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Monday, 12 November 2007

High Court to hear software patents appeal


According to a recent press release, next week the High Court is to hear an appeal from a UK-IPO decision (Astron Clinica & others) on software patents.

The appeal, coordinated by the well-known name (in the world of software patents at least) of Beresford & Co., relates to the UK-IPO's practice, following their interpretation of Aerotel/Macrossan (see previous IPKat posts here, here, here or here), of refusing claims directed to computer program products, even when such claims refer to claimed methods that are otherwise seen to be allowable. The four patent applications in question had method claims that were all deemed to be allowable, but were refused solely on the grounds of having computer program product claims.

The companies allege that this practice undermines the ability of British industry to protect inventions reliant upon the development of new software. Each has developed novel software, the control and distribution of which is critical to the success of their business.

Nicholas Fox of Beresford & Co. says: “A lot of people think there is no problem here because disks and downloads are protected by copyright. However, that is just not true. Copyright protection only protects code against copying. In contrast, patent protection enables a company to monopolise an invention even if competitors independently come up with the same idea. In order to protect their commercial interests companies need patent claims directed towards the products and processes that are sold in the market place. In the case of computer based inventions this means that claims to disks and downloads embodying an invention are required.”

The IPKat looks forward to seeing what the High Court will have to say about the current practice at the UK-IPO, but has a very strong feeling that the appeal will go nowhere at this level. Not until Lord Justice Jacob gets a chance to have a proper look at the issue (which he didn't in Aerotel/Macrossan) will there be even a slim chance of the practice being overturned. Even then, it seems likely that the practice will be upheld, unless their Lordships in the Court of Appeal manage to pull together some complicated reasoning that complies with their previous decision yet comes to the opposite logical conclusion. How far will the appellants be prepared (or allowed) to go to pursue their case? And for how long will UK practice be diametrically at odds with that at the EPO?

15 comments:

Anonymous said...

I'm surprised the Kat is so sure the Courts won't reverse the UKIPO's practice. Whether or not it is a correct practice, it is clearly not a correct interpretation of Aerotel/Macrossan. Basically, the UKIPO have decided what they want their practice to be and have found a soundbite in A/M that supports them, but in this way they are doing nothing more than paying lip-service to the judgment.

This is similar to most of the recent decisions of the UKIPO - they quote fujitsu with gay abandon ("no novel hardware" etc) without showing any actual understanding of the judgment. In many cases I think they have been right to refuse the cases they did, but I have seen maybe one or two decisions where the reasons given made any sense - legally or logically.

The A/M test says, 1. construe the claim. A claim to a computer program operable to produce a novel effect is then deemed excluded because there is a computer program in there. That is completely contrary to everything the court of appeal has ever said - the mere fact that a computer program is involved does not render an invention excluded.

What matters is the contribution and, here, the contribution is the novel effect provided by operation of the computer program.

I quote you (from memory) Merrill Lynch: "a computer apparatus operating to produce a novel technical result would normally be patentable". Unless you're going to extol form over substance, something which the CoA are wary of, a computer program operating to produce the same novel technical result should be equally patentable.

Gerontius

David said...

G,

I think you have pointed out the flaw in your argument yourself. Read your last paragraph again and tell me that a claim to a computer program product is in any way the same in substance to a claim to a computer program operating to produce a technical result.

What the argument is about is to do with substance over form, although in this case the form of claim is very much a matter of substance. A claim to a computer program product is not a claim to a computer operating to produce a technical result, but to a program as such, having the potential to produce a technical result. The UK-IPO argue that a potential effect cannot be part of the contribution, i.e. the contribution cannot extend beyond the monopoly of the claim. The EPO, on the other hand, argue that the potential can be taken into account (T 1173/97 et al).

I think it will come down to what Jacob LJ meant when he said (in paragraph 42 of A/M):

"You first have to decide what the monopoly is before going on the question of whether it is excluded. Any test must involve this first step".

Incidentally, I don't think the above could possibly be considered obiter dicta, since it is clearly a core feature of the four-step test.

So, do we consider the monopoly of a claim to a computer program or not? If it (the monopoly) is excluded, then the claim must be. Or am I missing something here?

Since you appear to think it may go the other way, would you care to take a bet on the outcome? A bottle of the old widow, perhaps?

Anonymous said...

