AIPPI Study Question - Patentability of computer implemented inventions

Transcription

1 Study Question Submission date: June 1, 2017 Sarah MATHESON, Reporter General Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter General Patentability of computer implemented inventions Responsible Reporter: Ralph NACK National/Regional Group Contributors name(s) contact United Kingdom Justin WATTS, Christopher DE MAUNY, Peter FINNIE, Ben HUSBAND, Mike JENNINGS, Julian POTTER, Calum SMYTH, Robyn TRIGG I. Current law and practice 1 Does your current law contain any statutory provisions which specifically apply only to CII?, see the discussion in the answer to Question 2 concerning excluded subject matter as set out in s 1(2) Patents Act 1977 ( PA 1977 ). 2 Please briefly describe the general patentability requirements in the written statute based law of your jurisdiction which are specifically relevant for the examination of the patentability of CII. Section 1 PA 1977 sets out the general patentability requirements in the UK. Section 1(1) PA 1977 stipulates that a patent may be granted for an invention that is: new (s 1(1)(a) PA 1977); involves an inventive step (s 1(1)(b) PA 1977); capable of industrial application (s 1(1)(c) PA 1977); and not excluded under subdivs (2), (3) or div 4A. Page 1 of 20

2 For the purposes of the PA 1977, invention is taken to mean that which is specified in a claim (s 125(1) PA 1977). The wording set out in s 1(1) PA 1977 relating to general patentability is similar but not identical to the equivalent provisions in the European Patent Convention ( EPC ). To ensure conformity with the EPC, s 130(7) PA 1977 says that the divs of the PA 1977 are so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention. Novelty s 2 PA 1977 Section 2 PA 1977 deals with the general patentability requirement of novelty. Section 2(1) PA 1977 says that an invention will be taken to be novel if it does not form part of the state of the art. Further, the remainder of s 2 PA 1977 sets out what the state of the art will be deemed to be for these purposes broadly, the state of the art will be all matter which was made available to the public before the priority date (s 2(2) PA 1977) and, only for the purpose of assessing novelty, matter contained in certain patent applications which have an earlier priority date (s 2(3) PA 1977). Inventive step s 3 PA 1977 Section 3 PA 1977 states that an invention will involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of div 2(2) above (and disregarding div 2(3) above). Industrial application s 4 PA 1977 Subject to the exclusion set out in s 4(2) PA 1977, s 4(1) PA 1977 says that an invention will be capable of industrial application if it can be made or used in any kind of industry. Section 4(2) PA 1977 says that an invention for a method of treatment for human or animals by surgery or therapy or of diagnosis practiced on humans or animals is not capable of industrial application. Excluded subject matter s 1(2) PA 1977 Section 1(2) PA 1977 sets out a non-exhaustive list of excluded inventions. Section 1(2)(c) PA 1977 is the most relevant to CII and states that a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer are not considered inventions for the purposes of the PA However, this exclusion is narrowed in same provision where it says that an invention falling into subdivs (a) to (d) of s 1(2) are only excluded from patentability to the extent that a patent or application for a patent relates to that thing as such. 3 Under the case law or judicial or administrative practice in your jurisdiction, are there rules which specifically apply only to CII? If yes, please explain. Please see discussion of the relevant case law and the UK Intellectual Property Office ( UK IPO ) practice dealing with CII in the answer to Question 4. 4 Please briefly describe the general patentability requirements under the case law or judicial or administrative practice of your jurisdiction which are specifically relevant for the examination of the patentability of CII. [1]In brief, the most important guidance is contained in the following five signposts, which the court has emphasised are simply guidance and not determinative. These are whether: 1. The claimed technical effect has a technical effect on a process which is carried on outside the computer; 2. The claimed technical effect operates at the level of the architecture of the computer, that is, whether the effect is produced irrespective of the data being processed or the applications being run; 3. The claimed technical effect results in the computer being made to operate in a new way; 4. The program makes the computer a better computer in the sense that it runs more efficiently and effectively (this was a broadening by Page 2 of 20

