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Monday, August 01, 2005

UK: Interesting Case Law on Patentability of Computer-Implemented Inventions.

[...] At the risk of some inaccuracy, patents are supposed to be granted for non-obvious advances in technology. I said "at the risk of some inaccuracy". We sense that we know 'technology' when we see it. And no doubt that is correct, most of the time.

But it is not correct all of the time. Therein lies the delusion. You can prove that for yourself by trying to find a definition of 'technology' that everybody can agree on. The more you try, the more you will discover what a horribly imprecise concept it is. (Would it cover an astro-navigation chart? Naval tactics? Double-entry bookkeeping? The phonetic alphabet?) Many have tried to frame an acceptable definition, but to the best of my knowledge none have succeeded. It is like the equally vexing question, "What is Art?". The hard truth is this: concepts of that sort have no existence, and words of that sort have no meaning, except by human convention; but human beings are hopelessly in disagreement at the margin. And it is, precisely, at the margin of uncertainty that cases come up for decision.

The same goes for the cognate word 'technical'. A number of surveys in the context of patenting have shown that, not only is there no agreement about the meaning of the word, but that most informed respondents agree that "trying to define the words 'technical' or 'technology' is a dead-end" 5. That 'technical' is vague has implicitly been recognised in our courts too. For example, in Gale’s Application [1991] RPC 305, 328 Nicholls LJ said that Mr Gale’s algorithm did not solve a 'technical' problem lying within the computer. He continued:

I confess to having difficulty in identifying clearly the boundary line between what is and what is not a technical problem for this purpose. That, at least to some extent, may well be no more than a reflection of my lack of expertise in this field.

But for my part I think Nicholls LJ was too modest. I believe his difficulty arose, not through lack of expertise, but because of the inherent vagueness of the concept itself. In Fujitsu Limited’s Application [1997] EWCA Civ 1174, [1997] RPC 608 Aldous LJ said:

I, like Nicholls LJ, have difficulty in identifying clearly the boundary line between what is and what is not a technical contribution.

Likewise the German Federal Court of Justice in XZB 15/98, "Sprachanalyseeinrichtung", 11 May 2000.

I mention this near the outset of this judgment because it is important. If you look at the case law on the subject, both here and in Munich, you will find many references to "technical contribution", "technical result", and so on, being touchstones by which these cases are decided. The use of the word 'technical' as a short-hand expression in order to identify patentable subject-matter is often convenient. But it should be remembered that it was not used by the framers of the Patents Act 1977 or the European Patent Convention when they wanted to tell us what is or is not an 'invention'. In any case the word 'technical' is not a solution. It is merely a restatement of the problem in different and more imprecise language. I am not claiming that it is wrong to decide cases with reference to the word 'technical'. It happens all the time. What I am saying is that it is not a panacea. It is a useful servant but a dangerous master.

[...]

Recently, the scope of this exclusion has been under re-consideration by the European Union. The Commission wanted to harmonise the law by defining the line between inventions that are properly patentable and mere computer programs. Although not strictly relevant to what I have to decide, I must admit I watched developments with some anxiety. Had the proposal succeeded it would have entrenched a test involving 'technical contribution' and 'technical features' that I suspect is too vague to be workable at the margin. On 6 July 2005 the proposed directive was defeated in the European Parliament and it will not be re-introduced.

[...]

It is fairly obvious that our Patent Office is not very enthusiastic about the prospect of having to track every twist and turn of the EPO’s reasoning – some of it rather refined – and I can understand why. It would not be possible anyway because the EPO seldom establishes a new practice in the twinkling of an eye. Furthermore there are aspects of the EPO’s current approach which, in my opinion, are not entirely satisfactory. In order to sort this out, let me consider to what extent the EPO may be right.

[...]

SOME REMARKS

Despite the prohibition on granting patents for computer programs as such, it is said that the EPO has granted more than 40,000 of them. It is said that not a few of these pertain to business methods as well. From the point of view of the applicants in our case, if there is any chance of getting such a patent it may be said to be a rational business choice to try it. If not, their competitors might. I have pointed out that patents that are wrongly granted can be very expensive to challenge, and perhaps beyond the means or inclination of small and medium enterprises. An accumulation of patents of that sort (sometimes known as a "patent thicket") may be a serious barrier to entry.

The only safeguard against that wrong – and it is a wrong – is the vigilance of the Patent Office. When I was a Patent Office examiner (though that was many years ago) we knew that we sometimes granted patents that we shouldn’t, but did it anyway because we thought the Patents Appeal Tribunal would not support us. I believe that when a Patent Office examiner upholds the law he or she ought to be named and praised. And even if the Patents Court may disagree with the objection on appeal, it is a matter of praise all the same if the objection was reasonable.

