Death of the "technical effect" test in the UK
As observant IPKat readers may have noticed, there has been a flurry of activity at the UK Patent Office in recent months regarding 'excluded' subject matter under section 1(2) of the Patents Act. This is a direct result of the judgment of the Court of Appeal in Aerotel/Macrossan. Decisions at the UK Patent Office that could have been made earlier appear to have been held over until after this judgment came out in November 2006. We now have, at the latest count, the following decisions that have resulted in refusal under s1(2):
John Lahiri Khan (BL O/356/06) 11 December 2006
Rockwell Firstpoint Contact (BL O/355/06) 11 December 2006
Nintendo (BL O/377/06) 29 December 2006 (IPKat comments)
New Constructs LLC (BL O/014/07) 12 January 2007
Fisher-Rosemount Systems, Inc. (BL O/026/07) 19 January 2007
KK Toshiba (BL O/031/07) 30 January 2007
Peter Williams (BL O/038/07) 2 February 2007
eSpeed Inc. (BL O/043/07) 8 February 2007
Canon KK (BL O/045/07) 12 February 2007
Fisher-Rosemount Systems, Inc. (again) (BL O/047/07) 14 February 2007
NEC Corporation (BL O/050/07) 16 February 2007
Start-Global Limited (BL O/058/07) 21 February 2007
Does this success rate for the applicants of only one partial success in thirteen attempts tell us anything about how (or if) the UK Patent Office's practice has changed since Aerotel? This Kat thinks that it certainly does, and also thinks that it mostly comes down to the fourth step of the test for patentability, as approved by Jacob LJ. The test (from paragraph 40 of the judgment), for those readers who do not already know it by heart, goes like this:
However, as Jacob LJ said in Aerotel (paragraph 46), the fourth step
The practice of the Patent Office in rigidly following Jacob LJ's reasoning has shown in the recent decisions, many of which follow the following reasoning, first used in John Lahiri Khan's application (at paragraph 33):
and only one decision that has resulted in a possible acceptance (though this was to be decided by remittal to the examiner):
Sony UK Ltd (BL O/010/07) 10 January 2007 (IPKat comments)
Does this success rate for the applicants of only one partial success in thirteen attempts tell us anything about how (or if) the UK Patent Office's practice has changed since Aerotel? This Kat thinks that it certainly does, and also thinks that it mostly comes down to the fourth step of the test for patentability, as approved by Jacob LJ. The test (from paragraph 40 of the judgment), for those readers who do not already know it by heart, goes like this:
(1) properly construe the claimThis test was not suggested by Jacob LJ himself, but by Colin Birss on behalf of the UK Patent Office, who claimed that it complied with the previous Court of Appeal case of Merril Lynch, which it must (the court being bound by its previous decisions). In Merril Lynch [1989] RPC 561 Fox LJ stated (at p569):
(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.
"it cannot be permissible to patent an item excluded by section 1(2) under the guise of an article which contains that item -- that is to say, in the case of a computer program, the patenting of a conventional computer containing that program. Something further is necessary. The nature of that addition is, I think, to be found in the Vicom [T 208/84] case where it is stated: "Decisive is what technical contribution the invention makes to the known art". There must, I think, be some technical advance on the prior art in the form of a new result (e.g., a substantial increase in processing speed as in Vicom)".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 practice of the Patent Office in rigidly following Jacob LJ's reasoning has shown in the recent decisions, many of which follow the following reasoning, first used in John Lahiri Khan's application (at paragraph 33):
"The presence or otherwise of a technical effect is therefore a subsidiary factor which will fall to be considered only where an invention passes the first three Aerotel/Macrossan steps".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.