3 the Court of Appeal in HTC Europe Co Ltd v Apple Inc.[1] of the original Re AT&T Knowledge Ventures[2] signpost which asked whether there was an increase in the speed or reliability of the computer); and 5. The perceived problem is overcome by the claimed invention as opposed to merely being circumvented. We explain these and the law further below. Issues of patentability of CII may be raised at any stage of the patent application. The UK IPO may determine that the subject matter of a patent application is not patentable and in such circumstances will refuse the application. Such a determination by the examiner will be made in accordance with the case law guidance set out below. If an application is refused, the applicant may amend the claims to comply with the patentability requirements. Any such refusal of the examiner to grant a CII related patent on grounds of lack of patentability may be appealed to the High Court. The main body of case law in the UK specifically relevant for the examination of CII relates to the excluded subject matter provisions set out in general patentability requirements in s 1(1) and (2) PA A brief summary of the most relevant case law is set out below.[3] There is a long line of case law in England and Wales which deals with the computer program exclusion under s 1(2)(c) PA In the seminal case of Aerotel Ltd v Telco Holdings Ltd[3] ( Aerotel / Macrossan ), the Court of Appeal restated the test for patentable subject matter in England and Wales. In doing so, the Court of Appeal considered previous English and European Patent Office ( EPO ) case law. It summarised at [26] three different approaches for assessing patentability of CII that can be seen in the various case law, as follows: 1. The contribution approach this asks whether the inventive step lies in the contribution of the excluded matter. If the answer is yes, then the excluded inventions provisions apply. This approach was expressly rejected by the Court of Appeal in Merrill Lynch Inc. s Application[4] (after it had been endorsed by the lower court in the same case [5]). 2. The technical effect approach this asks whether the invention as defined in the claim makes a technical contribution to the known art. If the answer is no, then the excluded invention provisions apply. The technical effect approach was first introduced by the EPO in the case of VICOM[6] and subsequently approved by the Court of Appeal in Merrill Lynch Inc s Application[7]. This approach was then adopted by the Court of Appeal in Aerotel / Macrossan[8] with an additional rider. The rider is that novel or inventive purely excluded matter does not count as a technical contribution. 3. The any hardware approach this asks whether the claim involves the use of or is related to a physical piece of hardware. If the answer is no, then the excluded invention provisions apply. This approach was explicitly rejected by the Court of Appeal in Gale s Patent Application[9]. The any hardware approach originated from EPO case law. It was initially cited in Pensions Benefit System Partnership[10] and was further developed in Hitachi[11] and Microsoft[12]. As such, the position the UK has adopted is the technical effect approach with the additional rider as noted above. In Aerotel / Macrossan[13], the Court of Appeal at [40] also set out a four step test to determine if the claimed invention is patentable under the technical effect plus rider approach: 1. Properly construe the claim; 2. Identify the actual contribution; 3. Ask whether the identified contribution falls solely within the excluded subject matter; and 4. Check whether the actual or alleged contribution is actually technical in nature. However, little guidance was given about how to carry out the above four stage test. In the later case of Symbian Ltd v Comptroller General of Patents, Designs and Trademarks [14], the Court of Appeal noted the conflict between the technical effect plus rider approach settled on by the Court of Appeal in Aerotel / Macrossan[15] and the approach taken by the EPO. In fact, in this case, the UK IPO had refused Symbian s application as being excluded as a computer program, whereas the EPO had granted the corresponding European application. The Court of Appeal confirmed the decision of Patten J in the High Court [16] where it held that the steps set out in Aerotel / Macrossan[17] must include, at some stage, a consideration of the technical contribution required for patentability and thus the fourth step could not be considered an optional step. The Court of Appeal said that it was permissible to combine the third and fourth Aerotel / Macrossan[18] steps, thereby making technical effect part of the examination of whether the claimed invention falls solely within the excluded inventions provisions. The Court of Appeal declined to follow the EPO case law which said that any use of a computer took the invention out of the excluded inventions provisions. The Court, when considering inventive step, excluded all Page 3 of 20

4 non-technical aspects of the claim and ruled that the claimed invention did make a technical contribution and thus was not precluded from registration. At [56] Neuberger LJ said that credit must be given to the practical reality of what is achieved by the program [19]. The Court went on to accept that there are two types of technical advantage in relation to computer programs which may suffice for patentability: 1. Where the program solves a problem within the computer itself; or 2. Where the effect of the programme is not merely within the computer but where the beneficial consequences feed into other devices. Further, in Re AT&T Knowledge Ventures[20] the High Court reviewed EPO and UK case law and set out five signposts as an aid for determining whether a computer program is patentable specifically directed to the technical contribution part of the Aerotel / Macrossan test. These were approved, with one qualification to the fourth signpost, by the Court of Appeal in HTC Europe Co Ltd v Apple Inc.[21]. The signposts are set out at the head of this question. The Court of Appeal in HTC Europe Co Ltd v Apple Inc.[22] reviewed the UK case law to date regarding CII and held that the Aerotel / Macrossan[23] approach should not be abandoned but that it was not strictly necessary to follow the four stage approach stringently. It also confirmed that the relevant approach to patentability of CII as laid out in Aerotel / Macrossan[24] is correct; the Court must consider whether the invention made a technical contribution to the known art, with the rider that novel or inventive purely excluded subject matter does not count as a technical contribution [25]. The Court of Appeal also noted that the computer program exclusion provision in s 1(2)(c) PA 1977 works cumulatively with the other exclusions contained in s 1(2) PA Thus a computer program incorporating a mathematical method [26] or a computer program carrying out a method of business [27] are not patentable. The Court said it is helpful to ask: what does the invention contribute to the art as a matter of practical reality over and above the fact that it relates to a computer program? If the only contribution is in excluded matter, then the claimed invention is not patentable [28]. At first instance in HTC Europe Co Ltd v Apple Inc.[29], Floyd J (as he then was) at [15] held (and was not challenged on appeal) that the appropriate basis for determining technical contribution is any item of prior art admissible for novelty and not merely common general knowledge ( CGK ). It is worth noting that the UK IPO is currently applying the five signposts as set out above [30]. In Lantana Ltd v Comptroller-General of Patents, Designs and Trademarks [31] the approach taken by the Court of Appeal seemed to veer closer to the EPO approach from which the Court of Appeal has previously distanced itself. Arden LJ suggested that the UK and EPO approaches to determining patentability of CIIs might amount to the same thing, however, because each test applies its steps in a different order, EPO case law is of limited additional assistance in England [32] this is partly due to the fact that the EPO structures its approach to obviousness differently to the UK [33]. 1. a, b [2013] R.P.C ^ [2009] EWHC 343 (Pat) 3. a, b [2007] 1 All E.R ^ [1989] R.P.C ^ [1988] R.P.C ^ VICOM / Computer-related invention (T208.84) 7. ^ See Fn 4 8. ^ See Fn 3 Page 4 of 20

