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UK top court rejects software patent, criticises EPO doctrines

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26 July 2005 -- In a recent court ruling at the highest court of the UK, a software patent was rejected on the basis of Article 52 EPC with reasoning that criticises current doctrines of the European Patent Office and rejected directive proposal from the Commission and Council and demands a "harder" exclusion of software.

In the Halliburton vs Smith case, a software patent was rejected for reasons we have yet to analyse separately.

On the same day the judgment in "CPFH's Application" was published, which is also well worth a read.

Both were recently noted in the IPKat blog.

CPFH's Application: How pure software is to be effectively excluded

"What is an 'invention'? That is what this case is about"

-- so begins Mr Prescott QC in line one of his judgement on "CPFH's Application", before going out of his way to give a complete tour of Art 52 EPC: given in the High Court, coincidentally on the same day as the "Halliburton vs Smith" case.

There are a lot of points he makes well. And not least, his strong approval that there are some very good reasons for not allowing patents on pure software:

  1. The same approach cannot be taken to computer programs. The
    • reason why computer programs, as such, are not allowed to be patented is quite different. Although it is hotly disputed now by some special interest groups, the truth is, or ought to be, well known. It is because at the time the EPC was under consideration it was felt in the computer industry that such patents were not really needed^[14]

http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html#note14

http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html#note15,

http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html#note

http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html#note17

http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html#note18

  1. For those and other reasons it is not surprising that in, this
    • instance, the exclusion is "harder". You are not allowed to get round the objection -- that you are attempting to patent a computer program -- by claiming it as a physical artefact, a mere

      change of form. You cannot patent "A computer disk when storing my computer program" or "A computer when programmed to function according to my program". For if that were allowed you would get a monopoly to the use of your computer program, defeating the policy of the law. (There may be superficial exceptions but they turn on the fact that your invention is not a mere computer program.)

  2. Recently, the scope of this exclusion has been under
    • re-consideration by the European Union

http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html#note19

Comment by James Heald

This could be sharper: I'd like to have seen it more closely related to the EPC. I like the stress that this should be a tightening of procedure, not a relaxation. But of course it doesn't work if it allows the definition of what is technical to slip, and therefore what sort of contribution can be considered technical. "Technical" must be held to mean something beyond the functioning of a programmed computer, and characteristics which only relate to that functioning.

Interesting, if it can be read as a UK attempt to "embrace and extend" the EPO doctrine - ie constructively engage with the formalism, but simultaneously give it a much less permissive application, and hope that the shift will percolate back to Munich.

More Quotes

  1. It was the policy of the "computer program" exclusion that
    • computer programs, as such, could not be foreclosed to the public under patent law. (Copyright law is another matter.) They would be foreclosed if it was possible to patent a computer when running under the instructions of the program, for example, or magnetic disk when storing the program.
  2. But the mere fact that a claimed artefact includes a computer
    • program, or that a claimed process uses a computer program, does not establish, in and of itself, that the patent would foreclose the use of a computer program. There are many artefacts that operate under computer control (e.g. the automatic pilot of an aircraft) and there are many industrial processes that operate under computer control (e.g. making canned soup). A better way of doing those things ought, in principle, to be patentable. The question to ask should be: is it (the artefact or process) new

      and non-obvious merely because there is a computer program? Or would it still be new and non-obvious in principle even if the same decisions and commands could somehow be taken and issued by a little man at a control panel, operating under the same rules? For if the answer to the latter question is 'Yes' it becomes apparent that the computer program is merely a tool, and the invention is not about computer programming at all. It is about better rules for governing an automatic pilot or better rules for conducting the manufacture of canned soup.

  3. Of course, if it were about better rules for running a business
    • the idea would not be patentable.

More Comments from James Heald

(Note that these are both High Court decisions -- ie routine patent case decisions, not Appeal Court decisions. But even High Court decisions involving software patents are very very rare).

The discussion of Art 52 EPC in Halliburton starts at paragraph 207. The case didn't turn on Art 52: the judge principally threw out the patent on the grounds of insufficient disclosure.

Regarding Art 52, the judge held that the creation of a design for a drill bit was a mental act as such; but creation of the design and subsequently using it to make the drill bit was a technical process.

This is very close to FFII thinking. What was new was bringing in a new principle to the creation of drill bits, namely balancing the forces to reduce uneven wear, which had not previously been systematically achieved before. This is (literally!) a teaching about using the forces of nature in a different way to that previously achieved, use of the teaching defining a new distinctive characteristic of drill bits, which identifies a new class of drill bits which correspond to the patent's teaching.

Ironically, it's therefore very analogous to case study 11 in the UKPO workshops which the UKPO criticised FFII's definition for, because most workshop participants thought this application would be allowed under the FFII-UK Forces of Nature definition, whereas the UKPO thought it should not.. It seems the High Court agrees with the participants!

Where I think Judge Pumfrey is not right is his identification of Art 52 EPC as concretising the requirement for "susceptibility of industrial application". He's reading the words "inventions within the meaning of paragraph 1" in Art 52(2) as equal to "inventions which are susceptible of industrial application, which are new and which involve an inventive step" in Art 52(1), (ie "patentable inventions" ?), rather than the word "inventions" in Art 52(1) by itself.

It's an interesting reading, but IMHO off the mark, because I think the Art 52(2) test and the "susceptible of industrial application" test have come to mean different things. Instead I think the mainstream view would be to read the classes in Art 52(2) as not inventions even if they are susceptible of industrial application.

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