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Tuesday, 3 March 2009

AT&T, CVON - more UK patentability appeals

The IPKat has been kindly sent by Richard Davis a copy of a judgment issued this morning by Mr Justice Lewison in the Patents Court, in the matter of two UK patent applications in the names of CVON Innovations Limited and AT&T Knowledge Ventures LP. Both applications were refused last year by the UK-IPO in separate decisions (O/240/08 and O/190/08, respectively).

Both AT&T and CVON had their applications refused on the grounds that the claimed inventions were not patentable under section 1(2) of the Patents Act 1977.  The judgment, as might be expected, goes over the familiar Court of Appeal judgments in this area, and the corresponding developing line of case law by the EPO boards of appeal, from Vicom to Duns. The outcome will be familiar to anyone who has been following the s1(2) decisions coming out of the UK-IPO over the past couple of years, in that both appeals were dismissed.

This Kat has not been able to distil any particular points to note from the judgment, mainly because he is concentrating more on other things. His interest was, however, piqued by the following statement early on:

"If I may venture two comments at this stage: first, asking what the inventor has added to human knowledge necessarily means that the questioner has some notion of the state of the art. In other words, patentability cannot be put into a watertight compartment completely separate from novelty. Second, in Aerotel the court did not elucidate what it meant by 'technical'"(para 8).
As regular readers will know, these two points are, in the IPKat's view, the key to the whole problem of whether certain inventions are patentable or not.  The IPKat would like to leave it to any commenters willing to delve more into the details of the case (a copy of which is available on the Kat's Google Groups website here) to determine whether we do in fact get any clarification of these tricky areas, or if perhaps we will have to wait for another day and another court judgment.

9 comments:

Francis Davey said...

Thank you for this. It is very interesting. I am still struggling to understand what the implications of Symbian might be. I found the following statement:

"In Symbian itself, the invention was patentable because it resulted in a faster and more
reliable computer. The increase in speed and reliability was not, as I understand the
invention, dependent of the type of data being processed or the particular application
being used to do the processing. The invention operated at a much higher level of
generality within the computer. "

Is that saying that what distinguishes the technical effect (of making the computer go faster to put it crudely) in Symbian is the high level of abstraction or generality of the Symbian patent?

If so, that seems very odd indeed. Pretty much any software is going to make a positive difference to the running of a computer (it will often speed it up). Symbian seems suspect because the technical effect seemed so trivial.

But if the distinction is in its higher level of abstraction that seems to run counter to the idea that by pinning a claimed algorithm (in the Symbian case) to a physical manifestation the area marked out by the patent is reduced.

If someone can explain in a principled way what is going on I will be most grateful 8-).

The novelty/patentability point is obviously interesting too, but this one is bugging me.

Gerontius said...

I think that one key difference in Symbian was that the entire purpose of the invention was to make the computer itself, as a piece of equipment, work better. These latest non-inventions were, at their core, trying to do something that was judged to be a business method and just because the resulting computer program was a good one didn't help from a patentability perspective.

Put another way, you could say that patentability is judged on what is being done, novelty and inventive step on how it is being done.

It's interesting that you raise the perceived problem that "Pretty much any software is going to make a positive difference to the running of a computer (it will often speed it up)". This is an objection I've also heard from the UKIPO and I think it ignores some excellent judgments of the Court of Appeal and makes the mistake of assuming that, because a computer program is involved, the computer program exclusion is the most important.

As Merrill Lynch and Macrossan both show, many cases are actually far easier to dispatch if you look at the other exclusions (eg business methods) first. Once you've decided that what the computer program is doing is excluded (or lacks novelty as in Fujitsu) it is far easier to turn to the rest of the claim and say that all that is left is just a computer program.

Gobhicks said...

In saying that “The invention operated at a much higher level of generality within the computer” I think Lewison J actually means that it operates at a lower level in the architecture of the device: it is an “operating system” type invention – concerning the low level “technical” operation of the device - rather than an “application program” type invention – concerning high level “non-technical” aspects of the data processing functions of the device. This is how I have always thought about Symbian, from the original UKIPO decision through to the final appeal, and to me is entirely consistent with the EPO in end result, if not in reasoning/methodology.

