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Tuesday, May 08, 2007

Patentability of CIIs: New Developments.

Thanks to the feedback of a reader of this Blog I got aware of two more pieces of case law concerning the patentability of computer-implemented inventions in the United Kingdom.

On April 30, 2007, Hearing Officer R.C. Kennell took a

Decision in view of

GB 0507837.3 which is directed to a system for evaluating tests such as achievement tests, psychological tests and clinical examinations [emphasis added by AHH]:

"[...] Third step

As I have explained above, I believe the third step of the test requires me to ask whether the contribution resides solely in excluded matter, in this case a computer program or a mathematical method. As is clear from paragraph 43 of Aerotel/Macrossan, I need to consider this as a matter of substance rather than the particular form of the claims.

Computer program

It seems to me that, irrespective of whether the invention is claimed as a test system, a method for controlling the test system or a test management server for the test system, the contribution of the invention is in substance a set of instructions for a networked computer system or a stand-alone personal computer, whose hardware in either case is entirely conventional, to select problems from a database, present them to a testee and estimate the ability of the testee in the light of his or her responses. (Claim 16 makes no mention of a computer as such, but it has not been argued, and I do not think it is realistic to suppose, that the invention could be carried out other than by means of a computer.) In my view these instructions constitute a program for a computer.

The contribution will of course fail the third step only if it relates solely to excluded matter. I accept that the invention has the advantage that less memory is required and that the processing is quicker as a result. However, notwithstanding Mr MacDougall's argument on the basis of Merrill Lynch, I do not think that the increase in processing speed is sufficient to take the invention outside of excluded matter. In my view the increase in processing speed arises solely because a program has been devised which requires the computer to do less work, not because of any improvement to the operation of the computer itself. The advantages of the invention would seem to me to be realised wholly in the program.

Mr MacDougall also argued that in view of his identification of the contribution (with which I agree), that contribution was in the field of test systems and methods and not computer programs or mathematical methods as such. I do not think this analysis is correct. It seems to me what has been devised is a computer program which is intended for use in a testing system or method, and that (to use the language of paragraph 73 of Aerotel/Macrossan) there is no contribution beyond that program up and running. I do not think that the use of the program in testing systems takes it outside the exclusion, and more than did the use of the program for creating company documents in the Macrossan appeal. [...]"

another case CH/2006/APP/0661 Mr. Christoper Floyd QC, sitting as a Deputy Judge of the Patents Court, on May 02, 2007, stated in the matter of UK patent application

GB 0308259 directed to systems, methods, and articles of manufacture consistent with the present invention allow a patron to play games from an off-site location via an online network [emphasis added by AHH]:

"[...] There is no dispute between the parties that gaming is a business and that therefore a 'gaming apparatus' is an apparatus for performing the specific business of gaming.

I take first the question of whether the contribution lies solely in a method of doing business. It seems to me that it does. [...] The applicant has contributed an apparatus for performing a new method of conducting business (gaming) transactions. The advantages relied on by [the applicant] [...] are advantages of the new method of doing business and so fall wholly within the exclusion. Althgough they can be described as 'technical', they do not count as such: they are not a relevant technical approach. They are merely the consequence of putting the new business method into effect. The hardware involved is standard and forms no part of the contribution. [...]"

Both decisions appear to be quite restrictive; they look as if they intend to introduce some novel arguing into the debate why certain innovative solutions should be regarded to be a non-patentable computer program as such or why there might exist different brands of technicality, one enabling patentability, the other not.