5 9. ^ [1991] R.P.C ^ Pension Benefit Systems Partnership / Controlling pension benefit systems (T931/95) 11. ^ Hitachi / Auction method (T258/03) 12. ^ Microsoft / Clipboard formats (T424/03) 13. ^ See Fn ^ [2009] R.P.C ^ See Fn ^ [2008] EWHC 518 (Pat) 17. ^ See Fn ^ See Fn ^ See Fn ^ See Fn 2 at [50] 21. ^ See Fn ^ See Fn 1 at [44] 23. ^ See Fn ^ See Fn ^ See Fn 1 at [44] 26. ^ Gale's Patent Application, see Fn ^ Aerotel Ltd v Telco Holdings Ltd [2007] 1 All E.R ^ See Fn 21 at [48] 29. ^ [2012] EWHC 1789 (Pat) 30. ^ UK IPO, Manual of Patent Practice, paragraph ^ [2015] R.P.C ^ Ibid, at [52] 33. ^ The problem / solution approach versus thepozzoli approach 5.a Exclusion of non-patentable subject matter per se. Do the statutory provisions, case law or judicial or administrative practice (hereinafter collectively referred to as Law / Practice) in your jurisdiction exclude any particular subject matter relating to CII from patentability per se? In this context, per se means that the non-patentable subject matter is identified without any implicit or explicit examination of the contribution to the state of the art the claimed CII makes. If yes, please answer questions 5.b-5.e, if no, please go to question 6.a No Page 5 of 20

6 No computer programs are only excluded as such per s 1(2) PA 1977 and therefore they are not excluded if they go beyond this. The Court of Appeal in HTC Europe Co Ltd v Apple Inc.[1] makes it clear that the court must consider the technical contribution made by the claimed invention to the known art. However, there is a rider that novel or inventive purely excluded subject matter does not count as a technical contribution. The relevant question is what is contributed to the art in reality over and above the fact that it relates to a computer program. If the only contribution is in excluded matter then it is not patentable [2]. 34. ^ See Fn 1 at [44] 35. ^ See Fn 1 at [48] 5.b Please describe the subject matter excluded from patentability per se and explain in detail how it is identified in practice 5.c If there is any subject matter identified in a patent claim relating to CII that is excluded from patentability per se, is it possible to overcome a rejection of the patent claim by adding other subject matter to the claim? If yes, please answer questions 5.d-5.e, if no, please go to question 6.a 5.d Does the other subject matter need to have a certain quality, e.g. does it need to be inventive? 5.e Can you describe the areas of human endeavour the other subject matter needs to relate to? 6.a Requirement of a contribution in a field of technology. Does the examination of the patentability of CII in your jurisdiction implicitly or explicitly involve an examination of the contribution the claimed CII makes to the state of the art (such examination may be part of a general patentability test or part of the novelty and inventive step/non-obviousness test)? If yes, please answer questions 6.b-6.d, if no, please go to question 7 the Court of Appeal in HTC Europe Co Ltd v Apple Inc.[1] emphasised the sentiments contained in the English case law before it that the Courts must consider whether the claimed invention makes a technical contribution to the known art. The assessment of whether a technical contribution has been made is carried out as part of the general patentability test and helps determine whether the claimed invention is excluded from patentability by virtue of the exclusion provision set out in s 1(2)(c) PA ^ See Fn 1 at [44] Page 6 of 20

