PETER PRESCOTT RULES ON THE MARGINS OF UNCERTAINTY

The IPKat has received this from Edward Tomlinson, of Frohwitter. It's a decision of Peter Prescott QC, sitting as a Patents Court Deputy Judge in CFPH LLC v Comptroller-General of Patents, Designs and Trade Marks [2005] EWHC 1589 (Pat), 21 July 2005, a case that addresses the topical issue of patents for computer programs.

CFPH applied for two patents for networked interactive betting, the inventions consisting of software that enabled a client to receive the most up-to-date information before placing his bet. The applications were refused by the Patent Office, the examiner considering that all they did was to provide an improved transactional process. This being so, the inventions were no more than a business method and were thus excluded from patentability under s.1(2) of the Patents Act 1977 (= Article 52 of the European Patent Convention). Since those inventions provided no technical contribution (which could render an otherwise excluded invention patentable), they were excluded subject-matter "as such" and could not be patented.

CFPH appealed, arguing that the Patent Office ought to employ the reasoning that was used by the European Patent Office, which filtered out excluded subject-matter at the stage of considering inventive step, while the UK Patent Office did so when considering novelty. Peter Prescott QC dismissed the appeal since it was clear that neither of the two alleged inventions was patentable. In any event, he ruled, it didn't matter which approach was used, since each of them would lead to the same result.

In giving his ruling, Peter Prescott QC spoke eloquently of the gulf between the real world in which patents dominate markets and the legal world -- in which words are king. He said (at paragraphs 9 to 12):

"What is an 'invention' (in the sense I am now concerned with) is a topic bedevilled by verbal formulae – and by the sweeping of problems under the carpet. So, before I go any further I want to bring some of those problems out into the light of day.

But first: does it really matter? Is it merely a sterile argument about the meaning of words? To which I answer that whoever controls the meaning of 'invention' controls what can be patented and hence an important aspect of industrial policy. There can be but one justification for having a patent system, and that is that it is good for the people of the country. If the patenting of certain things does more harm than good, it matters. Patents that are wrongly granted can be very expensive to challenge and may deter small and medium enterprises.

At the risk of some inaccuracy, patents are supposed to be granted for non-obvious advances in technology. I said "at the risk of some inaccuracy". We sense that we know 'technology' when we see it. And no doubt that is correct, most of the time.

But it is not correct all of the time. Therein lies the delusion. You can prove that for yourself by trying to find a definition of 'technology' that everybody can agree on. The more you try, the more you will discover what a horribly imprecise concept it is. (Would it cover an astro-navigation chart? Naval tactics? Double-entry bookkeeping? The phonetic alphabet?) Many have tried to frame an acceptable definition, but to the best of my knowledge none have succeeded. It is like the equally vexing question, "What is Art?". The hard truth is this: concepts of that sort have no existence, and words of that sort have no meaning, except by human convention; but human beings are hopelessly in disagreement at the margin. And it is, precisely, at the margin of uncertainty that cases come up for decision".

If Peter Prescott keeps demystifying patent law, the IPKat says, will he still be allowed to sit as a judge?

What is Art? Click here and here to find out