In a press release, the UK-IPO has highlighted Mr Justice Patten's decision of today (available here from BAILII) to overturn the UK-IPO's decision to refuse an application by Symbian, on the grounds that it consisted solely of a computer program. The application "describes ho
w in a computer a library of functions (DLL), which can be called on by multiple application programs running on the computer, is accessed. In particular, it provides a way of indexing these library functions to ensure the computer will continue to operate reliably after changes are made to the library."
The judge drew attention to the split between the attitudes of the UK-IPO and the EPO, since the EPO has already allowed the patent to be granted. However, the UK-IPO has said that it intends to appeal, arguing that the judge failed to use the Aerotel/Macrossan case.
Says the IPKat: and the EPO thinks there's no divergence of the patentability of computer programs as such...
Update: The Symbian case has prompted much coverage elsewhere, including from the BBC, The Register, Computer Weekly, IT Week and Out-Law. Some of the commentary to this post may also be worth reading, if you have the stomach for it.
w in a computer a library of functions (DLL), which can be called on by multiple application programs running on the computer, is accessed. In particular, it provides a way of indexing these library functions to ensure the computer will continue to operate reliably after changes are made to the library."The judge drew attention to the split between the attitudes of the UK-IPO and the EPO, since the EPO has already allowed the patent to be granted. However, the UK-IPO has said that it intends to appeal, arguing that the judge failed to use the Aerotel/Macrossan case.
Says the IPKat: and the EPO thinks there's no divergence of the patentability of computer programs as such...
Update: The Symbian case has prompted much coverage elsewhere, including from the BBC, The Register, Computer Weekly, IT Week and Out-Law. Some of the commentary to this post may also be worth reading, if you have the stomach for it.
Software patents - yet more confusion
![Software patents - yet more confusion]()
Reviewed by Anonymous
on
Tuesday, March 18, 2008
Rating:
Follow the IPKat on LinkedIn 
![[Guest post] Thou shalt not discriminate the Lego block over any other kind of product – GRUR speaks out on C-211/24](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgWJYQUJNvYydrZcjwSHPuxd14xX3_48aBusHKBogY-Wg1BPSJSABbFFjmGiUV3aqG2npP9xYaIl1vtWK5AsqGOQPgRD2TWFLhyyc4xGm1fHDD-tt9kHcrSSgAyju2P9wSKz0VW6h7D5MD4Hxd9vREyxKYzlMRNXxxtxc3DiNsXppfVaxgSxAMV/s72-c/21742619125_7c9e53cd39_o.png)
![[Guest post] Comparison of wine and gin: the EUIPO’s unquestionable Similarity Tool](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiNfTEBXiPVS0XjZi4mNE1OtXLxXiEp1PUgcUK7MMMXlfyTkO5SMXv-VCMXXNdS_F1XdMMxYca1VbBTGvvDeTVpo5x-5YwR7atQJmK3x32T8LACpf4308kht3nEtaxPwEPcGGrB0s5xjGktmQPOiVwPVLRO5JbW19qupc7xUtiVutvaWHow0OpBkA/s72-c/Picture%201.jpg)
![[Guest post] Muddying the waters of copyright – a rapid reaction to today’s IPEC decision which sees the sinking of the WaterRower’s claims for copyright protection](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh7chFANC7ppmZl4_nlR6_hZEcg6cOhVEJNVXqki4p82BoVlcLFotuOXzHWYD5lKLiiK_kRoWeXmJjjaV2DpoKsAWq8U3LFioO5W_841a9gcfDIFjvZWcGqfnr0jWJNtyXptIYR_8bxCssaDkJ9KMokuSqy1g65Il7p2hPwo4MfRCEGoUPQJesvbg/s72-w400-c-h189/Screenshot%202024-11-11%20at%2018.20.45.png)
Posts
Very interesting - I've been waiting for that one. When the UKIPO decision was issued I thought they had crossed the line by ignoring the inherently technical nature of the invention - it's a computer program, full stop, end of story. There are have been a few other UKIPO decisions that I think are in a similar category.
ReplyDeleteI'm not sure that the EPO considers there to be no divergence with the UK - it's response to Jacob was that there was no divergence between BoA decisions.
ReplyDeleteThat is of course meant to read "No divergence as such" ?