7 6.b Does this test implicitly or explicitly involve excluding contributions from areas of human endeavour which are not deemed to be sources of patentable inventions? In other words, does patentability of CII implicitly or explicitly require a contribution from areas of human endeavour which are deemed to be sources of patentable inventions (e.g. engineering, natural sciences)? If yes, please explain. The computer program exclusion set out in s 1(2)(c) PA 1977 works cumulatively with the other excluded matter contained in s 1(2) PA As such, a computer program incorporating a mathematical method [1] or a computer program carrying out a method of business[2] is not patentable. The Court of Appeal in HTC Europe Co Ltd v Apple Inc.[3] said it is helpful to ask: what does the invention contribute to the art as a matter of practical reality over and above the fact that it relates to a computer program? If the only contribution is in excluded matter, then the claimed invention is not patentable. However, one does not necessarily have to include contributions from other areas of human endeavour which are deemed to be different sources of patentable inventions in order to obtain a patent for a CII. In Symbian[4], the Court accepted that there are two types of technical contribution in relation to computer programs which may suffice for patentability: 1. Where the program solves a problem within the computer itself; or 2. Where the effect of the program is not merely within the computer but where the beneficial consequences feed into other devices. 37. ^ Gale spatent Application, see Fn ^ Aerotel Ltd v Telco Holdings Ltd, see Fn ^ See Fn 1 at [48] 40. ^ See Fn 14 6.c Does this test also implicitly or explicitly require that the relevant contribution the CII makes to the state of the art qualifies as inventive/non-obvious? This additional test may be integrated into the general inventive step / non-obviousness examination, or may be a stand-alone test. If yes, please explain. The test for whether the relevant contribution the CII makes to the state of the art is technical determines whether the subject matter is excluded by virtue of the exclusion at s 1(2)(c) PA The test of inventive step / nonobviousness is separately carried out. In Lantana Ltd v Comptroller-General of Patents, Designs and Trademarks [1] the Court of Appeal reiterated that the requirements of s 1(1) and s 1(2) PA 1977 are separate and that claims that are novel and involve an inventive step may still be excluded subject matter under s 1(2) PA At [19] Arden LJ held: I see no mandate in div 1 of the PA 77 for holding that it is sufficient that there is an inventive step. It is deliberate legislative policy to exclude certain matters from patentability even if they would otherwise be patentable. This was reaffirmed by Kitchin LJ at [70], who stated that [t] here is no inconsistency between an acceptance that an invention [...] is new and inventive and a finding that the contribution it makes falls solely within excluded subject matter. Kitchin LJ continued by stating that the former requires [...] an assessment of whether it forms part of the state of the art or is merely an obvious step away from it, while exclusion relates to assessing whether the contribution falls solely within excluded categories in s 1(2) PA ^ See Fn 31 Page 7 of 20

8 6.d Is there an implicit or explicit consensus in your jurisdiction as to the areas of human endeavour which are accepted as sources of patentable CII? If yes, are these areas of human endeavour defined, and if so how? As the computer program exclusion provision in s 1(2)(c) PA 1977 works cumulatively with the other excluded inventions in s 1(2) PA 1977, it is clear that if the claimed CII s only technical contribution lies in a field of excluded invention then it will not be patentable [1]. There is no positive consensus as to the areas of human endeavour which are accepted as sources of patentable CII. Each case is decided on its facts. Provided that the claimed invention does not relate to computer programs as such and there is a technical contribution to the known art in a non-excluded area of invention, or the program solves a problem within the computer itself or the effect of the program is not just within the computer but also has beneficial consequences which feed into other devices then the CII is potentially patentable provided the other general patentability requirements (novelty, inventive step and industrial applicability) are met. 42. ^ HTC Europe Co Ltd v Apple Inc. see Fn 1 7 Does the Law / Practice in your jurisdiction contain any specific claim drafting or other formal requirements which are applicable to CII, i.e. which deviate from the Law / Practice applicable to inventions which are not CII? If yes, please explain. There are no specific claim drafting or other formal requirements which are solely applicable to CII. However, it was decided in Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks [1] that claims directly to computer program products are allowable. This is consistent with the approach taken by the EPO. 43. ^ [2008] EWHC 85 8 Does the Law / Practice in your jurisdiction contain any specific requirements as to sufficiency of disclosure and/or enablement which are applicable to CII, i.e. which deviate from the Law / Practice applicable to inventions which are not CII? If yes, please explain. 9 Do courts and administrative bodies in your jurisdiction apply the Law / Practice for patentability of CII in your jurisdiction in a harmonized way? If not, please explain. No In summary, our answer to this question is no, differences remain, but we are closer to consistency in the UK Courts and EPO than was the case in 2006 (when AIPPI previously reviewed the position). UK patent protection can be obtained via the EPO or the UK IPO, before being enforced and having validity tested in the UK Courts. There are some differences between the two routes to UK protection. Page 8 of 20

9 A number of UK Court decisions have provided helpful guidance on how to apply the test for patentability, and the UK IPO carries out case law reviews and ongoing professional development specifically to help its examiners apply the test that has been set out in UK case law. UK IPO examiners consider argumentation provided by UK patent attorneys in the context of this case law, and the result is a good level of predictability of outcomes at the UK IPO and a good level of harmonization between the UK IPO and UK Courts. The EPO also provides ongoing training so that its examiners are familiar with EPO Board of Appeal decisions. However, the EPO approaches its assessment of patentability of CIIs in a different way from the UK IPO and UK Courts, and so we cannot state that the courts and administrative bodies apply the law in a harmonized way. At the EPO As explained in discussion point 16) of the introduction to this study, most claims that include features realised by means of a computer program are deemed to be an invention and not excluded under Article 52(2) EPC, specifically because drafting attorneys ensure that the claims recite technical features such as physical hardware or computer-implemented interactions with hardware. However, these technical features must satisfy the inventive step requirement of Article 56 EPC; the claimed solution must involve a further technical effect for patentability. So there is an assessment of the problem solved and the invention s technical features and effects when determining which features contribute to an inventive step. At the UK IPO and UK Courts The UK Courts apply a 4 step test (as originally set out in Aerotel / Macrossan) as discussed in the answer to Question 4. The UK test is used to assess whether the invention makes a technical contribution to the art, with the rider that new and inventive excluded matter does not count as a technical contribution. If a claimed CII fails the 4 part test, the application will be refused (or a granted claim will be deemed invalid) based on s 1(2) PA In practice, innovations that are implemented by means of software or unique algorithms are not excluded provided there is a technical contribution. Actual lines of code (the expression of the idea source code) remain unpatentable but copyright protection is available for code. Likewise for business methods, implementation by means of an apparatus or technical process may avoid the exclusion, if there is that technical contribution. A new adminstrative method of organising a pension scheme would most likely fall foul of the technical contribution test because they are entirely non-technical. A method or process claiming the mere automation of a well-known task using a computing device is also considered to lack technical contribution. The technical contribution has to be over and above the typical behaviour of general purpose computers. The different tests require patent practitioners to set out their arguments differently for the UK IPO / UK Courts compared with the EPO. Some practitioners dislike the way the UK test for inherent patentability can involve consideration of prior art (which may not have been known when the application was filed) to decide whether there is even an invention. Some suggest that the EPO problem-solution test under Article 56 EPC is easier to apply than the UK test and that EPO outcomes are easier to predict. The approaches are certainly different and the lack of a single harmonized approach is undesirable. However, the practical differences between the different approaches has reduced significantly in recent years as the UK Courts have provided guidance on how to apply the UK test (for example taking account of the problem solved, how the invention works and its advantages when identifying the contribution) and show willingness to consider EPO Board of Appeal decisions. Some practitioners feel that when analysing claims, more often than not, examiners appear to be too quick to dismiss an invention to be Page 9 of 20