The European Patent Office has published the

Proceedings of the 13th Symposium of European Patent Judges (Link thanks to Mr. Joff Wild's

Blog of the

IAM Magazine). Dr. Klaus-J. Melullis is Presiding Judge ("Vorsitzender Richter") of the 10th Circuit of the German Federal Court of Justice (FCJ), the very Circuit which is competent on patent matters. He has given a speech on the patentability of computer-implemented inventions as currently seen by FCJ [emphasis added by AHH]:

"[...] The patentability of software or, in the broader wording of the EPC, 'programs for computers', has been the subject of prolonged and intensive discussion among patent law professionals and interested sections of the public. This debate has also been fuelled by the efforts of some, mainly larger, companies in the field to obtain protection for software - although the Convention expressly excludes the patenting of computer programs as such - by relativising the rules, even if they cannot be abolished. This trend has been reflected, unfortunately, in the legal discussion. The relevant provision of the Convention is not a model of clarity, and legal sophistry has been employed with some success to obscure its meaning still further, in a way that in effect colludes with the efforts to extend patenting to software. [...]"

Hence, it appears as if Mr. Mellulis is sceptical towards any inclusive practice of patenting computer-implemented inventions. He further argues:

"[...] In several decisions over the past few years, the FCJ has sought to address this problem by looking again at the wording and purpose of the legal provision. These decisions have brought the developments in Germany to a conclusion, at least for the time being, which, unlike the efforts of, for example, the European Commission, limits the relevant industrial property rights to the area which - to us - appears legitimate.

The FCJ proceeds from the assumption that the prohibition on the patenting of software 'as such' means what the law says. Software cannot be protected merely because it achieves, inter alia, technical effects when used in conjunction with a technical device. Conversely, the prohibition means that, despite the technical effects normally associated with the use of software, these effects alone do not imply that the software contains a teaching for which patent law offers protection - or, more simply, software is not patentable merely by virtue of being used in conjunction with a general-purpose computer.

This broadly corresponds to the earlier approach of the European Patent Office, which held, albeit on the basis of different thinking, that patentability required a technical effect beyond the normal use of a standard computer in conjunction with a program. The main difference in approach consists in the fact that the EPO boards of appeal resorted to the term 'technical' for the purpose of assessing software: the FCJ found this unhelpful, firstly because, precisely when assessing software as such, the program's interdependence with the technical device makes technical content hard to deny, so that the Court had to fall back on the expedient of the 'not so technical teaching'. In particular, resorting to the term 'technical' was unhelpful because it shifted the focus of discussion from 'programs as such', a concept which was already unclear, to a further, equally ambiguous term, the meaning of which was inherently evolving and, moreover, would become further obscured as a result of the necessary distinction from subject-matter of a 'not so technical' nature. [...]"

This was what the failed EU Draft Directive on the patentability of computer-implemented inventions originally had attempted to prevent: An increasing movement of national Courts away from the normative practice of the Boards of Appeal of the European Patent Office as can be seen in the UK and German contributions as mentioned above. I find it difficult to perceive the German way as more clear compared to the EPO way, in particular because of Mr. Mellulis points out the problems with the concept of "technicality" related to the EPO approach but then heavily relies on the same concepts:

"[...] The FCJ has not advanced beyond its early decision on the patentability of, for example, an anti-blocking device formed from a braking device and the control thereof by means of software; and it sees no reason - considering the requirement for a technical teaching directed to the solution of a specific technical problem, and the intention of the legal provision - to deviate from its established position. With a system in which software serves to control a technical device with a technical effect, the software is not protected as such, but only as part of that system, although a sufficient basis for novelty and inventive step can be found in a novel concept of control realised especially in the software, if all the parts interact. [...]"

Some circuits of the FCJ are quite well known for upkeeping a tradition of reluctance to publicly acknowledge that a prior view on a certain legal question has been abolished by a newer decision. In particular, I am not so sure as to whether or not the Court indeed hasn't moved its position on patentability of computer-implemented inventions over the past two decades or so. I would guess that around the year 2000 the FCJ was perceivably more generous in granting patents on subject-matters which, as it looks, today would be rejected.

Taken together the developments in the UK and Germany in a European Union without a sectoral Directive governing the patentability of computer-implemented inventions, it perhaps might be true that nobody should be very much surprised if, on the national level, it will become more and more difficult to obtain or maintain patent protection in this field. The changed Zeitgeist eventually appears to have reached the Courts and might effectively promote also from there the political agenda of the critics of the IP system.

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