ReplyDeleteThe judgment is up
ReplyDeletehttp://www.bailii.org/ew/cases/EWHC/Patents/2008/518.html
Although I haven't read it all yet, here's the key part of the reasoning that I've been trying to bang over the head of the UKIPO for the last three years:
55. So is this invention no more than the running of the program? Having regard to the earlier authorities the answer has to be that it depends on what the program does and not merely how it does it. The mere fact that it involves the use of a computer program does not exclude it: see Aerotel at paragraph 22. This point was made in its clearest form in paragraph 16 of the decision in Vicom (quoted at paragraph 27 above) which underpins all of the current English authority on this point.
Also, here's the original UKIPO decision Gobhicks is talking about and I agree with his assessment of the reasoning - something useful is being done with a computer program, but the only useful stuff happens inside a computer therefore it's a computer program.
http://www.ipo.gov.uk/patent/p-decisionmaking/p-challenge/p-challenge-decision-results/o23807.pdf
Although I've never seen it explicitly said by the UKIPO, I think they take their justification of this position (which is markedly different from the EPO and their own position pre-CFPH) from the comment in Aerotel/Macrossan that the EPO Microsoft decision was all to do with useful effects that were wholly inside a computer. That decision was criticised by the judge for "[not treating] the unpatentable computer program as such as part of the prior art".
Hopefully this issue will be more explicitly raised at appeal (assuming there is one) and we can get a judgement on the following questions or things like them:
Is a data structure (eg a directory structure or an XML structure) a "computer program"? (see Symbian decision and many other UKIPO decisions)
Does the fact that a step in a method is a matter of program design mean that that thing is no more than a computer program? (this reasoning is cropping up more and more at the moment in UKIPO decisions and a couple of court judgments and I don't see quite where it started)
and (most importantly)
Is a technical effect entirely within a computer which nevertheless goes beyond the normal effects of running a program a relevant technical effect?
As I say, I haven't read the new judgment yet so don't know if these questions are already addressed or what the answers are.
Gerontius
Having read the judgment (which is an appeal from this UK-IPO decision, not the one cited by Gerontius above), I can see why the Patent Office are planning their appeal. Although Patten J goes through the motions of the 4 step A/M test (which he is, by the way, bound to follow), he then proceeds to completely ignore it in saying the following:
ReplyDelete"Without an effective operating system a computer is nothing. It is simply inaccurate to label all programs within the computer as software and on that basis to regard them as of equal importance in relation to its functionality. The end result of the invention (as claimed) is that it does (to use the test in Gale) solve a technical problem lying within the computer."
Regardless of whether the decision is 'correct', this seems to me like Patten J is clearly and deliberately not following the test as laid out by Aerotel/Macrossan, and instead at least implying that the EPO problem-solution approach is the way to do it (which has never been approved in the UK to my knowledge). He is also using that never-defined word 'technical', which is just sloppy and results in circular reasoning.
My initial thought before reading the judgment was that Patten J is the fall-guy, lined up to (deliberately?) come up with a judgment based on wrong reasoning so that the Court of Appeal can get a proper look at software patents, which they didn't last time. After reading the judgment, I still think this is a possibility.
Whether or not it's a plan, is it a good case for the C of A to go to work on? Could this in fact be the start of "technical" 's journey to the H of L?
ReplyDeleteIt is simply inaccurate to label all programs within the computer as software
ReplyDeleteI can't believe the judge said that and expected to be taken seriously. Surely there is grounds for appeal right there ?
Gerontius asked:
ReplyDelete"Is a technical effect entirely within a computer which nevertheless goes beyond the normal effects of running a program a relevant technical effect?"
Perhaps I am being unduly naive, but this question seems to me to be merely replacing one problem with another. What exactly are the "normal effects" of running a program on a computer? Do these include programs talking to other programs? Do these include some degree of communication with the outside world?
David
ReplyDeleteI don’t see where your conclusion that “Patten J is clearly and deliberately not following the [A/M] test” comes from.
Also, “that never-defined word 'technical'” is in the test itself.
There is a degree of circularity inherent in the A/M test as a result – if something is not within the explicit exclusions, you still have to check whether it is actually “technical”, which clearly implies that the notion of “technicality” is implicit in the non-exhaustive list of explicit exclusions.
