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Tuesday, 29 April 2008

UKIPO considers the Symbian effect


The UKIPO have provided further evidence as to why they feel the need to appeal against the recent Symbian judgment (IPKat commentary, including many informed contributions from readers, here), in the form of reasons for refusing an application in decision O/120/08. The application in question, published as GB2414831, related to a computerised system for recording driving test results, in which a driving examiner could record results on a portable computer by means of a menu-driven format. The Patent Office examiner had objected on the grounds that the contribution was solely in the form of either a computer program, a method for doing business or the presentation of information.

The hearing officer essentially agreed with the examiner, and unsurprisingly decided to refuse the application. However, in response to persistent arguments from the applicant, he expressed a view that seems to suggest (at least to this IPKat) why Patten J got the Aerotel test wrong:

"For example, in Oneida Indian Nation [2007] EWHC 954 (Pat), Deputy Judge (as he then was) Christopher Floyd was clear (paragraphs 10-11) that the identification of a technical advance did not bring back into contention inventions which had been excluded at the third step, and the fourth step was intended merely to make sure that inventions which had passed the third step were technical in nature: an invention would not pass the third step on the strength of technical advances which fell within one of the excluded categories. This view appears to be supported by the subsequent judgments in Astron Clinica [2008] EWHC 85 (Pat) (paragraph 45) and Autonomy Corporation [2008] EWHC 146 (Pat) (paragraph 45).

However, in the recent Symbian judgment, Patten J (see paragraphs 42 and 58) held that the question of whether a claim fell within excluded matter could not be answered in isolation from the issue of whether it embodied a relevant technical contribution, and that the third and fourth steps were as a matter of law alternatives. He thought it clear from the authorities that the question whether the invention made a relevant technical contribution had to be asked because it was the determinant of whether EPC Art 52(3) (equivalent to section 1(2)) had any application, and that whether it was asked as part of the second, third or fourth Aerotel step mattered much less than whether it was asked at all.

I have to say that I find these judgments difficult to reconcile, but I do not think that I need to attempt this in the present case. I have found above that the contribution programs a device to carry out a business method without causing the computer to act in any new technical way, or solve any technical problem in the operation of the computer. Irrespective of whether, having found the invention to have failed the third Aerotel step, I need as a matter of law to go on to the fourth step, I do not think that the contribution is technical in nature." (paragraphs 20-22)
The IPKat, as he has pointed out before, thinks that the fourth step, involving that awkward word 'technical', will have to be properly dealt with (or disposed of entirely) if anyone is to stand a chance of getting a firmer idea of where the boundary of the exclusions under section 1(2) is to properly lie. Unfortunately, it seems that the Court of Appeal will be unable to help much insofar they are tied to their previous judgments. We will probably just have to deal with the uncertainty for a little while yet, unless the House of Lords (or perhaps the EPO Enlarged Board?) gets involved with this tricky issue. Alternatively, in the words of the renowned philosopher Vroomfondel, perhaps what we really want, nay demand, are rigidly defined areas of doubt and uncertainty?

1 comment:

Gobhicks said...

I have often had occasion to quote Vroomfondel myself. In the present context, it is deeply ironic that his complaint arose in response to a computer implemented method for answering the “ultimate question”.

These latest pearls from UKIPO do perhaps illuminate the muddle in their thinking on this issue.

Symbian does not suggest to me that step 4 can save an invention that has failed step 3, and does not contradict Oneida Indian (in this respect at least).

UK case law is such that excluded matter and technical contribution are inextricably linked (see my last – long – comment under the Symbian appeal link above). Patten J was right in Symbian “that the question whether the invention made a relevant technical contribution had to be asked”.

It seems plain to me that this question should be asked as part of step 3: if the contribution involves a relevant technical element then the invention is not excluded. The invention can be a computer implemented method for presenting information relating to a business process using a mathematical method. If, somewhere in the subject matter defined by the claim, there is a “relevant technical contribution”, then the invention is not excluded from patentability.

Step 4 is a safety net to catch subject matter that is not explicitly excluded by S. 1(2)’s non-exhaustive list and thus passes step 3 even in the absence of a technical contribution.

Maybe Deep Thought could tell us what constitutes a “relevant technical contribution”. As in the book, a satisfactory answer indubitably depends on a properly framed question.

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