Exclusions to Patentability

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Shortly after this article was first published the outcome of a recent Court of Appeal decision in the combined case of Astron Clinica & Others has meant a re-assessment of the current state of play by the UK Intellectual Property Office with regards to their refusal of claims to a computer program or a program on a carrier (such as a CD-ROM or flash memory stick), when the program itself was patentable. Previously this has meant that in practice in cases where apparatus or methods claims were found to be patentable, claims to a program on a carrier were still being refused by the UKIPO. The impact of this to a proprietor was that only decisions for indirect infringement by the copying of the code on a computer disk could be achieved via litigation.

Aerotel/Macrossan remains the key case with regards to UK practice as it set forward a four step test for the patentability of computer related inventions, but the four stage test was directed to deciding the patentability of apparatus and method claims only. The United Kingdom Intellectual Property Office (UKIPO) have not appealed against the decision in Astron Clinica and have subsequently issued a new practice note concerning the patentability of claims to a computer program or a program on a carrier, where the program itself is patentable. The practice note explicitly states that claims to a computer program or program on a carrier will no longer be automatic grounds for objection. Consequently, claims to a computer program or program on a storage medium will not be found unacceptable when the Aerotel/Macrossan four-step test is satisfied by an invention containing claims to a method performed by computer or to a computer apparatus programmed so as to work the invention.

By Chris Hirsz, HLBBshaw Ltd

Introduction

Patent laws across Europe, including the United Kingdom, and the European Patent Convention (EPC) are harmonised to the extent that they all include a list of �types� of inventions that are specifically stated not to be patentable inventions. They are therefore excluded from patentability on statutory grounds. This list includes:

� discoveries, scientific theories and mathematical methods

� aesthetic creations

� schemes, rules and methods for performing a mental acts, playing games or doing business, and programs for computers

� presentation of information.

However, these things are stated to be excluded only to the extent that they relates to that thing, as such.

Other inventions, such as methods of treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body are also excluded from patentability. Although the previous basis for this exclusion was that such inventions were not to be regarded as inventions which are susceptible of industrial application, this has recently been amended to the, perhaps more honest, reason that it is public policy not to allow patents for such inventions.

Technical Character

It has been considered that the common feature of all the exclusions listed above is that they are not considered as having a technical character. Although this definition has not previously been included in either the EPC or UK statutes, the EPC has now been amended so as to explicitly limit the grant to patents to inventions in all fields of technology, rather than just to inventions. It will be apparent that some of these exclusions are protectable by other forms of Intellectual Property Right, for example, Copyright or Designs. However, many fall on the boundary of patentability and, especially in the modern era, are often implemented with computers.

The generally accepted and widely used definition is that a �computer-implemented invention� is one:

� whose implementation involves the use of a computer, computer network or other programmable apparatus, and

� has one or more features realised wholly or partly by means of a computer program.

Thus, whereas it is clear that computer programs usually fall within this definition, it will be appreciated that several of the other exclusions also often fall within this definition, especially, business methods, games, �mental acts�, mathematical methods and presentation of information. There will also, of course, often be overlap between others of these exclusions, for example, mental acts and mathematical methods, business methods and mental acts, business methods and presentation of information, and games and mental acts. Nevertheless, in most cases, they will be a computer-implemented invention.

Whilst the patentability requirements of novelty, inventive step and industrial application are defined in more detail in the EPC and national laws, there is no legal definition of the term “invention”. Nevertheless, it has always been considered, at least in Europe, that patent protection should be reserved for creations that are �technical�, and, as mentioned above, this has now been explicitly inserted into the EPC. The EPO, particularly, have always taken the position, that, in order to be patentable, an invention must have a “technical character” or, more precisely, involve a “technical teaching”, that is, sufficient information for a person skilled in that field to be able to solve a particular technical problem using particular technical means. However, such a strict requirement for technical character has not always been applied in the UK.

As mentioned above, the exclusions are stated not to be patentable, but only to the extent that the patent or patent application relates to that thing as such. Therefore, inventions having a technical character (as far as the EPO is concerned) which are or may be implemented by computer programs may well be patentable. In general, the practice of the EPO and the case law of its Boards of Appeal are supposed to be based on this interpretation of the term “invention”, although, of course, each case is different and is looked at independently.

In the UK, the courts have also tried to follow the EPO Board of Appeal decisions and look for technical character, but the difficulty has always been that, just as there is no definition of �invention�, so there is no definition of �technical� and the courts have found it very difficult, if not impossible, to come up with a working suggestion as to what �technical� means.

The Boards of Appeal of the EPO have established that, generally, computer-implemented inventions cannot be patented if:

� there is no technical contribution to the prior art or

� if there is such contribution, that contribution is not new or inventive.

In the UK, the present position is that such inventions cannot be patented if the novel and inventive contribution falls solely within one or more of the exclusions.

Neither the EPO nor the national Patent Offices of the contracting states grant patents for computer programs as such. It should be noted that this is somewhat different to the current practice of the United States Patent and Trademark Office, where there are no specific exclusions from patentability set out in the statute.

