Patentability of Software and Business Methods A UK and EPO Update Richard Davis Hogarth Chambers May 13, 2011

The problem: the governing legislation The European Patent Convention defines what is and what is not patentable subject matter in Article 52: (1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. However, some things are defined as not patentable inventions, including: (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; But only to the extent that a patent application relates to such subject matter 'as such'.

Some legal history… In EPO, leading decision was Vicom (T 208/84) (1986): "Decisive is what technical contribution the invention as defined in the claim when considered as a whole makes to the known art." Introduces concept of technical contribution A software invention is not excluded provided it has a technical contribution to the art Referred to sometimes as providing a suitable technical effect beyond that of any computer program running on a computer

EPO ‘development’ EPO started to change its approach to place less emphasis on technical contribution to overcome Art 52(2)(c) exceptions Replacement test was did claim have 'technical character' Decided first that any apparatus claim must have technical character, but not necessarily any method claim (Pension Benefits T 931/95 (2001)) Then decided that even a method claim involving technical means had technical character (Hitachi T 258/03) (2003) Whilst this overcame patentability exclusion, did not decide issue, since only technical features could be used in the problem-solution approach when considering inventive step (Comvik 641/00) Non technical features (even if new) can be used in the formulation of the technical problem

Aerotel Continues to follow Vicom approach Sets out a 4 step test (1) properly construe the claim (2) identify the actual contribution; (3) ask whether it falls solely within the excluded subject matter; (4) check whether the actual or alleged contribution is actually technical in nature.

Symbian Merck v Actavis permitted the CA to depart from previous UK practice and follow EPO if it considered EPO approach ‘settled’ But CA decided that EPO approach was not settled (and so didn’t). CA clarified that Aerotel was not new law but merely a reformulation of existing law. But CA did uphold the patentability of Symbian’s invention making clear that ‘technical effect’ could reside solely in software

But do the IPO listen? “ In the examination process the examiner argued that since the hardware claimed is known then the contribution must reside in one or more of: a method of playing a game, the presentation of information, a computer program or a mathematical method. ” Suunto Oy BL/089/10 §27

G3 /08 President’s reference

UKIPO reaction to G3/08 “The Enlarged Board subsequently found the referral to be inadmissible and as a consequence declined to answer the questions. The comments of the Board are thus concerned only with their findings on the admissibility of the referral and cannot be read any wider.”

UKIPO reaction to G3/08 (II) “The Board in refusing the referral decided that the decisions of the Technical Boards were a legitimate development of the law in this area. They also noted that they saw a convergence of practice across a number of jurisdictions, including the UK, but accepted that this had not yet reached an authoritative conclusion or statement of fact as to what was and was not patentable in the area of computer programs.” Manual of Patent Practice §1.29.6

Five signposts (1) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; (2) 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; (3) whether the claimed technical effect results in the computer being made to operate in a new way; (4) whether there is an increase in the speed or reliability of the computer; (5) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented. AT&T / CVON [2009] FSR 19

On the horizon…. Protecting Kids the World Over O/439/10 Adaptive Business Systems O/044/11 Halliburton O/080/11

Thank you for listening Richard Davis Hogarth Chambers May 13, 2011