[DMCA-Activists] UK Top Court Rejects SW Patent, Criticizes EPO Doctrine

[Seth Johnson]

(The EU executive bodies recently attempted, and failed, to pass
a Directive that would have codified the EPO's practice of
granting software patents, despite the 1973 European Patent
Convention's explicit exclusion of software from patentability. 
This rejection represented a very strong historical register for
the idea of actually obeying the letter of the law, and makes it
harder for the EPO to rationalize their practice as "the status
quo."  What follows seems to me to be one of the outcomes of this
development, along with the increased number of hitherto silent
or noncommittal parties we now see coming out of the wings and
taking the principled stand against software patents.  It's in
this sense that the EU Commission's attempts to characterize the
rejection of the Directive as a victory for those who introduced
it (ostensibly because rejection avoided a "messy" law), are
ineffectual and false.  Short of actually crafting a good law,
this outcome was a great one for information freedom.  -- Seth)


> http://wiki.ffii.org/Cpfh0507En


UK top court rejects software patent, criticises EPO doctrines


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 
(http://www.bailii.org/ew/cases/EWHC/Patents/2005/1623.html) , 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 
(http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html), 
which is also well worth a read.

Both were recently noted in the IPKat blog 
(http://ipkitten.blogspot.com/).


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 
(http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html) , 
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:

35. 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

were too cumbersome (it was felt that searching the prior art 
would be a big problem


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

and would do more harm than good


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

. I shall not go into details here but it is worth noting that 
the software industry in America developed at an astonishing pace 
when no patent protection was available


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

Copyright law protects computer programs against copying. A 
patent on a computer program would stop others from using it even 
though there had been no copying at all. So there would have to 
be infringement searches. Furthermore you cannot have a sensible 
patent system unless there exists a proper body of prior art that 
can be searched. Not only are most computer programs supplied in 
binary form -- unintelligible to humans -- but most of the time 
it is actually illegal to convert them into human-readable form


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

    A patent system where it is illegal to search most of the 
    prior art is something of an absurdity.

36. 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.)

37. 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

    The Commission wanted to harmonise the law by defining the 
    line between inventions that are properly patentable and mere 
    computer programs. Although not strictly relevant to what I 
    have to decide, I must admit I watched developments with some 
    anxiety. Had the proposal succeeded it would have entrenched 
    a test involving 'technical contribution' and 'technical 
    features' that I suspect is too vague to be workable at the 
    margin. On 6 July 2005 the proposed directive was defeated in 
    the European Parliament and it will not be re-introduced.

[...]

91. The legislation requires that, in order for something to be 
    patentable, it must /be/ an invention, it must be susceptible 
    of industrial application, it must be new, and it must 
    involve an inventive step (i.e. it must not be obvious). 
    Those are four conditions. They are mandatory. None of them 
    can be reasoned out of existence under the guise of 
    interpretation.

92. By "//be// an invention" I mean not be excluded by Article 
    52(2). If something is an invention in that sense we can call 
    it "technology" for short. I shall revert to that presently.

93. It must also be the law that, for something to count as new 
    and non-obvious, it must do so /under the description/ 
    'invention', in that sense. It is not enough that something 
    is new and not obvious if the sole novelty or inventive step 
    consists of something that is excluded from basic 
    patentability by Article 52 (but it must really be excluded 
    by Article 52: see further below). Tomorrow's newspaper will 
    be a manufactured article; it will certainly be a new 
    article; and at least some of its contents will not be 
    obvious. But the newspaper will not be patentable on mere 
    account of the novel and non-obvious information it presents. 
    For the news itself will not satisfy those conditions under 
    the description 'invention', but only under the description 
    'excluded matter'. There must be unity under the four 
    conditions. Likewise, if it should turn out that tomorrow's 
    newspaper is printed with a new but obvious ink, it will 
    satisfy three out of the four conditions, but that will not 
    be enough.

94. To that extent I believe the EPO is right no longer to apply 
    the "technical contribution" test. Properly regarded, that 
    was a two-stage test that identified what was new (not 
    disclosed in the past) and then asked whether it was 
    'technical' (i.e. not excluded from patentability). But it 
    cannot be right to stop there. The new advance also must not 
    have been obvious to those skilled in the art and that too 
    must be under the description 'technical' (i.e. not excluded 
    from patentability). In practice it may not be useful to 
    consider whether something is an 'invention' without 
    considering whether it is new and non-obvious. Much the same 
    thing was said by the House of Lords in /Biogen Inc v. Medeva 
    plc/ [1997] RPC 1, 42.

95. A patentable invention is new and non-obvious information 
    about a thing or process that can be made or used in 
    industry. What is new and not obvious can be ascertained by 
    comparing what the inventor claims his invention to be with 
    what was part of the state of the existing art. So the first 
    step in the exercise should be to identify what it is the 
    advance in the art that is said to be new and non-obvious 
    (and susceptible of industrial application). The second step 
    is to determine whether it is both new and not obvious (and 
    susceptible of industrial application) under the description 
    'an invention' (in the sense of Article 52). Of course if it 
    is not new the application will fail and there is no need to 
    decide whether it was obvious.

96. In order to identify what is the advance in the art that is 
    said to be new and non-obvious the Patent Office may rely on 
    prior art searches. But in my judgment it is not invariably 
    bound to do so. It will often be possible to take judicial 
    notice of what was already known. Patent Office examiners are 
    appointed because they have a professional scientific or 
    technical training. They are entitled to make use of their 
    specialist knowledge. Of course the letter of objection will 
    state the examiner's understanding of the technical facts in 
    that regard, and thus the applicant will have the opportunity 
    to refute it in case there has been a mistake.

97. Reverting to "under the description 'an invention'", it will 
    often be possible to take a short cut by asking "Is this a 
    new and non-obvious advance in technology?" That is because 
    there can often be universal agreement about what is 
    'technology', see paragraph 11 above. But sometimes it will 
    not be possible without running the risk of error, see 
    paragraph 12. If there is any doubt it will then be necessary 
    to have recourse to the terms of Article 52 of the 
    Convention.


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

103. 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.

104. 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.

105. 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 
(http://www.patent.gov.uk/about/ippd/issues/cii-workshops-
case.htm), 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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