David - I think you're right. I think Gerontius has it backwards when he says "The A/M test says, 1. construe the claim. A claim to a computer program operable to produce a novel effect is then deemed excluded because there is a computer program in there." In fact it goes - The A/M test says, 1. construe the claim. A claim to a computer program per se, or to a computer program on a carrier, is then deemed excluded because there is *nothing but* a computer program in there.

I'm slightly surprised at the suggestion that UKIPO are clutching at straws to make computer programs per se unpatentable. In the old days, they were considered unpatentable, and Gale seemed quite clearly to support this. Then, the Office suddenly declared that they were patentable (if a claim to a computer when programmed was also patentable) - this was done in response to a couple of decisions at the EPO. While I could see why this change would be welcomed by patentees, while not really depriving third parties of rights they ought to have had, it seemed to my mind very shaky legally (EPO boards don't overrule our Court of Appeal) and logically (the Act clearly says you can't have a patent for a program). Having swung one way, I would have thought that to change back again would require some fairly clear direction from the courts, not just a line or two that the Offcie could misinterpret suitably...

Cristian said...

Hi David et all

Whilst I don't doubt your academic briliance and knowledge of patent laws I have to say that I was somewhat surprised David that you would cite Nicholas Fox without cringing at the reasoning employed to suggest a need for the patenting of software.

Let's focus on some of the statements made by Mr Fox:

"A lot of people think there is no problem here because disks and downloads are protected by copyright. However, that is just not true. Copyright protection only protects code against copying"

This is an interesting argument and suggests that copyright protection is insufficient to protect the economic interests of software creators/vendors in terms of the actual supply chain. The comment is clearly about what most would term 'software piracy'. Clearly, the Business Software Alliance, a leading trade organisation whose membership comprises some of the world's leading software companies, thinks copyright is broad enough to cover the acts noted by Mr Fox:

"Software piracy is the unauthorised copying or distribution of copyrighted software. This can be done by copying, downloading, sharing, selling, or installing multiple copies onto personal or work computers" (from BSA's homepage, http://www.bsa.org/country.aspx?sc_lang=en-GB)

To suggest the rights granted by copyright are not sufficient to protect from the acts associated with software piracy (copying media and downloading) is an extreme position.

The rest of the statement puts forward the idea that patents are necessary to protect the "commercial interests" of companies. Of particular interest is that Mr Fox explains the benefit of patents as:

"enabl[ing] a company to monopolise an invention even if competitors independently come up with the same idea"

Mr Fox is absolutely right in this respect but this statement exposes the very problem with software patents and has little to do with software piracy but instead about controlling software development in the hands of a few. Software patents seek to monopolise the very ideas (and other abstract concepts such as functionality) of the software program preventing others solving the same problem by writing different code. Since they result in mental thoughts being patented, a programmer is no longer free to think in his head and employ those ideas in an independently created program without checking patent registers. As such, the effect of software patents goes against the very nature of software development which has been shown to thrive on cumulative, sequential and parallel development (per Bessen and Hunt). Furthermore, it implies the the single monopolisation of programming ideas is a positive outcome. Whilst it may be extremely positive for the patent attorney's individual client, this gain for one single entity in the IT ecosystem has to be weighed against the net effect on the rest of the IT ecosystem. The net effect is that no other company can create software (which does not copy the same code) using the same ideas, ideas are no longer free. Numerous studies, and also the undeniable history of the rise of the software industry in the last 40 years, has shown that innovation in the software sector thrives on competition and parallel approaches to problem solving. What drives innovation in the IT sector is time to market not software patents. What benefits consumers is not a very products but many products and lower prices. As you are fully aware, the Gowers review recently concluded that pure software patents have a 'chilling effect' on innovation. Mr Fox makes his statements in a complete public policy vacuum and illustrates one of the key reasons why the patent profession stands in a very difficult position in terms of promoting patent reform. His statements all focus on the commercial benefit to the software creater/distributor in a single given instance which is natural when he is supposed to represent the best interest of his client(s). Whereas, patent reform has to be examined from the perspective of all stakeholders. The patent system is not there simply to serve the interests of rightsholders. It is there to serve a public policy aim of fostering innovation. Where innovation is not served by patenting, as has been shown to be the case in software patenting which simply drives up the costs of software development, the system cannot be reformed simply to benefit the few at the expense of the many. How can patent professionals operating in the field of sofware patents continue to relentlessly drive forward the interests of their clients at the expense of the wider interests of our society and economy?