Patten J went to some lengths to explain how he saw the basic shortcoming in UKIPO’s approach to the A/M test as being the way in which contribution is assessed and related to the exclusions. Considering the “technicality” of the problems/solutions involved as part of the assessment of the “contribution” seems to me to be entirely reasonable in light of A/M (“what has been added to human knowledge”). This is a far cry from the EPO’s formulaic problem/solution approach to inventive step. The A/M test requires you to look at the prior art to assess the contribution, which is precisely why the EPO decided to move away from the “contribution approach” and to apply the exclusions to the claim as a whole without reference to the prior art.
By modifying the programming of a computer at, say, the operating system level, it is clearly possible to improve the performance of the computer in a way that to me is obviously "technical" - you are making a better "data processing machine" and the improvement is independent of the particular use to which the machine might be put by virtue of a specific application program. The objective difference over the prior art consists only of program features, but the "contribution" is more than that - it is a technical improvement to a known type of machine, and that is why it is more than a “computer program as such”.
You might argue that a method claim in such a case should be excluded as amounting to no more than a program, while the programmed apparatus – the actual improved machine – should be patentable, but that exalts style over substance. If the programmed apparatus is patentable for having a technical effect, the method performed by the programmed apparatus to achieve that effect should also be patentable, as should the program product encoding the method.
It’s probably worth remembering that it was UKIPO that formulated the test in the first place, so they probably have their own preconceived notion of what they thought it meant, which is not necessarily consistent with the way it should be interpreted in the context of the actual A/M judgement.
In any case, it is to be hoped that further appeal(s) from Symbian will shed some light beyond the specific facts of this case.
David, the meaning and purpose of mentioning the "normal effects of running a computer program" is well-established and seems to be accepted by the UK courts in following the IBM decisions (although also adding the rider). It's difficult to say any more than that in response because what you've said implies you've misunderstood something, but I can't work out what. Perhaps you're assuming I'm saying that's where the boundary between patentable and unpatentable should lie, which I'm not. The "normal operations" is just saying that this sort of thing definitely doesn't count as a relevant technical effect. If you have another effect, then that has to be assessed on its own merits.
ReplyDeleteSo, it's not about creating a problem, it's about setting a boundary (which I guess is a sort of problem, but one that cannot be avoided if some things are going to be patentable and some things aren't): can something that happens entirely within a computer ever be patentable? UK(I)PO are effectively saying no. EPO say yes within limits. If the courts decide it's yes within limits, then we can start defining the boundaries of those limits.
It's also wrong to suggest that by looking to other CoA judgments for guidance, the judge was ignoring the four step test. The CoA themselves said they were bound by earlier judgments, so the High Court and UK(I)PO should be, too. If Gale said that solving a technical problem lying within a computer would be enough to make something patentable then that must mean that the contribution in the third A/M step would not be a computer program "as such". This is not ignoring the test, but interpreting it in light of other, binding case law, as the UK(I)PO should be doing.
Also, the anon should read full sentences. The judge did not say that it was "simply inaccurate to label all programs within the computer as software".
Finally, I'm glad I'm not the only person who thinks the UK(I)PO had certain preconceived notions about "their" test and that has led them to interpret it differently from the way the CoA told them to interpret it. I recently went back over some old case law and, in particular, the High Court judgment in Gale. It's interesting how much of the reasoning in that judgment, overturned by the CoA, is cropping up in UKIPO reasoning at the moment.
Gerontius
The dreaded word "technical" is in the A/M test, but only because the Court of Appeal felt it had to include it to follow Merril Lynch, and it was only included as a backstop against patentability, not as a get-out clause (see para 46 of A/M). I have argued here before that this is actually contradictory with previous CofA judgments, so I won't go into it here. It doesn't seem quite right, however, for a High Court judge to go against the A/M test, contradictory though it may be, which is why an appeal seems to be necessary. It seems that the only basis Patten J has used to overturn the UK-IPO's decision is that the claimed invention appears to solve a technical problem. This may well be the case (and it depends, of course, on how one defines the problem) but, without reference to any prior art (see the corresponding EP prosecution file), how does he know?
ReplyDeleteWell, to help someone define the term "technical", I could "invent" this test:
ReplyDeleteNot technical is an "invention" or data structure, if I can do the same as the invention being completely naked and not moving a muscle.
