The theme of patentable subject matter, as laid down by statute and as interpreted by the courts, was the subject of a careful and detailed analysis by Professor Norman Siebrasse in his guest post yesterday on CLS v Alice. By way of contrast with the treatment of this issue in the United States, Norman takes a look at a very recent decision of the Court of Appeal for England and Wales in HTC Europe Co Ltd v Apple Inc  EWCA Civ 451 (Kitchin, Richards and Lewison LLJ var’g  EWHC 1789 (Pat) Floyd J). Writes Norman:
In yesterday’s post I suggested that US case law relating to patentable subject matter is chaotic because the USSC has attempted to create field-specific exclusions to patentability using the rule against abstract claims. The only way out is legislative amendment. But not any legislation will do, as is demonstrated by EPC Art 52, which prohibits patenting of “discoveries, scientific theories and mathematical methods. . .methods for doing business, and programs for computers,” but only when claimed “as such.” The “as such” caveat implies that if the invention is claimed as a practical application in a computer system, it is patentable; but if that is so, it means that computer programs are effectively patentable, and the exclusion is rendered meaningless. Thus, Art 52 legislatively enacts the same judicially created contradiction that is responsible for the morass of US law. Unsurprisingly, UK law is doctrinally equally confused. However, the English judiciary appear to be less ideologically divided among themselves and, if the law is still lacking in doctrinal clarity, some practical regularity appears to be emerging. In particular, it seems from the recent decision of the Court of Appeal for England and Wales (EWCA) in HTC v Apple  EWCA Civ 451 that computer programs will generally be patentable. In contrast, from earlier decisions, in particular Aerotel / Macrossan  EWCA Civ 1371, it seems that business methods will generally not be patentable.
European law has attempted to resolve the contradiction in Art 52 by an appeal to the question of whether the invention has made a “technical contribution” to the art . As Lewison LJ laments in his concurrence at in HTC v Apple at  “[i]nstead of arguing about what the legislation means, we argue about what the gloss means.” And as Kitchin LJ forthrightly acknowledges in the lead opinion, “it is not possible to define a clear rule to determine whether or not a program is excluded” . While there are a variety of signposts identified by Kitchin LJ, two in particular point to a fairly generous approach to software patents. One is that a technical contribution may lie in the solution to a technical problem “whether that problem lies inside or outside the computer” . A second point, newly affirmed at the EWCA level in HTC v Apple, is that a program is likely to be patentable if it “makes a computer a better computer in the sense of running more efficiently and effectively as a computer” . Together, these guideposts suggest that almost any invention that can surmount the inventive step and utility hurdles will be patentable subject-matter.On the facts of the case, the question of subject matter was raised in respect of patent 2 098 948, in which the inventive concept is to use a flag in the operating system of a touch-sensitive device, such as a smart phone, to allow the touchscreen to ignore or accept multiple touches, thus sending a simplified signal to an application which did not use multiple touches. The main advantage of this invention is to make it much simpler to write applications for an operating system that embodies the invention . The invention is to be implemented in software. The representative claim 1 was drafted in general terms: “A method for handling touch events at a multi-touch device, comprising: displaying. . . executing. . . associating. . . ” . This claim was held to be invalid by Floyd J at first instance as being directed to a computer program as such [Pat 99]. The EWCA reversed on this point, saying the problem of how to deal with multiple touches is essentially technical , and it is of practical benefit in providing an improved interface for application programmers .HTC v Apple is not formally inconsistent with Fujitsu Ltd's Application  RPC 608 (CA) and Gale’s Application  RPC 305 (CA), but those cases might very well be decided differently today. For example, Gale’s Application claimed an improved method for calculating square roots, to be implemented in ROM. In holding this to unpatentable, Nicholls LJ stated at 327 that “his program makes a more efficient use of a computer's resources. A computer, including a pocket calculator with a square root function, will be a better computer when programmed with Mr. Gale's instructions. So it may. But the instructions do not embody a technical process which exists outside the computer.” The latter point is now irrelevant, and the former point is now an important guidepost in favour of patentability.The EWCA decision in HTC v Apple provides an instructive contrast with the US Federal Circuit decision in CLS Bank. “Device” in the ‘948 claim presumably ties it to a physical device, but it is nonetheless at least as general as the system claim at issue in CLS Bank, which was held invalid by five members of the panel. Moreover, in HTC v Apple neither level of court made much of the restriction to a “device.” As in Lourie J’s decision, the focus was on the substance of the invention concept, but while Lourie focused on whether that substance was abstract, the EWCA focused on whether it was a technical contribution. This is a fundamental difference, and the approach of the EWCA, as well as being more logical (in my view), is also more favourable to patentability of software. Thus the tides have turned. The US Federal Circuit has long extended the boundaries of patentable subject matter, but now it is retreating, while the English courts were initially more cautious, but have gradually developed the case law to a more accommodating stance.