On a final note, you may want to consider the wider question of just how negative piracy is for the software industry. I believe that it has been suggested that in some respects software companies don't see piracy as the greatest evil as what they care about is having the largest group of users using their software. If you hunt around on the internet you may find interesting statements made by Microsoft employees in this respect.

I hope that in the interest of a balanced debate you will publish my post.

Regards

Cristian
LASP
www.lasporg.info

Anonymous said...

I agree that Beresford's may have shot themselves in the foot by claiming the computer program as a product rather than using a "when executed" or "in use" type language.

However, A/M says that the contribution includes how an invention works and what its advantages are. The advantages of a computer program product are that it can be run to achieve a novel technical result - if it can't, it's not patentable however you claim it.

G

Anonymous said...

PS I'm not overly concerned that the UKIPO are "are clutching at straws to make computer programs per se unpatentable", I'm more concerned that methods implemented by a computer are being rejected for obtuse reasons. I was covering two separate issues in my first comment, so sorry if that was confusing.

Ultimately, I'm happy to satisfy myself with a patent just to a method and apparatus if the UKIPO want to get rid of program claims, but what I'm not happy with is when patentable inventions are deemed excluded just because there's a computer being used.

G

Anonymous said...

Once again, Cristian managed to post a combination of facts and complete bollocks in an effort to persuade people that the bollocks he is selling is correct.

Gowers said nothing of the sort about software patents.

Fox missed out the other reason copyright is insufficient: it doesn't protect against someone else writing a new computer program designed to have the same effect. As I've been saying, patents are there to protect the effect of running a computer program, not the program itself, and the invention must lie in the effect not the computer program for it to be patentable. Anyone who knows anything about copyright law must realise that it is insufficient in that regard. If you don't realise that, then you know so little about copyright law that I don't know where to begin to educate you.

Oh, and I've been following the Bessen/Hunt debate carefully and see that a couple of London economisists have poured scorn over their model and conclusions. The details are on Wikipedia somewhere.

Gerontius

David said...

Some very good points made above, but may I suggest that we are straying off-topic into the well-travelled land of software patents in general being good or bad. This is not what the case under appeal is about. The appeal relates to applications that the UK-IPO agree are patentable except for the sole fact that they contain claims directed to computer program products. There is therefore no question about whether the inventions are patentable, merely whether this form of claim is. Without such claims, the applications would have been granted. This is why, I believe, Beresfords have picked them to be appealed, as it limits the questions to be considered.

I think, as I have expressed above, that these claims will be viewed by the courts as being directed to a monopoly that is specifically excluded under s1(2), and are therefore invalid. This is, as another commenter has said, in line with the previous CofA decision of Gale (although I don't think that application would have been viewed to have a valid contribution in any case under the present practice), and appears to be in line with Jacob LJ in A/M. It makes no odds whatsoever what particular views we might have on software patents being good or bad. If the law says such claims are not allowed, that is the end of the story barring a change in the law itself.

As for debates about the economic usefulness of patents, I believe this falls under the second category G mentioned above. Economists don't understand patents, and it looks like they don't want to and never will.

Anonymous said...

As a humble* trade mark attorney uneducated in the "mystical" ways of patents, there soes seem to be a massive amount of tripe. The position does seem to be fairly clear cut to me, and it has been about 8 years since I did nay patent law.

As for Cristian's comment about Gowers. I am not sure if it is in there, but if it is then it is ill-conceived. Patents do not have a "chilling effect". Over-patenting has a chilling effect. However, if software does thrive in open communties (which I believe it does) then the question is one of novelty and inventive step.


*probably not all that humble...

David said...

If the humble trade mark attorney last did any patent work 8 years ago, he/she may have missed the source of the bother, being decision T 1173/97, which came out in July 1998 and established the EPO precedent that computer program product claims are allowable, provided they have a "potential" technical effect. This has caused all sorts of bother, and arguably is the root of all the trouble around accusations that the EPO allows software patents, as well as the current incompatibility between EPO and UK practice. This decision must be read by anyone who wants to even pretend to understand the debate.

Cristian said...