As I can think my way through every algorithm and data structure imaginable, every idea how to better organize or process data is not pantentable.
The anonymous contributor can compress a GIF by sheer power of will, then?
ReplyDeleteSimilarly, I can think through the process for making steel from iron and carbon at certain pressures and temperatures. Does that mean that's a non-patentable algorithm, too?
This particular test keeps on cropping up and has never made sense.
Also, the UK courts and EPO have all been quite firm on one point for many years: the fact that a computer is used to carry out the process in the first case and not the second does not mean the first is not patentable.
What matters, then, is the end result - a smaller image file in the first case and a lump of steel in the second. If you want to say that the first should not be patentable when the second is, fine, but I'll need a better reason than "I can imagine the process the created it".
Gerontius
Re Anon
ReplyDelete"Not technical is an "invention" or data structure, if I can do the same as the invention being completely naked and not moving a muscle."
Unless you have pychokinetic powers whereby you can influence the operation of an actual computer, you'd be hard pushed to replicate the most of the claimed methods relevant to this discussion...
Anon, what the judge said was "It is simply inaccurate to label all programs within the computer as software and on that basis to regard them as of equal importance in relation to its functionality." It's not the first half of the statement that's inaccurate.
ReplyDelete"it was only included as a backstop against patentability, not as a get-out clause (see para 46 of A/M)"
ReplyDeleteMaybe David has the same special annotated copy of the decision as UKIPO, because I see nothing in that para that makes that position clear. It says that the 4th step may not be necessary because the technical nature of the contribution should have been considered in the third step (which is Patten's central point) not that is may be unnecessary of you have already found the contribution to be excluded.
If we then look at how Jacob uses the test for the Macrossan application it to my mind does not support David's/UKIPO's position:
In paras 64-71 Jacob concludes that there is no contribution outside a business method in the 3rd step. Still in para he applies the 4th step and says there is nothing technical "beyond the mere fact of the running of a computer program". (hence Gerontius’s question about what happens when there is something beyond that)
Then in consider the computer program exclusion he again concludes that it fails the 3rd step in para 73 but still applies the 4th step and says
"is that contribution technical? – is again easy. No. So the exclusion applies."
I don't want to read too much into one word, but I read the word "So" as "therefore", which to me implies that the exclusion does not apply when the contribution is technical and it is "a get out clause".
I believe the "normal physical effects" of a program running on a computer are just the electrons running around in a particular way inside the computer, see Guidelines C-IV, 2.3.6. A program is not technical only because it makes electrons go around in a particular way when run on a computer.
ReplyDeleteA program accepting user input and displaying something on your screen achieves technical effects. However, accepting user input and displaying things on your screen are obvious. Same for communicating with other computers over a network, that's technical but in itself obvious. Only when a combination of such featurse achieves a technical effect different from or greater than the sum of the individual effects do you get something that you would need a document for.
An average user application will have lots of technical effects, but if the application is only automating administrative work the combined effect is automation of administrative tasks and the only technical part of that is the "mere automation". Mere automation is obvious.
"It is simply inaccurate to label all programs within the computer as software and on that basis to regard them as of equal importance in relation to its functionality."
ReplyDeleteHowever I read this, it is inaccurate. Computer programs ARE software, and although there maybe a functional hierarchy, they should all be given equal importance.
And to add to the fun, in his decision in Patent Application No GB 0311200 in the name of IGT/Acres Gaming Inc [2008] EWHC 568 (Ch)
ReplyDeletehttp://www.bailii.org/ew/cases/EWHC/Ch/2008/568.html
MR PETER PRESCOTT QC (sitting as a Deputy Judge) said (para 20):
“The fourth or last step is just a cross-check, because "technical" is too vague a test to be used on its own.”
Hmmmmm… how does that sit with Symbian, not to mention 20-odd years of EPO case law…
OK, what actually is the issue? If nothing else, Symbian shows that the A/M test is seriously flawed, or at least in need of clarification, because there is genuine controversy about how it is applied by UKIPO.
ReplyDeleteThe real issue is about what constitutes patentable subject matter and the peculiarities of the A/M test are just becoming a distraction.
Remember, UKIPO and the EPO took completely different views of the same invention.
