For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Monday, 8 December 2008

What "as such" means, what it really, really, nearly means ...

Thanks to his eagle-eyed friend Helen Wallis, the IPKat has just discovered this delicious delight on the Intellectual Property Office website:

"Patents Act 1977: Patentability of computer programs

1. This notice provides further guidance on how patent examiners will assess the patentability of inventions with particular emphasis on the exclusion of computer programs as such. It follows the recent judgment of the Court of Appeal in the case of Symbian Ltd's Application [2008] EWCA Civ 1066 ("Symbian") [click here for the IPKat's note on Symbian and, which is always more fun, readers' comments]. It should be read with the Practice Notices dated 2 November 2006 and 7 February 2008 on patentable subject matter [the IPKat wonders whether the reader could have been spared the need for two more click-throughs -- couldn't the substance of those two Practice Notices have been incorporated into this Notice?].

Background

2. The patent application in Symbian is about how a library of functions (a "Dynamic Link Library"), useable by multiple application programs running on a computer, is accessed. It provides a way of indexing the library functions so that the computer will continue to work reliably even after making changes to the library. When the Court of Appeal considered its conclusion in accordance with the Aerotel/Macrossan (236Kb) test [if you have time on your hands, search the IPKat blog under the terms Aerotel or Macrossan, then prepare for a long session ...] it took the view that the contribution made by Symbian was not a computer program "as such" because "it has the knock-on effect of the computer working better as a matter of practical reality".

The test for deciding whether a computer-implemented invention is patentable

3. The Court of Appeal by and large approached the question of whether Symbian’s invention was excluded as a program for a computer as such by looking for a "technical contribution". In doing so it confirmed a line of UK case law dating back to the EPO Board of Appeal decision in Vicom [who said Vicom was dead, then?]. The Court also confirmed that the Aerotel/Macrossan test is intended to be in substance the same test as that relied on in the prior UK case law. Since both tests are legitimate for determining excluded matter, examiners will apply the structured approach of Aerotel/Macrossan to address the fundamental question whether a claim falls solely within the excluded matter. The Office considers that as a matter of practice this will achieve outcomes consistent with the Court of Appeal judgment in Symbian more reliably.

Identifying whether a contribution is solely a computer program

4. The Symbian judgment (especially paragraphs 54-56) provides an insight into what constitutes a technical contribution; in other words, a contribution that is more than solely a computer program [the IPKat is knocked dizzy by this insight -- he could never have reached this astonishing and profound conclusion himself; he's feeling quite weak ... and to think that for all these years he has been labouring under the the delusion that "technical contribution" meant "clotted cream"]. An important factor is what the program does as a matter of practical reality [oh, that too?].

5. The Intellectual Property Office has previously recognised that an invention which either solves a technical problem external to the computer or solves "a technical problem within the computer" is not excluded. What Symbian has now shown is that improving the operation of a computer by solving a problem arising from the way the computer was programmed - for example, a tendency to crash due to conflicting library program calls - can also be regarded as solving "a technical problem within the computer" if it leads to a more reliable computer. Thus, a program that results in a computer running faster or more reliably may be considered to provide a technical contribution even if the invention solely addresses a problem in the programming.

6. It remains the case that whilst an invention involving a computer is undoubtedly "technical", in law the mere presence of conventional computing hardware does not of itself mean an invention makes a technical contribution and so avoids the computer program exclusion. This is in contrast to the practice of the European Patent Office, which the Court of Appeal rejected in Symbian [tricky one here, says Merpel: is it better to be good Europeans, or to be right?].

Computer-implemented inventions and other exclusions from patentability

7. Symbian also indicates (paragraph 27) that one effect of the computer program exclusion is to prevent other excluded material becoming patentable merely by use of a computer in its implementation. Thus, a business method, mental act, mathematical method or presentation of information implemented on a conventional computer system or network would still be excluded.

8. Paragraph 13 of the previous Practice Notice dated 2 November 2006 noted the different judicial comments regarding computerisation of acts which would otherwise have been done mentally. In future examiners will object to the computerisation of what would be a pure mental act if done without the aid of a computer as both a mental act and a computer program as such. A similar logic applies to the other exclusions".

The IPKat doesn't want to be rude to anyone, but he does feel that a lot of animosity has been generated, confusion caused (or self-induced) and precious resources squandered on arguing this point for what seems to be a lifetime since the Vicom decision.

Left: daddy bear brought the picnic hamper, mummy bear baked the cakes and the little bears all made technical contributions ....