• of some of the aspects of the current doctrine on the patentability of computer-implemented inventions as observed by the Boards of Appeal of the EPO;
• of the conceptual foundations of the EU Draft Directive on the patentability of computer-implemented inventions (which has failed only recently) wherein the EU intended to mark the borderline between patentable inventions and other kinds of non-patentable subject matter by utilising the concept of a "technical contribution"; and as well
• of the various attempts of the critics of the patent system to strangle patenting of computer-implemented inventions by promoting a "technicality test" on the basis of a definition of "technicallity" which was framed as narrow as possible.

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There are plenty of us in the s/w field who are convinced that the definition: "Anything that runs on a Turing machine should not be patentable", is sufficient to stop this nonsense.

Turing, Church and others showed that any 'script' capable of running on a Turing machine is completely equivalent to a mathematical algorithm. All computers, whether Intel based, RISC based, based on Post Office relays or using model trains shunting over a complicated track - any computer that is programmed, has a mathematical algorithm as the program and this cannot be patented (in any sensible environment anyway).

There are arguments that, at the margins (programmable arrays, for example) some difficulties may occur. I don't think these are insurmountable and they are at least confined to a very small area of s/w-h/w which affects far less people than the 'allow anything' patent system (allowing, for example, business patents on a system for charging for sex acts!!) that has arisen in the US.
 

# posted by X : 23 August, 2005 21:01

 

 

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There are plenty of us in the s/w field who are convinced that the definition: "Anything that runs on a Turing machine should not be patentable", is sufficient to stop this nonsense.

Turing, Church and others showed that any 'script' capable of running on a Turing machine is completely equivalent to a mathematical algorithm. All computers, whether Intel based, RISC based, based on Post Office relays or using model trains shunting over a complicated track - any computer that is programmed, has a mathematical algorithm as the program and this cannot be patented (in any sensible environment anyway).

There are arguments that, at the margins (programmable arrays, for example) some difficulties may occur. I don't think these are insurmountable and they are at least confined to a very small area of s/w-h/w which affects far less people than the 'allow anything' patent system (allowing, for example, business patents on a system for charging for sex acts!!) that has arisen in the US.
 

# posted by X : 23 August, 2005 21:03

 

 

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Inventing Something get a Patent


There is one kind of home business that is very different than any other: that of the inventor. If you’ve invented something, the chances are that you don’t have the resources to mass-produce the product yourself. You will need to send the plans and designs off to someone else to make in their factory. When you do this, though, how can you protect you idea against theft by them, or any one else who might see it? The answer is patent registration, which will give you the exclusive right to profit from it.

A patent gives you the exclusive right to profit from an invention for a set number of years. If anyone else tries to sell something that is covered by your patent, you’ll have the legal right to make them either pay you a license fee or stop. Each patent has a number. (You’ve probably seen this on any number of products. Patent pending means that a patent has been applied for but not yet granted.) Your invention must qualify before you get a patent. Not all inventions can be covered by patents. Check that your invention meets the following criteria.

Is it new and secret? You can’t have showed your invention publicly before you apply for a patent. Whatever you do, don’t take your invention around and demonstrate it before you think about patents. Is it non-obvious? Your invention must not be something that would be obvious to experience in your chosen industry. You cannot apply for a patent for a scientific or mathematical theory, or method; a work of art (books, plays, etc.-computer programs are included), a way of doing things or business method. Many of these are, instead covered by copyright. Patents are intended for actual physical inventions.

You need to apply at the agency called a patent office in your country. There are also patent agencies for larger areas, such as the European Patent Office or ultimately the World Intellectual Property Organization. It’s best to get a lawyer to guide you through this and make them sign a non-disclosure agreement. Depending on your country, applying for a patent can either be absurdly cheap or really expensive. You should note that if your patent application is refused at any stage, you won’t be getting your fees back. You can usually apply again, if you want to pay again.

If you have looked at the prices, you might be wondering: what’s the worst thing that could possible happen to me if I didn’t get a patent? The only answer to this is that anyone, to whom you happen to explain your idea or product, can steal it, and you won’t be able to do a thing about it. What’s more, once your invention does come on the market, success will attract many imitators. They’ll probably be able to produce your invention cheaper by sacrificing quality. A patent gives you protection in the marketplace for your home business against competitors.

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# posted by David Skul : 14 December, 2005 19:18

 

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Please read the Disclaimer & About This Website (Pflichtangaben gemäss TDG) section. Feel free to contact PA Axel H Horns via e-mail horns@ipjur.com. BEWARE: DO NOT SEND CONFIDENTIAL INFORMATION UNENCRYPTED VIA E-MAIL. USE OF ENCRYPTION SOFTWARE IS HIGHLY RECOMMENDED. PA AXEL H HORNS IS PROVIDING SUPPORT FOR ENCRYPTED E-MAIL MESSAGES USING PGP OR PGP COMPATIBLE FORMATS. THE PGP PUBLIC KEY FOR PA AXEL H HORNS IS AVAILABLE HERE. THE GnuPG PUBLIC KEY FOR PA AXEL H HORNS IS AVAILABLE HERE. 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:
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