Computer Programs

The EPO position, as mentioned above, is that the invention can be patented if it has a technical character, provided it meets the requirements of novelty and inventive step. In the well known VICOM case (T 208/84), the Board of Appeal decided that an invention for controlling or carrying out a technical process is patentable irrespective of whether it is implemented by hardware or software. The decision as to whether a process is carried out by means of special circuits or by means of a computer program depends on economic and technological factors. Patentability may not be denied merely on the grounds that a computer program is involved. This issue to be decided is whether the invention, as a whole, uses technical means to solve a technical problem.

A special case arises in connection with claims to computer program products, such as computer programs stored on a data carrier. These constitute patentable subject-matter only if there is a “further technical effect”, that is, one going beyond the normal physical effects (for example, the flow of electrical current) which occur when any program is executed. Such further technical effect might be, for instance, the more secure operation of the brakes of a car or train, or faster communication between two mobile phones with improved quality of voice transmission.

In the UK, on the other hand, the test for non-excluded subject matter was considered by the Court of Appeal in the jointly-heard cases of Macrossan�s Application and Aerotel v Telco [2006] EWCA Civ 1371. In this decision, the Court of Appeal came to the conclusion that there should be a four step test for patentability, as follows:

(1) properly construe the claim;

(2) identify the actual contribution;

(3) ask whether it falls solely within the excluded subject matter;

(4) check whether the actual or alleged contribution is actually technical in nature.

This four stage test has recently been applied in two cases, which illustrate how it is interpreted in practice in the UK. In the first case, that of Bloomberg�s Application, the judge found that the �contribution� made by invention was that of �appropriately treating data to match the requirements of a particular end user prior to its transmission to that end user�. He further considered, referring to point three of the test, that the claim contained no relevant hardware limitation, and was inclined to view the claim as limited to server-side processing, and therefore a computer program as such. Thus, the judge considered that the application failed the third step of the test. Nevertheless, he continued in his judgement to assess the fourth point of the new test, i.e. is it possible to detect a technical effect of the invention? Here, the claim was insufficiently tied to any real-world physical entity that could be said to demonstrate such an effect, and so the claim also failed on this point.

In the second recent case, the (same) judge construed the claim, to a system for searching and retrieving of transportation routes between a start point and an end point, as being pure manipulation of data, without the production of any physical or real-world effect. Even when considering subsequent claims, directed to a method of controlling vehicles according to information retrieved from the system, the judge stated �There is, in my judgment, no relevant technical effect in merely moving vehicles and their cargos around according to a routing algorithm�. Thus, again the application fell on both the third and fourth steps of the test.

Nevertheless, in the decision, the judge appears to be suggesting that excluded matter may be made patentable by linking it to a physical or real-world effect. If this is true, then it may offer a life-line to Applicants who would otherwise fall foul of the new test. However, as was set out in the original Aerotel/Macrossan judgement, the fourth step of the test is not provided to �rescue� a claim that has failed the third step of the test, but rather to check that the third step of the test has been applied correctly.

Business Methods

As with computer programs, neither the EPO nor the national Patent Offices of the contracting states grant patents for business methods as such. Again, it should be noted that this is somewhat different to the current practice of the United States Patent and Trademark Office, where there are no specific exclusions from patentability set out in the statute.

The EPO position is that if the invention relates to an apparatus or technical process for carrying out at least some part of a business method, that business method and the apparatus or technical process have to be looked at as a whole (Decisions T 931/95 “PBS” and T 641/00 “COMVIK”). In particular, if computers, computer networks or other conventional programmable apparatus, or a program therefore, is included for carrying out at least some steps of a business method, it is examined as a computer-implemented invention (Decisions T 1173/97 “IBM” and T 935/97 “IBM”).

It has been made clear by the EPO that using technical means for a purely non-technical purpose (for example, having purely administrative, actuarial and/or financial character) and/or for processing purely non-technical information did not necessarily confer technical character to any individual steps or to the method as a whole (Decision T 931/95 �Pension Benefit Systems Partnership�).

Other Exclusions

Many games are given at least a veneer of technical character by being computer-implemented (particularly, for example, networked gaming machines). In the recent case in the UK of Shopalotto.com Limited�s Application [2005] EWHC 2416 relating to a computer-based game configured to provide a lottery playable over the Internet, it was held that �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.�

A representation of information defined solely by the content of the information is not patentable. However, it has been made clear in the EPO (Decision T 362/90 �WABCO Westinghouse�) that automatic visual display of conditions prevailing or desirable in an apparatus or system was basically a technical problem and therefore patentable. In some cases, the arrangement or manner of representation, as distinct from the information content, may well constitute a patentable technical feature.

Conclusion

Thus, it is considered at the present time therefore, that, despite the UK Patent Office�s protestations to the contrary, borderline inventions are more likely to be granted by the EPO than by the UK Patent Office, although how the UK courts will react to the validity of such EPO granted patents for the UK remains to be seen.

Chris Hirsz (chris.hirsz@hlbbshaw.com) is a qualified UK, European and Australian Patent Attorney. He has business experience in the practicalities of patent protection in Europe and in the USA having worked for many years for Motorola in the UK and Singapore. Chris� technical expertise extends across the full spectrum of electronics, from semiconductor processing technologies, through telecommunications systems and methods (including signal processing and internet-related technologies) to electronic circuitry, as well as in the fields of software and business methods.

The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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