“The high level of abstraction or generality of the Symbian patent” are your words, not his. He didn’t mention “abstraction” or the “patent”, he was talking about the “level of generality” at which “the invention operated” “within the computer”.

I would also say that “operating system” type inventions need not always be “technical” and “application program” type inventions need not always be “non-technical”: the devil will always be in the detail.

Gobhicks said...

Having now actually read the judgement, it also helps if you read para 34 in light of the preceding discussion of the case law…

See para 22 re IBM T 0006/83:
The key here seems to be that the invention works irrespective of the nature of the data and irrespective of the particular application programs which are used. It thus relates to the architecture of the computer system and produces a better computer as a result.

And para 25 re IBM T 0115/85:
The point that the Board is making is that the computer output results in something
happening in the real world, namely the giving of visual indications. The claim related
to things going on inside the workings of the computer, rather than any form of data
processing. It was that, I think, that led the Board to describe the claim as directed to
use in the solution of a technical problem.

Para 29 re Merrill Lynch:
Here the specificity of the data being processed is one of the factors that militates against patentability.

Paras 31 and 33 re Gale
As noted, the two IBM cases which Lord Neuberger commended involved inventions
which operated irrespective of the nature of the data processed or the applications in operation. But Nicholls LJ also appears to me to have approved the third of the IBM decisions in which one of the criteria was said to be whether the invention defines a new way of operating the computer in a technical sense. This too, of course, leaves the phrase “in a technical sense” undefined, but it points towards some generally applicable method of operating a computer rather than a way of handling particular types of information.
Again, therefore, the search is for a claimed invention which either has effects outside the computer, or which affects the operation of the computer itself. By the “operation of the computer itself” I understand the Vice Chancellor to have envisaged an effect on the computer which was not dependent on the particular data being processed or the particular application being used.

I think this case does provide a cogent overview of the case law. The only point I still really struggle with is this question of “whether the claimed technical effect lies solely in excluded matter” (see paras 39-41).

Interesting also that the judge was au fait with the concept of a “personal shopper”! (para 47)

Francis Davey said...

What I meant was (poorly expressed) the distinction that seems to be being made is between programs that operate on regardless of the form of their substrate (programs and data) and (one therefore presumes) those that depend on the nature of their substrate (one is reminded of parametric polymorphism when writing that).

Now if that is right (and it seems to be roughly the axis on which the decisions are being placed) it seems rather odd doesn't it? The more generic a program, the more likely it is to be patentable?

I agree that one could read the Symbian decision as separating operating system programs from application programs, but again that would seem a rather rum place to be wouldn't it? It seems a long journey from not being able to patent a computer program as such to being able to patent an idea for an operating system process but not an application process.

Of course I accept that isn't the distinction that is being made and the devil being in the detail, but I have yet to see a principled explanation of what does and does not fall within the excepted subject matter.

I also agree the case provides a cogent overview of the case law - I just wonder whether the case law makes any kind of sense.

Anyway, I can see there is much to think about. I look forward to being pointed to a clear academic account of the distinction.

Anonymous said...

Francis

I think Gobhicks is right - when it says "higher level of generality" it means "lower level of abstraction". Or, indeed, simply "lower level".

And it ("it" being the idea that more general-purpose inventions are patentable, not the terminology used here which does seem about-faced) does seem reasonable, at least to me. A computer that can add numbers quicker, independently of what the numbers represent or what the calculations are used for, is a better computer with a wide range of uses, and so is (probably) patentable. Whereas a computer that produces more thrilling detective stories, due to an advance which doesn't really relate to how the computer works but instead tells the computer what to do and assumes it can do it, is probably not patentable.

Ilya Kazi said...