10 non-technical, i.e. a business method or administrative invention, from the outset without deeper analysis being carried out. Practitioners would like to see examiners exercise more willingness to identify technical elements of a claim when analysing CIIs. It should only be in rare cases that the different approaches result in substantially different outcomes. Although the UK IPO / UK Courts will refer to the exclusions from patentability more often than the EPO, and the EPO will instead refer to inventive step, the fundamental outcome (a decision to accept or reject claims) should be the same in most cases. Therefore, as stated in our summary at the top of this question, our answer to the specific question is no because of the different approaches, but we are closer to consistency of outcomes in the UK Courts and EPO than in 2006 (when AIPPI previously reviewed the position). II. Policy considerations and proposals for improvements of your current Law/Practice 10 Is the current Law/Practice in your jurisdiction regarding the patentability of CII considered by users of the patent system and practitioners to be understandable and workable? If not, please explain. No In brief, although workable, things could be better. The scope for interpretation provided in the test can lead to examination based on general reference to a high level application of the claimed subject matter. This may result in an allegation of non-technical subject matter and lead to refusal of the application, and in some cases a refusal to even search the application. Such examination is wasteful of applicants time and money and, even though may successfully be argued against, results in it being very difficult to advise businesses confidently on the likelihood of success of an application involving a CII in many instances. We explain in detail in what follows. The current Law and Practice in the UK could be more readily understandable and hence workable. An improvement in the predictability of outcomes for patent applications would be beneficial. This is a qualified no in answer to the question. Without a recent consultation it is not possible to say with confidence whether users and practitioners currently consider the law and practice regarding the patentability of CIIs to be understandable or workable, or indeed to say anything of the views of users and practitioners. The most recent consultations were around in advance of the draft Directive on the Patentability of Computer Implemented Inventions. It is fair to say that UK industry was generally favourably disposed towards maintaining the scope of patentability of CIIs as illustrated by the consultation response from the Trade Mark, Patent and Designs Federation ( TMPDF )[1] and Federation of the Electronics Industry ( FEI )[2]and yet concerned that the confused state of the law regarding software inventions in Europe was unhelpful and SMEs were particularly vulnerable. The response from the FEI observed that the EPO exclusion of computer programs from patentability engendered lack of clarity and that small companies tended to suffer from the confusion caused by such lack of clarity. The Directive on the Patentability CIIs was voted down convincingly. The requirement of Article 27 of TRIPS that patents shall be available in all fields of technology does little to improve clarity so far as UK law is concerned. The current UK test is based on the steps set down by Sir Robin Jacob in Aerotel / Macrossan and as applied in the Symbian decision. The UK IPO has issued a number Practice Notices in relation to the patentability of computer programs [3], [4], [5]. The earliest being in relation to the Aerotel / Macrossan decision, stated by the UK IPO to be a definitive statement of how the law on patentable subject matter is to be applied in the UK, and the later ones updating that fundamental Practice Note in light of more recent decisions. Page 10 of 20