EP1678607, granted with claim 1 identical to the UK case. Claim 1 as filed/published objected to as lacking novelty. Amended. Granted. Not a murmur from the non-technical alarm.
Step 4 of the A/M test, as applied in the A/M decision itself, can only mean that an invention will escape the exclusions if there is a technical contribution. This is not to say that non-technicality is a common thread through the explicit exclusions, but it surely means that an invention that, on its face, looks like excluded subject matter, will escape the exclusions if it makes a technical contribution. On that basis, EPO practice (“any hardware” avoids exclusion, only technical features count for inventive step) and UK practice under A/M (technical contribution needed to avoid exclusion) should lead to consistent results.
Merrill Lynch:
“…it cannot be permissible to patent an item excluded by section 1(2) under the guise of an item which contains that item – that is to say, in the case of a computer program, the patenting of a conventional computer containing that program. Something further is necessary. The nature of that addition is, I think, to be found in the Vicom case where it is stated: "Decisive is what technical contribution the invention makes to the known art". There must, I think, be some technical advance on the prior art in the form of a new result (e.g., a substantial increase in processing speed as in Vicom)."
Gale:
“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. Nor, as I understand the case as presented to us, do the instructions solve a "technical" problem lying within the computer, as happened with patent applications such as IBM Corp./Computer-related invention (Decision T 115/85) [1990] E.P.O.R. 107 and IBM Corp./Data processor network (Decision T 06/83), [1990] E.P.O.R. 91. I confess to having difficulty in identifying clearly the boundary line between what is and what is not a technical problem for this purpose…. What his instructions do, but it is all they do, is to prescribe for the cpu in a conventional computer a different set of calculations from those normally prescribed when the user wants a square root. I do not think that makes a claim to those instructions other than a claim to the instructions as such. The instructions do not define a new way of operating the computer in a technical sense”
and
“other difficult cases can arise where the computer program, whether in hardware or software, produces a novel technical effect either on a process which is not itself a computing process (see VICOM/Computer-related invention (Decision T208/84), [1987] 2 E.P.O.R. 74) or on the operation of the computer itself (see IBM Corp./Computer-related invention (Decision T115/85), [1990] E.P.O.R. 107).”
Fujitsu:
"I, like Nicholls L.J., have difficulty in identifying clearly the boundary line between what is and what is not a technical contribution. In Vicom it seems that the Board concluded that the enhancement of the images produced amounted to a technical contribution. No such contribution existed in Gale's Application which related to a ROM programmed to enable a computer to carry out a mathematical calculation or in Merrill Lynch which had claims to a data processing system for making a trading market in securities. Each case has to be decided upon its own facts."
Symbian:
“English Courts (up to the House of Lords) remain bound by the decisions in Merrill Lynch and Gale”
Certain contributions from the bench are less than helpful:
Shoppalotto
"There has been a tendency, especially in the earlier decisions of the Technical Boards of Appeal, to consider that the exclusions have in common a lack of 'technical effect' . While this may be true of many members of the list, it is not necessarily the case. A programmed computer provides an obvious example. Suppose a program written for a computer that enables an existing computer to process data in a new way and so produce a beneficial effect, such as increased speed, or more rapid display of information, or a new type of display of information. It is difficult to say that these are not technical effects, and, indeed, that the programmed computer, itself a machine that ex hypothesi has never existed before, is itself a technical article and so in principle the subject of patent protection. The real question is whether this is a relevant technical effect, or, more crudely, whether there is enough technical effect: is there a technical effect over and above that to be expected from the mere loading of a program into a computer? From this sort of consideration there has developed an approach that I consider to be well established on the authorities, which is to take the claimed programmed computer, and ask what it contributes to the art over and above the fact that it covers a programmed computer. If there is a contribution outside the list of excluded matter, then the invention is patentable, but if the only contribution to the art lies in excluded subject matter, it is not patentable.”
This clarifies nothing.
Shoppalotto again:
“First, determine what the inventor has contributed to the art over and above a computer operating in a new way as a matter of substance and, second, determine whether this contribution lies in excluded matter or, on the contrary, whether it consists in a technical contribution or effect. The contribution must be considered as a matter of substance so as (for example) to prevent patents being granted for such things as novel computer programs on a carrier such as a compact disc.”
…is a bit more illuminating, and consistent with the preceding cases.
