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This is a slightly belated review of the CIPA seminar, “Computer Programs & Excluded Matter”, held at CIPA Hall on 7 April 2014 and attended by this ipcopywriter.
The seminar was presented by two senior examiners from the UK Intellectual Property Office, Dr Russell Maurice and Dr Stephen Richardson, both very enthusiastic and articulate speakers. The structure of the seminar was based on training sessions given to UKIPO examiners and involved a presentation regarding excluded matter under the Patents Act. This was followed by a review of a handful of case studies in small groups to test the principles that we had just been taught, and then finished up with a discussion of the decisions reached by the groups.
Will it be valid if it grants?
The seminar put the practitioners in the shoes of examiners, and the presentation started with a reminder of the motivation behind what examiners aim to achieve – to ensure that patent applications that they allow will stand up in court.
As this seminar was specifically on non-patentable inventions, discussion of Section 1(2) Patents Act 1977 regarding excluded subject matter naturally followed. Emphasis for this session was that a program for a computer as such is not considered an invention under the Act.
Turning to the judicial interpretations of Section 1(2) of the Act, it was highlighted that HTC1 reaffirmed that the assessment of whether an invention makes a technical contribution should continue to follow the Aerotel/Macrossan2 test. Further, it was stressed from HTC that “novel or inventive purely excluded subject matter does not count as a technical contribution”. Unsurprisingly, this view presented by Dr Maurice is exactly in line with the Manual of Patent Practice.
By way of reminder, the four steps of the Aerotel/Macrossan test are:
- Properly construe the claim;
- Identify the actual contribution;
- Ask whether it falls solely within the excluded subject matter; and
- Check whether the actual or alleged contribution is actually technical in nature.
It was then explained how each of these steps is approached by examiners. In identifying the contribution, the examiner exercises their judgement to balance the problem said to be solved, how the invention works, what the benefits of the invention are and what has been added to human knowledge. For example, a claim may be directed to a computerised trading system but the contribution is likely to be a business method and not a new computer system.
For computer programs, the contribution is assessed “by reference to the process it will cause a computer to do”3 or by “what task it is that the program (or programmed computer) actually performs”4.
Turning to the third step, in the context of computer-implemented inventions, the question of whether the identified contribution is excluded requires the determination of whether there is a technical contribution (which effectively answers the final step at the same time).
What is ‘technical’?
The definition of ‘technical’ in the context of patent law can be guided with reference to the European Patent Office Technical Board of Appeal decision in Vicom5 where a technical contribution was found to subsist in a technical process being carried out under the control of a program. The decision of Vicom has been approved in the UK by the Court of Appeal, including in Merrill Lynch6.
AT&T7 collated signposts from preceding case law that aid in the assessment of whether the contribution of a computer-implemented invention is technical. These signposts are:
- Whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
- Whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
- Whether the claimed technical effect results in the computer being made to operate in a new way;
- Whether a program makes a computer a better computer in the sense of running more efficiently and effectively as a computer; and
- Whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
The AT&T signposts do not always have to be applied in the third step of Aerotel/Macrossan, for example when the actual contribution of a computer-implemented invention is found to be excluded matter such as a business or mathematical method.
The case studies
Following the presentation, delegates were divided into groups of about four or five and set to task examining fictional claims for excluded matter. This interactive part of the seminar showed the difficulty that the examiners face in reaching a decision on patentability; reaching a consensus, even within the small group, required a great deal of debate on how to practically apply Aerotel/Macrossan and the AT&T signposts.
Reconvening to review each group’s decisions demonstrated a further lack of unity in the opinions of the delegates, although Dr Richardson helpfully went through the ‘right’ answers to all the case studies and drew the seminar to a close.
Summary
Overall, this ipcopywriter was left with the impression that the UKIPO approach the question of the patentability of computer-implemented inventions very formulaically, applying the Aerotel/Macrossan test and, if necessary, following the AT&T signposts.
In theory, this knowledge would make it straightforward to anticipate and avoid excluded matter objections during prosecution. However, having been on the receiving end of an examination report citing Aerotel/Macrossan, this ipcopywriter knows first hand that there are more factors affecting patent prosecution than statue and case law.
Laurence Lai 12 May 2014
1 HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 [44]
2 Aerotel Ltd v Telco Holding Ltd, and Neal William Macrossan’s application [2006] EWCA Civ 1371 [40]
3 Astron Clinica Ltd v The Comptroller General of Patents, Designs and Trade Marks [2008] EWHC 85 [49]
4 Halliburton Energy Services Inc [2011] EWHC 2508 [32]
5 Vicom/Computer-related invention (Decision T 208/84) [1987] OJEPO 14
6 Merrill Lynch’s Application [1989] RPC 561
7 AT&T Knowledge Ventures LP and CVON Innovations Limited v Comptroller General Of Patents [2009] EWHC 343 [40]
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I get the impression the EPO is more lenient towards computer implemented inventions, and I notice very little EPO case law is mentioned in this report. I also think the IPO can have a very formulaic approach to complex patentability issues, and I wonder whether it could benefit from setting up an Appeal Board structure akin to the EPO that could be properly responsive both to UK Court decisions and EPO case law, but would also have the confidence and expertise to not follow a formulaic approach.
There’s little EPO case law mentioned in this article as it reflects the presentation in the seminar itself. The lack of references to EPO decisions in the presentation is likely because of the different approach that the UKIPO have compared to the EPO when it comes to excluded subject matter as you mention. It’s not necessarily that the EPO is more “lenient” per se, but that they have a fundamentally different way of assessing computer implemented inventions. The EPO of course approach such inventions via inventive step objections, whereas the UKIPO are usually more upfront about citing an exclusion under s.1(2) PA 1977 following Aerotel/Macrossan. The former objection is typically overcome more easily by highlighting the merits of the technical features of the claims.
I think that UKIPO Hearings are akin to the appeal board that you propose as they do take into account both UK judgments and EPO decisions, and the hearing officers are experienced examiners. However, this does not overcome the precedent that the problem-solution approach should not be used in the UK, despite persuasive arguments discussed in Lalvani et al’s Patent BLO/220/13.