11 The relevant steps are as set out in the answer to Question 4. The first step is likely to be nothing more than a statement of the obvious but unfortunately raises the question of what is meant by the term properly. Is this something different from the usual construction of a claim? It is an extra term beyond the requirement to construe a claim and therefore adds an element of uncertainty to the test. The second step also includes what may be regarded as unnecessary language in the use of actual when determining the contribution. The Court said that what is to be determined as the contribution is what the inventor has really added to the stock of human knowledge. The use of the terms actual in the test and really in the decision introduce a lack of clarity into the test and decision since it must be determined what is meant by the use of those terms over what the test and decision might say without their use. The third step comprises language which on its face seems clear. Unfortunately, the fourth step suggests that having followed the first three steps one may not have satisfactorily analysed the subject matter and contribution correctly and urges a general check as to the nature of the contribution. One wonders why step three was included. It would have been more straightforward to go from step two to step four directly. In short, the test appears to be whether or not the claimed subject matter makes a technical contribution. The various steps and extra language seem not to serve clarity but on the contrary provide opportunity for argument and obfuscation which serves to reduce the clarity of the test. Moreover, in examination in the UK IPO the final step is too often treated as an invitation to look to the overall application or context in which the invention is used and if this is a business, financial or other abstract field consign the invention or integer under consideration to the wastelands of non-technical subject matter from whence it is extremely difficult to return. Once a thing has been deemed non-technical it is almost impossible to convince an examiner that it is technical due to the subjective nature of the fourth step. Consequently, as a matter of language the test might have been expressed in a manner less open to argument on its construction and therefore expressed more clearly than currently; and comprising a less subjective test. So, as far as the law and practice being understandable it would be fair to say that it could be more understandable than currently expressed. Guidelines by way of signposts [6] have been provided by the Patents Court to assist in identifying a technical contribution but the very fact that such signposts were deemed necessary is an admission by the Patents Court that the test set out in Aerotel / Macrossan is inadequate. Thus, as stated at the top of this question, although workable in so far as the UK IPO examines patent applications comprising CIIs and practitioners file and prosecute them, things could be better. The scope for interpretation provided in the test can lead to examination based on general reference to a high level application of the claimed subject matter resulting in an allegation of nontechnical subject matter leading to refusal of the application and in some cases a refusal to even search the application. Such examination is wasteful of applicant s time and money and, even though may successfully be argued against, result in it being very difficult to advise businesses confidently on the likelihood of success of an application involving a CII in many instances. 44. ^ ^ ^ ^ htm 48. ^ ^ AT&T Knowledge Ventures and anr v Comptroller General of Patents, see Fn 2 11 Does the current Law/Practice in your jurisdiction regarding patentability of CII provide appropriate outcomes, in particular from an economic perspective? If not, please explain. No Page 11 of 20

12 No. The responses to the CII Directive consultation referred to in the answer to Question 10) indicated that the industries represented in the responses considered there was economic benefit through patent protection of CIIs where there was a technical effect. Understanding the extent of what may be considered a technical effect is key to an assessment and predictability of outcomes. Given the importance of the so-called digital economy and the establishment of what is sometimes referred to as the fourth industrial revolution (tech 4.0) considering outcomes from an economic perspective is extremely important. The Symbian decision found that a technical effect may be achieved by making a better computer. In that case it was a computer program that reduced the likelihood of dynamic link library (dll) contention and hence created a more robust computer. The program was considered to improve the performance of the computer and so was patentable as it would be if it improved the performance of any other machine. However, the test, if any is derivable from Symbian, is that the computer itself must operate better. The scope of what is meant by a better operating computer is critical to the extent of patent protection that will be afforded to inventions in the digital economy. It is not clear that the current law and practice will apply to inventions arising from the digital economy and therefore they may not benefit from patent protection which may inhibit and frustrate investment and development of the technology. This issue with determining what is a better computer is illustrated by the Lantana[1] case in which an invention relating to out of band communication, i.e. use of with attached documents, of documents between two computers to inhibit hacking attacks by not having the two computers linked to each other via the internet, was considered not patentable subject matter because the increase in reliability of the data retrieval was due to the use of rather than any other communication method. Neither of the two computers nor the network were considered intrinsically more reliable themselves. The contribution was found not to solve the identified problems but circumvent them and that the claim was to computer software running on conventional computers connected by a conventional network. The Court of Appeal agreed finding that the invention was excluded subject matter, having no relevant effect. There did not appear to be any appreciation that the computers were new machines (due to their being configured by a program) and doing something technical, i.e. communicating over a technological infrastructure in a different way achieved by virtue of suitably configuring machines (computers) from that which would be conventional to protect the machines from being hacked. The Lantana invention may arguably be regarded as technical yet the tests, such as they are, resulted in it being found not to comprise patentable subject matter. If the UK is to provide appropriate incentives for investing in innovation in the digital economy it is reasonable for those incentives to include the opportunity for patent protection which at present is not as fulsome as it could or arguably should be. There is another adverse economic consequence of the UK approach to CIIs and difference between it and the approach in foreign jurisdictions. The UK IPO approach may disincentivise UK businesses from filing patent applications for CII at the UK IPO (or indeed the EPO) and this is supported by anecdote. If a business does not file a UK (or EP) patent application then it is extremely unlikely a business will file a patent application in a foreign jurisdiction even though those foreign jurisdictions may be more liberal in the patenting of CIIs. Conversely, a business resident in a foreign jurisdiction with a more liberal approach to patenting CIIs than the UK is more likely to file a domestic patent application than a UK business and then use international conventions to file a patent application in the UK, or EPO, which may result in an effective patent right in the UK. Some of those patent applications are likely to succeed and consequently foreign businesses may obtain patent protection in the UK that UK businesses do not apply for. Thus, UK businesses are at a competitive disadvantage in the UK vis a vis such foreign businesses and also in the foreign businesses domestic jurisdictions. 50. ^ See Fn In your jurisdiction, is copyright protection of CII regarded as sufficient from an economic standpoint? Please state why in either case. No No copyright does not protect the underlying invention. Patent protection is considered to be more appropriate (see the answer to Question Page 12 of 20

