computer program.

Put another way, there is no invention in the computer program, since that part of the claim is obvious once the actual method has been formulated. The invention is the method and that is not a computer program even though it can be carried out by one, as can any process.

One final comment and I'll stop - promise. It's important to remember that there are two main reasons for having dependent claims. The most usual reason is that dependent claims include additional novel/inventive features which could be put into the main claim if that claim is found lacking for novelty/inventive step.

The other reason is to catch different types of infringer even if the dependent claim itself won't help if the main claim falls. This goes back to my product by process thing. You can claim a process for making a product, but it is also a good idea to have a claim to the product itself as made by the process to directly catch people selling that product without having to rely on the "product by process" rules in the EPC. This second reason for including dependent claims is why a dependent claim to a computer program is useful.

Cristian said...


Your statement:

"there is no invention in the computer program, since that part of the claim is obvious once the actual method has been formulated. The invention is the method and that is not a computer program even though it can be carried out by one, as can any process"

is very similar to Prescott's little man test in paragraph 104 of CFPH (which you know I am fond of):

"the question to ask should be: is it (the artefact or process) new and non-obvious merely because there is a computer program? Or would it still be new and non-obvious in principle even if the same decisions and commands could somehow be taken and issued by a little man at a control panel, operating under the same rules? For if the answer to the latter question is 'Yes' it becomes apparent that the computer program is merely a tool, and the invention is not about computer programming at all. It is about better rules for governing an automatic pilot or better rules for conducting the manufacture of canned soup."

Here the computer program is simply a tool in the process / method that is patentable and should not prejudice the patentability of the claimed process / method. However, as with the little man test and also (whether we agree it follows precedent or not) the 4 step test as laid down by Macrossan, if the scope of the claimed monopoly still resides solely in what is in substance an invention about computer programming, it should not be patentable. Some struggle to see why step 1 is so important but it is the correct application of step 1 which really puts substance over form. Without this, the convention is open to be used as a policy tool (which may favour certain vested interest groups but query whether it ultimately benefits the health of the whole system).

Something else is needed above and beyond a computer program - here, per Macrossan, the concept of computer program is not construed narrowly so as to render the computer program exclusion meaingingless but instead is intended to include per para 36 "a working computer program", a computer program in practical rather than abstract form - and it is the 'something else' that is the basis for the allowable claim, not the claim to the computer program per se. In practice, the 4 step test as interpreted by the UKIPO produces the same result as the infamous 1978 guidelines of the EPO: "If the contribution to the known art resides solely in a computer program then the subject matter is not patentable in whatever manner it may be presented in the claims" (emphasis added). "Substance over form" and a logic completely consistent with comments in Macrossan about how if the claim falls solely within step 3 (excluded subject matter) it should not be necessary to go to step 4. Creative claims drafting is no longer relevant when a purposive approach is adopted to the exclusions. Note there is no distinction in the 4 step test (and in the 1978 guidelines) between a 'technical' computer program and a 'non-technical' computer program. Now, unsurprisingly, I argue that the EPO in 1978 was doing its job by correctly (and not narrowly) interpreting the exclusions on patentable subject matter and that the court in Macrossan is moving back towards this same point. For most onlookers it did not go unnoticed how the court in Macrossan bodly highlighted the substantial watering down of the EPO's earlier positions and the inconsistency of the EPO BA decisions; however, few are brave enough to ask the obvious question - "why such inconsistent decisions over time from the EPO to what is the same underlying convention"? Blatent politics anyone? I can really put my feet up since I think we are already seeing signs within the EPO organisation of a rebellion against a management driven by quantity of patents rather than quality and innovation. Are all of our interests being served by the current system? I don't think so.

In the last few weeks we have seen some interesting developments (helpfully summarised by David). There is much to comment on but I am quite enjoying watching the debate unfold. Certainly, some of David's observations deserve more comment and reflection and this is really just chit chat.


Hartmut Pilch said...

David, if a person running the program would necessarily be infringing on the process claim, then that just shows that the so-called process claim just refers to a program as such, and should be dropped as well.

In many cases, process claims are in fact different from program claims. E.g. the process claim could refer to a computer-aided chemical reaction, whereas running the program would then at best mean running a simulation of the reaction, because you can't run the reaction itself on a general-purpose computer that is not attached to an automated chemical laboratory.

Thus, in conformance to the 1978 Guidelines cited by Lasporg above, the meaning of a possible program claim becomes the litmus test for the allowability of the other claims under Art 52.2d. Either they are in substance equivalent to the program claim and by consequence not allowable, or they really contain something beyond a program as such.

Does that test make sense?

I've also summarised this in two rules at

David said...

It seems to make sense to me, but that reasoning would prevent any novel and inventive developments that could be applied to a 'general purpose computer' (definition to be determined) from being patentable. That is your whole point, I imagine.

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