More:
“An invention may be viewed as a solution to a concrete technical problem.”
So far so good.
“Merely to program a computer so that it operates in a new way is not a solution to any technical problem, although the result may be considered to be a new machine.”
This has to be read as meaning: Any program with any novel feature will result in a programmed computer that in some sense is a novel machine. But that’s not enough in itself. No surprise there. Then:
“It follows that an inventive contribution cannot reside in excluded subject matter.”
Sigh. Can anyone interpret that sensibly? On one reading, it’s axiomatic/self-fulfilling: anything excluded cannot be inventive. Or, it could be taken to mean that program features cannot produce an inventive contribution, regardless of any technical effect, which seems to be UKIPO’s position. But surely it is established beyond any possible doubt from the preceding cases that a claim that differs from the prior art only by virtue of program features CAN embody a patentable technical effect. The technical effect arising from novel programming must be seen as part and parcel of the “contribution” in the context of the A/M test. If a novel computer program produces a “relevant technical effect” it is not just a computer program “as such”.
Aerotel itself:
“As we have said this test is a re-formulation of the approach adopted by this court in Fujitsu: it asks the same questions but in a different order. Fujitsu asks first whether there is a technical contribution (which involves two questions: what is the contribution? is it technical?) and then added the rider that a contribution which consists solely of excluded matter will not count as a technical contribution."
Patten J, I think, does achieve some level of clarity in Symbian, from which all of the preceding quotes are extracted :
“The question whether the claim falls solely within the excluded subject matter (in this case a computer program) cannot be answered in isolation from the issue of whether it embodies a relevant technical contribution in the Merrill Lynch sense. The separation of this issue between steps 3 and 4 is not a problem provided that one recognises that they are as a matter of law alternatives. Where the only potential category of excluded material is a computer program then a claim based on such a program will be excluded unless it is in the relevant sense technical in nature. In paragraphs 46 and 47 Jacob LJ makes it clear that the Art. 52 (3) test is part of the step 3 question but that of course is inseparable from the issue of technical contribution in step 4 which only becomes an unnecessary inquiry if the question is included as part of step 3.”
But then we’ve got Symbian quoting Oneida Indian Nation quoting Merrill Lynch by reference to Aerotel:
“Fox LJ went on to say that, even if there was a technical contribution, if the result was still within an exclusion then that is the end of it:
"Now let it be supposed that claim 1 can be regarded as producing a new result in the form of a technical contribution to the prior art. That result, whatever the technical, advance may be, is simply the production of a trading system. It is a data processing system for doing a specific business, that is to say, making a trading market in securities. The end result, therefore, is simply "a method..., of doing business", and is excluded by section 1(2)(c). The fact that the method of doing business may be an improvement on previous methods of doing business does not seem to me to be material, The prohibition in section 1(2)(c) is generic; qualitative considerations do not enter into the matter. The section draws no distinction between the method by which the mode of doing business is achieved. If what is produced in the end is itself an item excluded from patentability by section 1(2), the matter can go no further. Claim 1, after all, is directed to "a data processing system for making a trading market". That is simply a method of doing business. A data processing system to produce a novel technical result would normally be patentable. But it cannot, it seems to me, be patentable if the result itself is a prohibited item under section 1(2)."
Oh dear. A business method characterised by novel technical features is still an excluded business method – support for UKIPO but surely contradictory to the very idea of a patentable CII?
I think here that Merrill Lynch is really just saying that the mere inclusion of technical features in a business method (e.g. any old computerised business method)does not escape the exclusion. It doesn't mean that a claim to a computerised business method can never embody a patentable technical contribution.
Carrying on:
“In Aerotel at [85], after citing these passages from Merrill Lynch, Jacob LJ said:
"So the technical contribution theory was adopted by this court but with the important rider that inventive excluded matter could not count as a technical contribution"”
“It is clear, therefore, that the critical question is that asked by the third step: does the contribution lie solely in excluded matter? If the invention fails to overcome that test, then it is excluded. Identification of some technical advance as compared with earlier methods does not bring back into contention inventions excluded at the third step. If the invention has been excluded at step 3, any technical contribution must have been one of purely excluded matter. Inventive excluded matter cannot, as a consequence of the Merrill Lynch rider, count as a technical advance. The fourth step is intended merely to make sure that inventions that have passed at step 3 are technical in nature, so step 4 is exclusionary in nature.”