13 13 below). 13 Alternatively, is there an explicit or implicit consensus that patent protection of CII is required to ensure sufficient reward on investments made into the development of CII? If yes, please explain.. Anecdotal evidence is that at least some investors in the digital economy expect patents to be obtained by their investee businesses. 14 In your jurisdiction, is there an implicit or explicit consensus that availability of patent protection should be limited to contributions from certain areas of human endeavour, excluding contributions from all other areas of human endeavour, no matter how advanced these contributions? As set out in the answer to Question 2, in the UK a number of areas of human endeavour are explicitly excluded from patent protection by the PA Such areas may be divided into three kinds: first by the specification of certain subject matter which are considered not suitable for protection by a patent at all; second by the specification of certain subject matter for which public policy dictates should not be patented for other reasons; and third by the exclusion of inventions applicable to reprehensible uses. It may be said that there has been for many years a general consensus that certain areas of human endeavour should be excluded, but those exclusions have varied, have attracted controversy, and lack a coherent explanation. However, controversy concerning the exclusion of one particular area of human endeavour does not appear to undermine a general acceptance that patent protection should not be available in all areas. We explain further below. Excluded subject matter The various excluded matter arise from the UK s implementation of the EPC. However, the exclusion of subject matter from patent protection has a longer history in UK law. Under the Patents Act 1949, which preceded the PA 1977 and was the last purely-domestic patent statute in the UK, patents were available for any invention that fulfilled the relevant criteria. Invention was defined in s 101(1): invention means any manner of new manufacture and any new method or process of testing applicable to the improvement or control of manufacture. A patent grated that was not for an invention could be revoked. There was thus an implicit exclusion from patent protection for any subject matter that could not be fitted within this definition of invention. In the approximately thirty years before the Patents Act 1949 was replaced by the PA 1977, several categories of subject matter were recognised as falling outside the definition of invention, including[1]: Mere schemes and plans, such as a method for navigating by navigational buoys; Claims where the novelty or utility was not physical, such as a recording of sound for a particular purpose; Mere arrangement of print or pictorial matter; New use of a known material; and Methods of treating or preventing human disease. Applications for computer programs were refused as being a mere scheme or plan but claims to computers programmed in a certain way were accepted[2]. The distinction drawn between the two "appears to be a fine one, but it is one which the court has been willing and able to draw in practice" [3]. The distinction was grounded in the requirement of invention under the Patents Act It was explained by a judge of the Patents Court in one case in this way: Page 13 of 20

14 The system is programmed so that it must in every case operate in accordance with the method claimed whenever and by whomsoever it is put into operation. The programme in fact constrains the apparatus to function in a particular way as long as the apparatus embodies that programme. In [an earlier case about a non-computer programme scheme] on the other hand it can be said that the method was no more than information or instructions which could be given to a pilot on which he might, or might not, act [4] Thus the Court appears to have relied on the fact that the machine operating the program was constrained to follow it and thus the fact that its operation depended on a program became irrelevant: one could merely consider the machine for assessing whether it comprised an invention. In 1977, the UK Parliament passed the PA 1977 inter alia to give effect to Article 52(2) EPC which was signed in Section 1 PA 1977 sets out several requirements for patent protection, including that it is not excluded by subdivs (2) and (3) below (see the answer to Question 2 above for further discussion). There is a proviso, as discussed above in of the answer to Question 2. It should be noted that the list is expressed in a nonexhaustive fashion. The records of the drafting process for the EPC reveal that the list of excluded subject matter now contained in Article 52(2) evolved considerably[5]. Not all of the proposed categories of excluded subject matter were adopted in the final EPC. In respect of computer programs, concerns were expressed about the early stage of development of that technology. Some early commentators on the interpretation of Article 52(2) by the EPO noted that Article 52(2) had been influenced by the US Patent Office s ( USPTO ) negative attitude towards software patents, prior to a 1981 decision of the US Supreme Court, Diamon v Diehr and Lutton[6]. Section 1(2) PA 1977 appears to group the excluded matters. Review of the groups might be thought to indicate some kind of underlying coherency between the subject matter; however, the UK Courts, have warned against seeking to understand the list in a coherent way[7]. As can be seen from the discussion in Aerotel / Macrossan, the UK courts consider there to be no pattern underlying the excluded subject matter in the UK. In part, patent protection is excluded where protection is provided by other IP rights for example for aesthetic creations, many of which will attract copyright whilst other categories suggest an overlap with other requirements for patents such as the exclusion of discoveries which recalls the requirement of industrial application and the reluctance to provide patent protection to abstract or theoretical subject matter. These generally attract little controversy. Still other categories appear to be excluded on the grounds that they are not per se of an appropriate nature for patent protection, such as methods of doing business. Computer programs sometimes fall into more than one of these putative categories: the program s code may attract copyright and frequently other objectionable subject matter, in particular business methods, are also patented as computer programs. Yet little satisfactory explanation exists for why computer programs, in the absence of other excluded matter, should present difficulties for aspiring patentees. Computer programs may be regarded as the paradigm of non-consensus for exclusion from patent protection, as the history of law concerning s 1(2) PA 1977 and Article 52(2) EPC shows. Early UK commentators on s 1(2) PA 1977 regarded the reference to a program for a computer as such as achieving a position similar to that of the law under the Patents Act 1949: commenting on a recently decided case under the old law in 1983, the authors of Terrell stated that a different conclusion might be reached under the new Act [but] this seems unlikely in view of the similarity of the old law to the new law in viewing computer programs unpatentable only as such Accordingly it is submitted that the old line of authority should be followed [8]. More recently, as the law developed in both the EPO and UK, the application of s 1(2) PA 1977 in respect of computer programs became controversial. In particular, the approach of the UK IPO has been criticised as overly restrictive. The EPO s approach also attracted some criticism[9]. Additionally, the gap in protection for the innovative software industry between the protection available via copyright and that available via patents attracted debate with little substantive progress: for example, in 2005 the European Parliament rejected a proposed directive to legislate at EU level for the patent protection of computer programs [10] whereas others proposed the creation of a sui generis IP right for software in place of patents [11]. In the 2000s, UK court decisions concerning the application of Article 52(2) in respect of computer-implemented inventions caused considerable differences of opinion to emerge between the UK IPO, the courts and the EPO. Following the Court of Appeal s decision in Symbian[12] the EPO looked set to review its approach to Article 52(2) comprehensively but ultimately did not do so [13]. Subject matter excluded for other policy reasons As originally enacted the PA 1977 contained a provision that: (3) A patent shall not be granted (b) for any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a microbiological process or the product of such a process. Page 14 of 20

