Patentability of CIIs in the UK: Analysis of the Effect of the CFPH and Halliburton Judgments.
In my earlier posting I had reported on two important pieces of UK Case Law concerning the patentability of CIIs. The UK Patent Office now has published some comments on the future influence of both decisions on the general practise of the Office:
"[...] 3. With the possible exception of one borderline case, in the Patent Office's view the CFPH approach leads to exactly the same conclusion as the old 'technical contribution' test. However, in conducting this exercise it has become clear that, to apply the CFPH test, it is very important to assess correctly the advance in the art, because otherwise the wrong conclusion can easily be reached.
4. The borderline case relates to compilers. Fewer of these may prove to be patentable under the CFPH approach. [...]"
However,
"[...] 5. As the Practice Notice explains, the test used by the Deputy Judge in CFPH to assess whether an invention was patentable was a two stage one comprising:
(1) Identify what is the advance in the art that is said to be new and not obvious (and susceptible of industrial application).
(2) Determine whether it is both new and not obvious (and susceptible of industrial application) under the description of an "invention" in the sense of Article 52 of the European Patent Convention - which section 1 of the Patents Act 1977 (PDF 356Kb) reflects.
6. Because the Deputy Judge in CFPH was able to assume that the claimed invention was both novel and inventive per se, it was appropriate for the purposes of that case to express the test as simply a two-step one. However, where that assumption is inappropriate, the test will usually break down into rather more steps:
Identify the alleged advance Decide whether that advance is:
new
not obvious
susceptible of industrial application
If yes to all those, decide whether the advance falls under the Article 52 description of an invention - ie is in a non-excluded field.
7. In considering the first step it is important to look at the invention as a whole and not take too narrow a view - in this respect, the CFPH approach is no different from the previous approach. In particular, whilst novel software may well be a crucial element of the advance, that does not necessarily mean that the advance resides in the software alone. This is where the EPO form of claim can help, as the "characterising" part of the claim ought to equate to the alleged advance.
8. The use of case studies creates a particular problem when assessing the alleged advance. The background against which the case study has to be viewed is invariably incomplete, and different assumptions about that background can therefore lead to rather different assessments of the advance. Indeed, this was an issue that accounted for some of the debate in the workshops themselves. Accordingly we have tried to give a clearer indication of the assumptions we have made when assessing each case study. However, none of the case studies should be taken as a decisive indication of how a real case might fare, because even if the facts might look superficially similar, the background against which the case has to be viewed might be different.
9. Although for simplicity these notes mainly refer to CFPH, where appropriate they also take account of the judgment in Halliburton Energy Services Inc v Smith International (North Sea) Ltd and others [2005] EWHC 1623 Pat.
10. At the time of writing there has only been one decision since the judgment in CFPH was handed down (see case study 11). Future decisions of hearing officers or judgments of the courts may, of course, alter the position if they develop or refine the CFPH approach. [...]"
Hence, there is emerging another difference between the pan-European EPO and the national UK practises:
"[...]On the basis of our understanding of previous case law, examiners have been using the "technical contribution" test to assess whether inventions fall outside the exclusions set out in section 1(2) of the Patents Act 1977. Recognising the importance of the case law of the European Patent Office (EPO), examiners have often also applied the test now used by the EPO, as set out in the EPO Board of Appeal decision in Hitachi T258/03. However, they have done this largely as a cross-check, taking the view that the "technical contribution" test was the proper one under UK law.
4. The CFPH judgment, having taken account of the underlying principles, the emphasis many previous Court of Appeal judgments have placed on having regard to decisions of the Boards of Appeal of the EPO and the comments of the House of Lords in Biogen Inc v Medeva plc [1997] RPC 1 at page 42, concludes that assessing inventions against section 1(2) in isolation by applying the "technical contribution" test is not the right approach. [...]"
The failed EU Directivce originally was designed to eliminate such divergences.
In particular, whilst novel software may well be a crucial element of the advance, that does not necessarily mean that the advance resides in the software alone
Kinda sums it all up. A CII is patentable if and only if the innovation is not exculsively in software. Also the innovation applies as a whole so individual claims on pure software elements of the patent are not enforcable (and that would violate EU law anyhow).
It also makes the term CII irrelevant as far as patents are concerned - software is not patentable and no dressing it up in fancy language or vague terms like CII is going to change its enforcability.
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Dipl.-Phys. Axel H Horns is Patentanwalt (German Patent Attorney),
European Patent Attorney as well as European Trade Mark Attorney. In particular, he is Member of:
my earlier posting I had reported on two important pieces of UK Case Law concerning the patentability of CIIs. The UK Patent Office now has published some 
comments on the future influence of both decisions on 