I view this judgement as a step backward from Symbian.
Mr Justice Lewison's comments on what is technical seem to propose a way of testing for technicality which is harsh in application and are unlikely to be passed by many things other than fundamental hardware/architecture inventions. You could arguably apply his analysis in Point 57 of the decision in the way this judgement has to the Symbian case and reach a conclusion that it was not patentable - the Symbian invention did not fundamentally change the operation of the computer and one could argue by similar reasoning to that applied here that it simply avoided the technical problem of incompatibility of DLLs rather than solved it fundamentally.
Converesely, I would argue that the ATT case did solve the technical problem of consumption of communication bandwidth to deliver something which will not work, by technical means, namely the provision of a lookup device characteristics database and processing to filter what may be delivered. Even using test v) of Point 45 of the Decision, the software engineer rather than the businessman has learnt that providing a device capability lookup is beneficial in avoiding problematic download, wasting download capacity, the fact that, as well as reduced wasted server usage, it happens to lead to more satisfied customers should not disqualify it!
Similarly, I would argue that the CVON case solved the technical problem of issues of outdated group messaging and transfer of data on group membership which is unnecessary (because the user may not ever message to the group) by the technical means of providing dynamic group membership checking.
Notably in Point 51 of the Decision, the Judge was critical of the (lack of) explanation of the technical problem in the application and in the initial evidence.
To my mind, this emphasises the point that in this field, for borderline cases, it is important from the outset to ensure that the application justifies and explains the technical aspects rather than the business aspects of the solution.
I suspect that had a technical explanation of the database accesses for the original method and the saving and benefits been explained in detail in the application, the CVON case may have fared better.
A problem is that, particularly US-originating cases, are drafted focussing on the overall (arguably business) benefits rather than giving enough attention to the nitty gritty technical and this causes problems in Europe (where although less likely to be found inherently unpatentable, the inventive step can be found to lie in a non-technical area and judged harshly) and particularly in the UK.
Frankly in my view, if anyone is serious these days about getting protection covering the UK for anything computer-related, they should think at the time of drafting (or, if US-originating, at least within the first year) at making sure the technical benefits are fully brought out.
I have a hunch that both cases would have done better if time had been spent by someone sufficiently attuned to the UKIPO's stance at an early stage, for a lot less than the Appeal cost, and I would advise those seeking protection in this area in the UK to spend more on thorough analysis at the outset; they might file some cases with a much better prospect, and recoup the money by not filing at all in others which will ultimately be a lost cause.

Anonymous said...

Please don't say: ".. the CVON case may have fared better." when you know it hasn't.

We've complained about this before.
DME

Ross K said...

OK - 17 pages later ....

My view, for what it's worth, is that AT&T was the right result for the wrong reasons and CVON was the wrong result and wrong reasons.

It does, I think, all come down to the level of abstraction. If you look at something from 50000 feet up, it's going to look far different to a much closer inspection.

I thought AT&T had devised a better technical system that was capable of interacting with a larger number of electronic devices. Where I agree with the judge is at para 47. However, I think this goes to lack of inventive step. I do like para 45 (iv), and para 45 (v) is an interesting take on things, though too informal to be reliable.

It does, as previous posters have pointed out, rely upon what is meant by "technical". Given the current framework (Aerotel & Symbian), the determination of what is technical is carried out on a case by case basis. I think Lord Neuberger's comment reproduced at para 15 more than alludes to the fact that the Aerotel test may not be the be-all-and-end-all as far as determination of excluded subject matter under Art 52(2)(c) EPC is concerned. Interesting, Lewison J found it depressing! Lord Neuberger also pointed out that each case needs to be determined by reference to its particular facts and features. Nothing new there, but it does provide "wriggle room", or put slightly more appropriately, more scope for the Applicant to persuade the powers that be to look at the invention at the right level of abstraction so that the "technical" brilliance can be appreciated. If it wasn't for these comments from Lord Neuberger, I would say that the Aerotel test isn't great and risks missing a fair amount of good technology that should be protected.

As for CVON, I thought it was a neat idea and clearly technical in nature. Whilst the claim was quite high-level, I don't like the conclusion in para 56 that it is a "decision in relation to the business of running a messaging modification service" to build the list in the system and authenticate the entries though user submissions. The analysis was at too far a high level.

Why don't we just define "technical" of CII's as "if you can power it, it's technical" :o)

Out of interest, who thinks the Aerotel test is, on the whole, a good test?

Rant over ...

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