Report on the UKPO "Technical Contribution" workshop in Bolton
17 March 2005 -- The UK Patent Office is organising workshops to have people evaluate various definitions for the term "technical contribution". Below, you can find a report from someone attending the workshop in Bolton.
Firstly attendance seemed to be 100% here about 33 people. Like Coventry we were all assigned to tables of about 5 or 6. Each table also had a lawyer from the patent office, presumeably to help things along. It was not clear to me how the assignment to each table was made however I note that one table was completely made up of lawyers.
We were given 5 imaginary patent claims and asked to apply 4 different definitions of technical contribution to each. The first definition was the one in the directive as it currently stands.
- "Technical contribution" means a contribution to the state of the art in a field of technology which is new and not obvious to a person skilled in the art. The technical contribution shall be assessed by consideration of the difference between the state of the art and the scope of the patent claim considered as a whole, which must comprise technical features, irrespective of whether or not these are accompanied by non-technical features.
The second was the FFII definition
- "Technical contribution" means a contribution made by a claimed invention, considered as a whole, to the state of the art in a field of technology. "Technical" means belonging to a field of technology. New teaching about the use of controllable forces of nature under the control of a computer program, beyond the implementation of the data processing procedure itself, is technical. The processing, handling, representation and presentation of information by a computer program is not technical, even where technical devices are employed for such purposes.
The third and fourth definition were so poor to not worth mentioning, they were apparent drawn from a pool of twelve suggestions put together from the feedback on the event invite forms.
Of all the definitions all but one table (the table of lawyers) found the FFII version the easiest to apply. Most found the directives current definition poor because it was somewhat recursive, defining "Technical contribution" in terms of "technical features".
One thing I noted was that the patent office lawyers at each table seemed to think the use of the term "controllable forces of nature" was too vague and left too much leeway for debate.
(update: It seems I was mistaken in assuming that the lawyer/attorney we had at our table (and the similar person I noticed at each of the other tables) was from the patent office. They were presumably like myself members of the public who responded to the invitation.)
Finally we were ask if we thought any of the claim should be patentable irrespective of the definitions and most people thought not.
A poll was taken on whether we did or did not support the patenting of software everyone except some of the lawyers at the lawyer table were against this.
There was a short final discussion where several people mentioned that the event was too guided and narrow, not allowing for expression of views over and above the narrow definition of "Technical contribution". In their defense they said this is what Lord Sainsbury asked them to do.
On a personal note it certainly highlighted what a bad definition the current directive has and the patent office lawyer at our table certainly agreed with this view.
Defining "technical invention" by reference to "forces of nature" is the prevailing approach in Germany. It matured over many years. Most critics of software patentability take a rather instrumental view of legal teachings. We do not talk about legal teachings as such, we want to use them to divide spheres of interests. Natural forces serves the purpose. For us it is important to have stable, simple definitions that inhibit an unauthorized drift in jurisdiction as we observed in the past. Britian with its case law tradition is less reluctant to grant jurisdiction the right to decide normative questions of patent law. Given the vested interests of the patent system such pratice leads to the current uncontrolled expansion. From a German perspective jurisdiction lacks competence to decide on the scope of patent law. This is the role of the lawmaker only who sets his opinion in statutory law. From a rationalist perspective use of patent law as an incentive system in a specific field needs an economic rationale. I believe that judicial bodies are neither trained nor competent to decide on the scope of patent law. Weakening the "technical" requirement is such a decision on the scope. The lawmaker has to consolidate and reinforce interpretation instead of codifying legal escape.