I think Oneida goes off the rails there. I’m not even sure what it might think that it means.
Astron Clinica:
“I believe that in any particular case the application of the new approach should produce the same result as did the old. Indeed the Court of Appeal considered it was doing no more than applying a re-ordering of the Merrill Lynch test and that it was bound by Merrill Lynch, Gale and Fujitsu. Thus, in the case of a computer related invention which produces a substantive technical contribution, the application of step ii) will identify that contribution and the application of step iii) will lead to the answer that it does not fall wholly within excluded matter. Any computer related invention which passes step iii) but does not involve a substantive technical contribution will fail step iv). The answer to these questions will be the same irrespective of whether the invention is claimed in the form of a programmed computer, a method involving the use of that programmed computer or the program itself. Aerotel/Macrossan requires the analysis to be carried out as a matter of substance not form, just as did Genentech, Merrill Lynch, Gale and Fujitsu. True it is that the first step requires the scope of the monopoly to be determined and, in the case of a program, that will necessarily be limited. However the contribution of that monopoly must still be assessed by reference to the process it will cause a computer to perform.”
…back on relatively firm ground?
There is certainly no shortage of curve balls among the UK precedents, but this much must surely be undeniable:
A claim that is distinguished from the prior art only by computer program features CAN still be patentable IF there is a relevant technical contribution that arises from the subject matter of the claim as a whole, by virtue of the novel program features. Under A/M, the assessment of technical contribution should take place under steps 2/3.
Under slightly different guises, the notion of “technical contribution” lies at the heart of patentability in both the EPO and the UK. Let’s not pretend otherwise. Let’s get on with clarifying what is or is not a “relevant technical contribution”.
Finally another real life example: PCT application, all claims indicated as novel and inventive by the EPO in the IPER. No “technical” issues. Claim 1 reads:
A system (700) for enabling dynamic loading and linking of a dynamic library (DL) (735) on a target software platform operating within a computing environment, independently of the native dynamic linking facility, if any, of the target software platform, comprising:
said DL (735), created as a binary object file having a selected structure;
a stub file (765), created as source code, for the DL (735);
a dynamic loader/linker (720) created as source code;
application source code (705) for a cooperating computing application; and
a compile and build process (770) adapted to create a binary executable program (795) for said target software platform by compiling said source code for said stub file (765) and said dynamic loader/linker (720) together with said application source code (705), said program (795) including dynamic loader/linker functions (785) derived from said dynamic loader/linker (720) such that the dynamic loader/linker functions (785) will operate to load the DL (735) onto the software platform during the loading of the program (795) for execution to allow the program to have access to and co-operate with the DL (735).
Technical contribution: you don’t need to create different flavours of the same software for different platforms.
Pre-Symbian, what would UKIPO have made of that? I think we can guess.
Andres, I don't think anyone denies that computer programs are software (or vice versa, usually). But it doesn't follow that all computer programs are unpatentable. Computer programs are unpatentable as such, but not (the EPO's line seems to be) if they are a technical solution to a technical problem. Take an analogy from another area. Images are unpatentable as such (I think it would be agreed), and that would include an image of a hawk. However, if you stick an image of a hawk on a window, it discourages birds from flying into it, and the combination would be patentable (if new, etc), as solving the technical problem of reducing injury to small birds.
ReplyDeleteI still think there is something inherently wrong with the UKIPO or the courts following the tests strictly and stating that they are binding above anything else. The wisdom of having a single test for excluded matters of different nature is also questionable.
ReplyDeleteWe all know what the conditions for "binding" are, and it would seem rather a sweeping statement to say that the facts in all computer-implemented inventions are the same. They are not. Clearly there are different types of contributions, and clearly "internal" contributions (as in Symbian) are very different from "external" ones (like in a program for controlling a CNC machine), to name just one radical difference.
In my view, the test may come all the way from the House of Lords, but if the facts are not the same, then it is only obiter and not necessarily binding. Patten J is right to take A/M with a pinch of salt.
Perhaps the EPO is not so misguided (as Jacob J would like us to believe) in having a multitude of approaches, to what is in fact a multitude of types of the excluded matter, and a multitude of types of computer-implemented inventions.