Some interesting reasoning on why, at least for patent attorneys, software patents are necessary..

Head on over to the IPKat for some interesting comments, see here

All quite on the western front

I have had a torrid few months with a few major deals just happening at the same time, leaving me with virtually no time to maintain my blog (going from a part-time blog to virtually a 'no time' blog :-) ). I am hoping to be able to share some of my views on recent developments and also post a commentary of the talk I gave at EUPACO 1 (www.eupaco.org) back in January this year sometime soon.

Cristian

Why falling at the third hurdle is better than winning the race....

There was an interesting post on the IPKat blog by David Pearce (a patent professional) on Friday about whether the Court of Appeal decision in Macrossan, as applied by the UK Patent Office in recent decisions, had signalled the death of the 'technical effects' doctrine in the UK. It is always interesting to see the differing perspectives taken by people on the same point and this post is a good example.

David's post is about the 4 stage test applied in Macrossan. For reference, the 4 steps are as follows:

“(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”.

So what is David's issue? Well, he is concerned about how if the claimed invention resides solely in excluded subject matter, the Court of Appeal (as followed by the UK Patent Office) says it should not be necessary to consider whether the contribution has any 'technical' character. He sees (from his perspective) that the failure to consider the 4th step (technical contribution) if the claimed invention resides in solely excluded subject matter as a 'problem' and laments that, although those that oppose software patents may be pleased with this approach, such an approach is likely to cause a divergence between UKPO and EPO practice. Let's look at his comments in more detail:

"Leaving aside the issue of what the word "technical" means, the new test would, on the face of it, seem to be entirely in line with Merril Lynch, because the technical effect part is taken up by the fourth step. So far, so good.

However, as Jacob LJ said in Aerotel (paragraph 46), the fourth step

"may not be necessary because the third step should have covered that. It is a necessary check however if one is to follow Merrill Lynch as we must".

The problem is, if one follows this reasoning, the fourth step might never in practice be used because failing at the third step will always be fatal. This appears to be the view of the UK Patent Office at least. The fourth step therefore appears to be a backstop against granting a patent, and not a way of incorporating the "technical effect" arguments of Merril Lynch. The effect, if it is ever to be used, appears more to be in allowing other types of inventions to be excluded that do not neatly fall into the s1(2) categories, as in Lux Traffic Controls [1993] RPC 107 (methods for controlling traffic are not patentable).

......

The practical effect of this new approach is (in this Kat's opinion, at least) that inventions that would have passed the patentability test previously will not pass the new test if the arguments for patentability rely on the presence of a technical effect. This will be good news for opponents of "software patents", but may be creating a new rift between UK and EPO practice."

It may come as little surprise that I have a different perspective from David as to the non-application of step 4, if the claimed invention fails at the 3rd hurdle because it consists of solely excluded subject matter. Firstly, because I think (as I will explain below) that the test as currently applied by the UKPO is much closer to the spirit and purpose of Article 52(2) of the European Patent Convention (EPC) than the application of the 'technical effects' doctrine employed by the EPO and that this situation is beneficial for not only those who oppose software patents but also for those that believe in a purposive approach to the EPC. Secondly, I do not consider a divergence of interpretation between the UKPO and EPO as something that is inherently negative as implied by David's conclusions. Let me explain.

(1) The death of 'technical effects'...a good thing.

Before making his key points David first does a little side step around what 'technical' means as referred to in the 4th step:

"Leaving aside the issue of what the word "technical" means".

This side step is of significance (although I am sure it was not intentional) for the EPO's 'technical effects' doctrine relies precisely on using the undefined term of "technical effects' as a mechanism to allow otherwise excluded subject matter (computer programs) to be labelled as 'technical' and therefore apparently passing a 'technicity' threshold (for the EPO at least) that turns an otherwise excluded item into a patentable item. Anyone who has studied case law will know that where decisions are left to the interpretation of vague concepts, it gives a certain amount of flexibility for introducing policy in decision making. With the EPO, it has been able to bulldoze through the computer program exclusion so as to render it '”without real content” (per Macrossan) and hence introduce its own policy objectives of extending the boundaries of patentable subject matter, via the 'technical effects' doctrine.

Failing to focus on what is meant by 'technical' in the doctrine of 'technical effects' is what the EPO has done in order to lower the bar for patentability. As Prescott QC said in CFPH, "they take it very far. Even paper, or ink, can count as a technical feature" (paragraph 45 of CFPH). Next it will be the Sun and the Moon (oh, I forget the US Patent Office has already beat them to it). I can understand how someone who subscribes to the EPO's approach of using an undefined expression to make important decisions as to the scope of the patent system might regard the UKPO's failure to consider the 4^th stage of 'technical contribution' if the claimed invention is solely excluded subject matter as a 'problem'. However, it is submitted, that if one actually focuses on how the EPC (and not the EPO) defines a patentable invention, far from the non-consideration of the 4^th step being a problem in the case of solely excluded subject matter, such approach actually represents a much closer alignment to what is regarded as an invention by the EPC.