15 This provision is no longer in force. Various legislation of EU origin, in particular European Directive 98/44/EC on the legal protection of biotechnological inventions, have led to an alternative list of excluded subject matter contained in a schedule to the PA 1977, covering various aspects of plant and animal related biotechnology. A detailed discussion of these is unnecessary but it should be appreciated that the excluded subject matter have evolved due to developments both in technology and ethical thinking about biotechnology. Some authors consider the discussion of biotechnology and computer-implemented inventions may benefit from similar analyses[14]. In addition to biotechnology, certain kinds of medical treatment are excluded from patentability under s 4A PA These were introduced into the PA 1977 in 2004 by amendment following amendment of the EPC in They may be regarded as being based on a desire not to impede the freedom of medical practitioners to provide the treatment they judge appropriate [15] and thus, like biotechnology, may be regarded as distinct from the subject matter excluded by s 1(2) PA 1977 because the rationale for their exclusion is different. Second medical use claims, a device to circumvent in part the application of s 4A PA 1977 and thus reward research into the use of existing medicines for the treatment of new conditions, have caused substantial discussion recently owing to litigation concerning the infringement of such claims and the requirements thereof [16]. Inventions with reprehensible application In addition to the requirement that subject matter fall within the definition of invention in order to qualify for patent protection, under the Patents Act 1949 a patent could also be refused if the use of the invention in respect of which the application is made would be contrary to law or morality ; however, such an invention could be protected by a patent if its specification were amended to include a disclaimer against such illegal or immoral use. Thus, the law also recognised that patent protection should not be extended to subject matter in any area of endeavour which would be used in a reprehensible way. A number of countries supported the inclusion in the EPC of something similar perhaps at least in part because such is also present in the Paris Convention. The original text of the PA 1977 has been amended and now reads: (3) A patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality. (4) For the purposes of subdiv (3) above exploitation shall not be regarded as contrary to public policy or morality only because it is prohibited by any law in force in the United Kingdom or any part of it. These provisions have, perhaps surprisingly, attracted little controversy and no case law. There has been a long history of exclusions in UK patent law; it may be said that there has been for many years a general consensus that certain areas of human endeavour should be excluded but the particular area to be excluded has varied from time to time and has attracted significant controversy in some quarters in respect of some exclusions. Additionally, the reasons for exclusion are multiple and defy coherent explanation; thus, controversy concerning the exclusion of one particular area of human endeavour does not appear to undermine the general acceptance that patent protection should not be available in all areas. 51. ^ SeePatents for Inventions (5th Edition), T.A. Blanco White (1983) at ^ SeeTerrell on the Law of Patents (13th Edition), Aldous et. al. (1983) at ^ Ibid. at ^ Burrough's Application [1974] RPC 147 per Graham J. 55. ^ For a review of this, with reference to the comparable UK law, see Article 52(2) of the Convention on the Grant of European Patents: what did the framers intend? A study of the travaux preparatoires, Pila, IIC (2005) ^ SeeMathematical method computer program (case comment) E.I.P.R. 1987, 9(5), D ^ Aerotel / Macrossan, see Fn 3 at [8] to [9] 58. ^ Terrell, supra, at ^ See, for example,dispute over the meaning of "invention" in Art.52(2) EPC - the patentability of computer-implemented inventions in Europe, Pila, IIC (2005) ^ For discussion see Patenting software? A judicial and socio economic analysis, Hilty and Geiger, IIC (2005) ^ Would the current ambiguities within the legal protection of software be solved by the creation of a sui generis property right for computer programs?, Diver, J.I.P.L.P. 2008, 3(2), ^ For a review of this decision seecourt of Appeal clarifies patenting of computer programs, de Mauny, EIPR (2009) 147 Page 15 of 20