Gerontius

I won-t resort to profanity. Here is the extract from Gowers:

"4.117 Last year, the European Parliament rejected the Computer Implemented Inventions
Directive, but this issue has been raised again. The economic evidence suggests that such
patents have done little to raise incentives to innovate, and other evidence suggests that the
introduction of such patents will have a chilling effect on innovation. In the absence of such
evidence, a new right for pure software patents should not be introduced, and so the scope of
patentability should not be extended to cover computer programs as such."

The 'other' reason you give is exactly the reason software patents have an anti-competitive effect, there are loads of programs that seek to solve the same problem and each may have its own merits. Patenting prevents better implementation of the same problem and more consumer choice.

As for whether Gowers is right or wrong, it is just an example of many reports arriving at the same conclusion. I agree with the trade mark lawyer that one patent is not in itself the problem, but when I say software patents, I mean the overall processing of patenting software and the net effect of having software patents in numbers. Of course a single software patent is unlikely to harm innovation, quantity is of course an issue.

As for different views to Bessen, i would question who paid for the research grants...always follow the money...

Cristian

Cristian said...

Sorry, I meant the 'overall process of patenting software'...not 'processing'

On the subject of economics....I think it is a very strong statement to say that "Economists don't understand patents, and it looks like they don't want to and never will."

Economics is an important part of conducting any regulatory impact assessment, although I admit it is only ever one piece of the jigsaw. Nevertherless, it is important as it is so closely connected with the social welfare of legislation. It is not surprising that before the European Commission and others put forward the CII 'common position' they commissioned "The Economic Impact of Patentability of Computer Programs", note the word 'economic'. Economic analysis has a rightful place in the consideration of new laws. As do moral and ethical questions. Unfortunately, just as with the majority of 'independent studies', the European Commission didn't quite get the answer they bargained for when the report's authors concluded:

"in summary, Section III shows that the theoretical and other economic literature does not demonstrate, indeed casts doubt, on whether economic efficiency, i.e. increased overall welfare, is achieved by having or making computer program related inventions patentable."
(see http://ec.europa.eu/internal_market/indprop/comp/study_en.htm)

To simply discard the numerous economic studies which have questioned the economic efficiency of software patenting (or computer implemented inventions) takes courage, especially for someone who is not an economist.

Prove to me that, in the long term, society (consumers) and those who have been repeatedly stated as being at the forefront of innovation, SMEs, will benefit from the patenting of software and I will be a convert to patenting software.

Regards

Cristian

David said...

As I think I have said here before, I am not interested in the economic arguments about whether software patents are good or bad. They might be, or they might not be. The quote from the Commission merely shows that the argument is not made either way. I am only interested in whether the law is being correctly applied. The only thing I can be fairly sure about (although not certain) is that allowing patents for pure software inventions would create more work for lawyers and patent attorneys.

Since the point has been raised, it is my view that economists such as those cited above merely come up with analyses that result in justifying the original prejudices they want to confirm. This is because economics is not a science, and is no better than crystal ball gazing for making predictions.

Anonymous said...

David, I'm afraid you're wrong to say that making computer programs patentable would make more work for patent attorneys. It would actually make less.

Applicants will always want to try to get patents and even when I tell them they can't have a patent for their "invention" they refuse to take no for an answer and usually only give up when their applications are finally refused by the relevant IPO (UK or EP).

If these things were patentable, the number of applications wouldn't increase significantly (perhaps it would in the business method field, but then I don't think business methods, even when implemented on a computer, should be patentable) but the number of objections would descrease dramatically, hence less work for patent attorneys in prosecuting applications.

It would probably make more work for lawyers when it came to litigation and licensing, but few patent attorneys get heavily involved in that side.

And Gower's was quoting various special interest groups when he said there was evidence of a chilling effect. No conclusions were made and to say that there were, Cristian, is misleading beyond the capability of all expletives to express. You post here, playing all high and mighty with your "oh, PLEASE publish my comments in the interest of fair discourse", or "oh, I'm SO polite and fair minded unlike everyone else", but everything you say has an undercurrent of lies about and jibes against my profession and I will not stand for it. Outspoken as I am, at least I'm up front and honest in my opinions of patents and people.

G

David said...

You may well be right, G. However, I think it is hard to say whether the increase in the number of applications would counter the effects of decreasing the cost of arguing the toss.

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