Concepts have been twisted, words abused, propositions over-intellectualised, in order for the Court of Appeal, at the severalth attempt, to reach a decision that has now been rendered down into guidance for patent examiners that is simple enough for a child of ten to understand.

Merpel wonders: how many people have been born since the European Patent Office's decision in Vicom, back in July 1986. Any clues?

11 comments:

Anonymous said...

Simple enough for a child of ten to understand?

Okaaay...

So if I "improve the operation of a computer by solving a problem arising from the way the computer was programmed", resulting in the computer processing data faster, by say, introducing a faster technique for calculating square roots, would that be patentable?

Uh, no. That question was heard in Gale's Application, which the Court of Appeal cited with approval.

So, what about a new data structure, that, say, lets a spreadsheet be re-calculated more quickly? Presumably, it's still no to that as well.

(Something programmers may find reassuring).

Hmmm... Perhaps the IPKat's ten year old child is available as a consultant?

IPKitten said...

No problem under the new guidelines, surely! There's computer-program-as-such speeding up and there's making-a-computer-a-better-computer speeding-up.

My invoice is in the post. Boom boom!

Anonymous said...

Jeremy,
please help Merpel and tell her that logic does not exclude a "good" European to be right.
Conclusions about what is "right" or "wrong" in this matter appears, at least for the moment, to depend more on beliefs, feelings and of course prejudice rather than on a full understanding of the complex issues involved.

Andre said...

It is very simpel, the two step test:

1. Are patents on software beneficial for us and patent attorneys?
2. How can we fool the public and grant them?

Whoever talks of "software as such" relies on a misinterpretation of EPC 52 of the European Patent Office concerning the exclusion of computer programs from patentability.

The crucial question - the only one that matters - is the business case. I'm sorry to say but attorneys and judges are not qualified for this matter.

Anonymous said...

Andre:

Who is 'us' (the EPO?)

What is this misinterpretation of which you speak? - please explain (including why you think it is a misinterpretation).

What is the business case?

Why do you assume bad faith in people who disagree with you?

Anonymous said...

I have to say, I love the little bears making technical contributions...

Anonymous said...

in the article where it says " In future examiners will object to the computerisation of what would be a pure mental act ..."

What does it mean by "pure" mental act? How does one really define "pure" vs. not-pure. Does all these apply to the works on "AI"?

plh said...

@Anonymous (Tuesday, December 09, 2008 8:45:00 PM)

“What is this misinterpretation of which you speak?”

Presumably, Andre means the misinterpretation of the EPC Article 52 computer program exclusion that has (naturally) led to its effective deletion.

“35... The reason why computer programs, as such, are not allowed to be patented is quite different. Although it is hotly disputed now by some special interest groups, the truth is, or ought to be, well known. It is because at the time the EPC was under consideration it was felt in the computer industry that such patents were not really needed[14], were too cumbersome (it was felt that searching the prior art would be a big problem[15]), and would do more harm than good[16]. I shall not go into details here but it is worth noting that the software industry in America developed at an astonishing pace when no patent protection was available[17].”

(http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html)

“for example, a tendency to crash due to conflicting library program calls - can also be regarded as solving "a technical problem within the computer"”

But it seems the patent incentive is needed even for bug fixing these days.

Anonymous said...

Hi

Regarding the sarcasm in paragraph 4, I'd suggest the author read the paragraph properly, and learns the meaning of the semicolon. The clause following the semicolon is not the "insight" into what constitutes a technical contribution. That can be found in paras 54-56.

As an occasional reader of this blog, it always reminds me how lucky I am never to have required the services of IP lawyers. They seem to get confused very easily.

Anonymous said...

This court, en banc, should be barred from any activity involving anything more dangerous or intellectually challenging than marshmellows. Even then, each individual judge should be required to have adult supervision while in the presence of said marshmellows.

It would be a kindness to require the adult supervisor to be a licensed chiropractor or psychologist, given the propensity of these judges to perform unhealthy contortions and mental acrobatics in their quest to turn mathematical concepts and representations into air castles in which to imprison the bodies and minds of their hapless victims.

Andre said...

"us" = patent offices

The patent community has a commercial bias towards expansive patent regimes. They are not neutral.

The "business case" is supposed to be their master, does make sense in economic terms. Patent administrations generate costs for business and society. An income of a patent attorney is also slack to society as legal services do not generate public wealth, they just add costs.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':