Lord Hoffmann on Patentability of Software and Business Methods

Following the astonishing news from New Zealand that I had been mentioned in a speech by Lord Hoffmann there (more details here), I attended an event last night that was organised by the Midlands Intellectual Property Society (no web presence, unfortunately), at which the eminent Lord was the star attraction.

After a very noisy dinner at the Metro Bar and Grill that made my poor ears hurt, the group slipped off down the road to Hammonds HQ in Birmingham to hear Lord Hoffmann speak on the subject of the moment, patentability of software and business methods.

Along with the expected mention of my observations on G 3/08, with which he fully agrees, Lord Hoffmann's main point was to demonstrate that there are two over-arching principles that can be applied to the exclusions of Article 52 EPC that make some sense of the EPO 'technical character/effect' test that confuses so many people (and cats), including at least one English Court of Appeal judge and the current EPO President. These principles can be described as the practical application principle and the human behaviour principle. The former principle applies to some of the non-inventions listed in A52(2) EPC, while the latter applies to the others. If I remember right, Lord Hoffmann divided them up as follows:
Practical Application Principle: discoveries, scientific theories and mathematical methods, aesthetic creations, presentations of information, and programs for computers;
Human Behaviour Principle: schemes, rules and methods for performing mental acts, playing games or doing business.
The reasoning goes something like this: Non-inventions in the first category do not in themselves have practical application, so should not be patentable in themselves, but they might in some cases have the capability to support a patentable invention, for example in the way that a new computer program can support an invention if there is a practical application (or 'further technical effect', if you prefer). Non-inventions in the latter category are aspects that cover human behaviour, so should not be patentable for this reason alone, even though they may very well have practical application (such as new tactics in football or new ways of investing money). An example that was given is a new method for a pilot to use when performing take-off in an aeroplane that minimises noise.

I am not yet sure if this new way of describing the bounds of what should and should not be patentable is workable or consistent, but it certainly seemed to make sense at the time, and definitely makes a lot more sense than the confusion that is going on with the situation in the US with the Bilski case. Whether it can be put to good use in Europe is another matter, particularly given that it seems likely the EPO Enlarged Board will also agree with me. Do the IPKat's readers have any further thoughts on this idea?
Lord Hoffmann on Patentability of Software and Business Methods Lord Hoffmann on Patentability of Software and Business Methods Reviewed by Tufty the Cat on Friday, November 13, 2009 Rating: 5


  1. Why do you wish to push the boundaries of patentable subject matter in the first place. The current ones are enough to create serious and unmanageable headaches.

    Jokes apart, I have to agree with you. The classification of the non-patentable subject matter makes a perfect sense, BUT the non-patentable subject matter still stays non-patentable!

  2. I might agree that discoveries, scientific theories, mathematical methods and aesthetic creations as such may not have practical application when expressed in the abstract without being applied to solve a particular technical problem.

    The same can be said of computer programs where they too are not directed to solving a technical problem. Some programs, even when loaded or running in a computer, will not solve technical problems (such as economics software). However, some programs do provide solutions to technical problems and this is a technical contribution. When a computer program solves a technical problem it stops being a computer program as such and becomes much more, a technical method for solving a technical problem. It can be described as a series of program steps or in more physical terms as logical operations howsoever embodied.

    That is to say that a skilled patent drafter might successfully claim an invention conceived as a computer program without ever referring to a computer program in the specification (notwithstanding best-mode requirements in some jurisdictions). If the invention addresses a technical problem (and is novel & inventive) it would be patentable and the issue of the computer program exclusion might never arise.

  3. So we're still no closer to actually deciphering what is patentable and what is not...that said, his Lordship does take a very complicated area and transform it into a more manageable dichotomy.

  4. Certainly an interesting approach and in case the Enlarged Board does not agree with Tufty I hope we'll hear more about it.

  5. The distinction is an interesting one, but there's more to it than that. Discoveries and scientific theories aren't patentable because they're not new. Knowledge is not patentable in itself, nor are mental acts: you need a new material product or process. Both theories and discoveries frequently lead you to do something new and useful that you can patent. Special provisions to exclude them simply lead to confusion. Thus, 'discoveries' are (according to the words used in their respective laws) patentable in USA, but unpatentable in Europe. You'd think this would lead to totally different practices, but in fact (special exceptions like business methods and medical treatments aside) what you can patent is much the same in both.

  6. I was in the audience for Lord Hoffmann's speech in New Zealand. Although I haven't gone back and read Hoffmann's paper, at the time it all made perfect sense and he made the whole horrible mess seem clear cut and easy. I would urge the Kats to ask his Lordship's permission to put the paper up on-line, or distribute it through other channels.

  7. The EPO president was quite convincing at the Fordham IP event earlier this year that their research had found no underlying policy reason for the collection of non patent eligible subject matter.
    My theory is that they are all ideas that can be promoted and made available to society without investment and therefore the social contract of the patent is redundant.

  8. It seems that everybody has a theory, but none I have seen is really convincing ...

    We should take the exclusions as what they are without looking for a profound underlying principle, which I believe was not there from the very beginning.


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