Although David does not follow or agree with my arguments (as he has written many times) he cannot argue with fact. It is a fact that the EPC does not refer to loose and vague notions of 'technical effects' and 'technical contribution' to define what is a patentable invention (although readers note that had the CII Directive being passed in the form proposed by the Commission, it would have done....no surprise). The EPC does not in fact contain any definition of what is meant by 'technical'. However, what it does do is tell you what is not to be regarded as a patentable invention (see Article 52(2)). If one assumes, as should be the case, that 'technical' means 'patentable', following the logic of the EPC exclusions, if the subject matter is excluded it is because it was not regarded as 'technical' (and hence not 'patentable'.)

How does this analysis apply to the 4 stage test? Well, the court says that if the claimed invention consists of excluded subject matter (which is the purpose of the 3^rd step to consider), there should be no need to consider the 4^th step (i.e., if the claimed invention has a 'technical' character). Far from being a 'problem', this approach is completely consistent with the negative definition of what is an invention (and hence technical) in the EPC. The court in Macrossan, as is the purpose of Article 52(2), recognises that excluded subject matter is inherently non-technical for patent purposes (irrespective of how 'technology' and 'technical' is referred to in common parlance in the digital world we live in today) and cannot be attributed a 'technical' character; it is not 'technical' and cannot therefore make a 'technical contribution' or have a 'technical effect' if you follow the spirit and purpose of the EPC. To disregard as a patentable invention something that before would have been regarded as patentable simply because of the 'technical effects' doctrine is a positive step towards reaffirming the spirit and purpose of the EPC exclusions. The only way excluded subject matter can have a technical effect is if you divorce the word 'technical' from the meaning (defined negatively) of 'invention' in the EPC, exactly the approach taken by the EPO. I am not the only one who sees how the use of vague concepts such as 'technology', 'technical, 'technical effects' and 'technical contribution' outside of the framework principles of 'what is an invention' embodied in the EPC can be dangerous:

“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.” (Peter Prescott QC, paragraph 14 CFPH)

Unfortunately, in the case of the EPO it has become a dangerous master. Far from the current approach of the UKPO being a 'problem', if this approach is followed it will go a long way to preventing the abuse of vague concepts to allow otherwise excluded subject matter to be patentable because, as far as applications consisting of solely excluded subject matter are concerned (which should not be patentable in the first place), the 'technical contribution' question is unlikely to be asked at all. Whilst this fails to address my long standing concern about the patenting of software in hybrid inventions it potentially goes a long way to restoring the imbalance in our patent system caused by the purposeful watering down of excluded subject matter by the EPO and will hopefully mean that less software will be patentable. It is not often I say death is a good thing...but the death of 'technical effects' can't come soon enough.

(2) A divergence between the EPO and the UKPO

One can only consider this divergence negative if one attributes to the EPO a position of authority (binding the national patent offices) when it comes to the interpretation of the EPC. I, unlike probably many patent professionals that are happy with (and more importantly do not question) the EPO's role in the current patent system, believe that the position of supremacy in terms of deciding what should and should not be patentable, if we are to preserve some democratic foundation within the patent system, rests with national parliaments and national courts whilst the system remains structured as it is (a move to a central court firmly forming part of and accountable to the European Union institutions and, in particular, the European Parliament is a different matter).

Unfortunately, many commentators (including some within our own judiciary) forget that the EPO was not intended to have the final say as to matters of interpretation of the EPC, lacking as it does both the necessary qualities of democratic accountability and an independent judiciary. Once again Prescott QC is one of the few recent commentators willing to pull no punches and state the obvious:

“the EPO, beyond having certain limited powers to revoke patents it granted itself, has no jurisdiction over the patent law of the U.K. The EPO is not the European Court of Justice, and Parliament has not seen fit to confer such powers upon it. On matters of patent law the role of the EPO is persuasive, not prescriptive. The EPO is not equipped with a staff of expert economists who are competent to decide if the patenting of business methods, or computer programs, would be good for our country and even if it was it would still be for our Parliament to decide. So, although we should pay careful attention to EPO decisions, and the decisions of other Convention courts, we are not bound to follow them blindly.” (paragraph 56, CFPH - emphasis added)

If we remember, rather than conveniently forget, what is meant to be the role of the EPO, then if the divergence of UK case law and UK practice to that of the EPO is the result of an attempt to stay true to the spirit of the EPC then, far from being negative, this is a positive divergence within keeping with the role to be played by national courts under the current EPC (at this point I hear shouts of the EPLA but the EPLA is simply an extension of what is already a democratically unaccountable system). Just as the German courts have done in recent times, we should not follow the EPO blindly and we should be fully aware of the dangers of the current structure of the EPO's decision making system whereby the very body that grants patents also reviews their validity, a problem not missed by the EPO itself:

"However, the boards' administrative and organisational attachment to the EPO which is an administrative authority obscures their judicial nature and is not fully commensurate with their function as a judicial body." (Organisational Autonomy of the EPO’s Boards of Appeal - http://patlaw-reform.european-patent-office.org/boards_appeal/)

'Not fully commensurate with their function as a judicial body'...now that's an understatement if I ever saw one. David has stated before that he does not follow my arguments, perhaps he may listen to those of the EPO...