Some extracts from the judgement to summarise what happened (sorry
it's still long, but the judgement is 22 pages). Short comments in
line, overall comments below.
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23. This case is by no means unique as an example of a computer
implemented invention in which the word “computer” is conspicuous by
its absence from the patent claims. I am quite certain that one
reason for this is a desire by applicants to try and play down the
fact that their inventions are really based almost entirely on
computer software. It fools no-one and in some cases makes things
more complicated than they need to be.
-----
Patents Act:
s1(2) It is hereby declared that the following (among other things)
are not inventions for the purposes of this Act, that is to say,
anything which consists of—
[...]
(c) a scheme, rule or method for performing a mental act, playing a
game, or doing business, or a program for a computer;
(d) the presentation of information;
but the foregoing provision shall prevent anything from being treated
as an invention for the purposes of this Act only to the extent that a
patent or application for a patent relates to that thing as such.
------
30. The difficulties in this area arise mostly in relation to
inventions which involve the use of computers. All the Court of
Appeal cases (from Merrill Lynch to Symbian) are about inventions
implemented in software. The simple problem is that computer programs
(as such) are excluded by s1(2)(c) (c.f. EPC Art 52(2)(c) and 52(3)) .
Whether it was so clear in the past however, one thing is clear
today. An invention which makes a contribution to the art which is
technical in nature (to echo Kitchin J’s words in Crawford) is
patentable even if it is implemented entirely on a computer and even
if the way it works is entirely as a result of a computer program
operating on that computer. The outcome of the Symbian case proves
that.
31. [quotes Symbian]: 50. The fact that “the boundary line between
what is and what is not a technical [contribution]” is imprecise (as
Nicholls LJ said in Gale, and as was echoed by Aldous LJ in Fujitsu)
may be attributable to three causes, which are not mutually exclusive.
First, national tribunals and the Board may still be at an
intermediate stage of working out and identifying the precise location
of that line; secondly, the problem may be inherent and never wholly
satisfactorily soluble; thirdly, there are competing views based on
different philosophies (the “open source movement represents one
extreme, that of companies such as the present applicant, the other).
The uncertainty is well demonstrated by the elusiveness of the meaning
of “technical”, the change of attitude manifested in the more recent
decisions of the Board, the contrasting outcomes in Vicom and Fujitsu,
and indeed the possible reconsideration of the correct view of
computer program patents in the United States (see Professor John
Duffy: Death of Google's Patents? Patently-O Patent Law Blog, July
21st, 2008).
32. Thus when confronted by an invention which is implemented in
computer software, the mere fact that it works that way does not
normally answer the question of patentability. The question is
decided by considering what task it is that the program (or the
programmed computer) actually performs. A computer programmed to
perform a task which makes a contribution to the art which is
technical in nature, is a patentable invention and may be claimed as
such. Indeed (see Astron Clinica [2008] RPC 14) in those
circumstances the patentee is perfectly entitled to claim the computer
program itself.
33. If the task the system performs itself falls within the excluded
matter and there is no more to it, then the invention is not
patentable (see Symbian paragraph 53 above). Clear examples are from
the cases involving computers programmed to operate a method of doing
business, such as a securities trading system or a method of setting
up a company (Merrill Lynch and Macrossan). Inventions of that kind
are held not to be paten...
1 comment
[ 3.1 ms ] story [ 24.2 ms ] thread----
23. This case is by no means unique as an example of a computer implemented invention in which the word “computer” is conspicuous by its absence from the patent claims. I am quite certain that one reason for this is a desire by applicants to try and play down the fact that their inventions are really based almost entirely on computer software. It fools no-one and in some cases makes things more complicated than they need to be.
-----
Patents Act: s1(2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of— [...] (c) a scheme, rule or method for performing a mental act, playing a game, or doing business, or a program for a computer; (d) the presentation of information; but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.
------
30. The difficulties in this area arise mostly in relation to inventions which involve the use of computers. All the Court of Appeal cases (from Merrill Lynch to Symbian) are about inventions implemented in software. The simple problem is that computer programs (as such) are excluded by s1(2)(c) (c.f. EPC Art 52(2)(c) and 52(3)) . Whether it was so clear in the past however, one thing is clear today. An invention which makes a contribution to the art which is technical in nature (to echo Kitchin J’s words in Crawford) is patentable even if it is implemented entirely on a computer and even if the way it works is entirely as a result of a computer program operating on that computer. The outcome of the Symbian case proves that.
31. [quotes Symbian]: 50. The fact that “the boundary line between what is and what is not a technical [contribution]” is imprecise (as Nicholls LJ said in Gale, and as was echoed by Aldous LJ in Fujitsu) may be attributable to three causes, which are not mutually exclusive. First, national tribunals and the Board may still be at an intermediate stage of working out and identifying the precise location of that line; secondly, the problem may be inherent and never wholly satisfactorily soluble; thirdly, there are competing views based on different philosophies (the “open source movement represents one extreme, that of companies such as the present applicant, the other). The uncertainty is well demonstrated by the elusiveness of the meaning of “technical”, the change of attitude manifested in the more recent decisions of the Board, the contrasting outcomes in Vicom and Fujitsu, and indeed the possible reconsideration of the correct view of computer program patents in the United States (see Professor John Duffy: Death of Google's Patents? Patently-O Patent Law Blog, July 21st, 2008).
32. Thus when confronted by an invention which is implemented in computer software, the mere fact that it works that way does not normally answer the question of patentability. The question is decided by considering what task it is that the program (or the programmed computer) actually performs. A computer programmed to perform a task which makes a contribution to the art which is technical in nature, is a patentable invention and may be claimed as such. Indeed (see Astron Clinica [2008] RPC 14) in those circumstances the patentee is perfectly entitled to claim the computer program itself.
33. If the task the system performs itself falls within the excluded matter and there is no more to it, then the invention is not patentable (see Symbian paragraph 53 above). Clear examples are from the cases involving computers programmed to operate a method of doing business, such as a securities trading system or a method of setting up a company (Merrill Lynch and Macrossan). Inventions of that kind are held not to be paten...