The fallout from Aerotel/Macrossan

Earlier this week, the Chartered Institute of Patent Attorneys held a seminar entitled "Macrossan - Prospects and Problems". If you were there and don't need to be reminded, just skip to the bottom of this post for some more interesting news. One quarter of the IPKat was there, along with many other patent attorneys, to try and make some sense of the state of the law in the UK on the subject of excluded subject matter under section 1(2), and in particular whether computer programs could (or should) be patentable.

Presentations were made providing four different perspectives of the Aerotel/Macrossan decision, how it has affected law and practice in the UK, and how it has been viewed at the EPO. James Boon (Bristows), who was involved in the Aerotel appeal, presented an overview of the judgment itself. Colin Stratford, an EPO examiner and legal advisor, outlined the approach to dealing with matter under Article 52 EPC at the EPO. Julyan Elbro, a Deputy Director of the UK-IPO, attempted to explain the reasoning behind the current UK approach. Finally, Andrew Alton (UDL) gave a patent attorney's view of what has come out of Aerotel/Macrossan, for better or worse. The seminar was ably and cheerfully chaired by Simon Davies (D Young & Co.), Chair of the CIPA Computer Technology Committee.

In presenting the case itself, James Boon led the audience through the details, starting from the background situation where, after a period of inactivity in the UK, there was a flurry of cases attempting to settle (unsuccessfully) the issue of excluded inventions. The decision in Aerotel/Macrossan, however, resulted in a new four-step test that effectively overwrote all these previous changes. This test has now been applied many times at the UK-IPO, and several times in further judgments ( including Bloomberg/Cappellini, Oneida Indian Nation and Raytheon). The Court of Appeal also proposed questions for the EPO Enlarged Board of Appeal, but these were rejected by both the President (see IPKat post here) and the Technical Board of Appeal (in T 154/04; IPKat post here). James finished with a tentative speculation that, with the new President Alison Brimelow, there may be a chance of "further action" at the EPO.

Colin Stratford then outlined the EPO perspective on Aerotel/Macrossan. The EPO current practice is effectively to ask first whether there is an invention, and then ask whether it is inventive. Although a 'contribution approach' similar to the UK approach was followed in earlier practice, the EPO (after T 1173/97 and T 931/95) ended this with new Guidelines in October 2001. The new approach led to the decision of Hitachi (T 258/03), where a previous differentiation between apparatus and method claims based on technical features was ended. A further "clarification" came with T 424/03, which determined that a computer-readable medium was a technical product and thus had technical character. The current practice at the EPO equates the presence of an invention with that of having 'technical character'. Colin then summarised the current problem-solution approach, which depends very much on the use of the word 'technical' (technical contribution, technical effect and technical problem, with non-technical aspects not able to contribute to an inventive step). The current EPO approach is that computer program claims are patentable, provided the program allows for a 'potential technical effect' through a patentable method enabled by the program. No danger of confusion there then.

The view from the UK Patent Office was then presented by Julyan Elbro, who outlined what the new approach after Aerotel/Macrossan meant to UK applicants. Going straight into the four-step test (which, the IPKat reminds his readers, was a UK Patent Office invention), Julyan said that there was no correct answer to which step was the most important (but that it wasn't the fourth one). What mattered in determining the contribution was to consider the substance of the claimed invention, but this was not to say that the form of claims was not a matter of substance. If the claimed invention was to a computer program, the monopoly claimed was therefore a computer program as such. It was important, as Julyan explained to an apparently faux naif patent attorney questioner, to recognise the difference between a claim to a newly programmed washing machine and a newly programmed computer, the former being potentially patentable and the latter clearly not. Program claims were, in the view of the Office, not to be allowed after Aerotel/Macrossan, and this was confirmed by the judgment in Oneida Indian Nation (though whether this was obiter dicta was disputed). The recent decisions in Waters Investments Limited and Fisher-Rosemount Systems confirmed that, in some cases, inventions embodied in computer programs could be patentable provided they were "tethered" to a physical result. Programs on a medium were, however, no longer allowable.

Andrew Alton then tried to make sense, from a patent attorney's view, of where we are now, what arguments we can make and what we should be advising clients. He pointed out that the number of excluded matter hearings at the UK Office had increased substantially over the past few years, rising from less than 10 a few years ago to nearly 50 last year. Unsurprisingly, the vast majority (87.5%) of recent hearings under the Aerotel/Macrossan test resulted in refusal, with the largest proportion of refusals being on the grounds of the claimed invention being a computer program as such. Andrew presented lots of arguments that might be used in hearings to support a non-excluded contribution, most of them with suitable ripostes already put the Office. What has changed now is that the existence of a 'potential' technical contribution is no longer tenable as an argument to support patentability. Citing EPO decisions and pre-Aerotel case law is very unlikely to be successful. Amendments should be considered instead, to add hardware features, 'industrial' steps and in general making sure the contribution you want to rely on is actually present in the claim (always a good idea for any type of invention, in the IPKat's view). Andrew's view was that computer program product claims in the UK could be forgot for now if you want something allowed. Leaving them in was likely to result in refusal and a lost appeal. This was not to say, however, that computer programs could not be the basis of infringement actions, citing Menashe v William Hill (supplying a program on a cd was found to be contributory infringement under section 60(2)), just that direct infringement in the UK on the basis of a computer program would no longer be possible. The obvious conclusion from all this was that clients could be well advised to prosecute these types of applications at the EPO rather than the UK Office. However, the current state of UK law inevitably means that any computer program claims in an EP(UK) patent could leave the patent open to actions for revocation under section 72. One thing to consider, both for existing granted patents and for new EP(UK) patents, is whether post-grant amendments under section 27 or section 75 would be necessary.

Shortly after the seminar, another decision arrived from the UK Office (BL O/185/07), which the IPKat had previously alluded to as being fairly important (see IPKat post here and Register article here). This was an appeal made by a firm of patent attorneys on behalf of five UK applicant companies. Each of the applicants had their application refused due to the presence of one or more computer product claims, and in each case the form of claim was the only remaining objection. The attorney tried to argue that, in light of Aerotel/Macrossan, it was not right to refuse such claims. The hearing officer said, in relation to the four step test,

"My initial view is that, since the test relies on the initial step of 'deciding what the monopoly is', the contribution can not be some general concept developed from an overall appreciation of the teaching of the specification but must be derived from the claim under consideration. That being the case, I do not see how the contribution can extend beyond the scope of the monopoly".

The attorney (Mr Fox) then failed to persuade the hearing officer that such a view was incorrect. The hearing officer considered that the guidance from Aerotel resulted in a clear departure from EPO practice in force at any time during the period since such claims have been allowed (T 1173/97). In conclusion, the hearing officer stated,

"Although there is no direct guidance in Aerotel as to how program claims should be treated, the requirement to consider the scope of the monopoly in step one of the test, coupled with the direct comparison between the contribution and the excluded fields, suggests that such claims should be excluded. The Oneida judgment appears to confirm this. There seems to be little else in the recent cases cited by Mr Fox to assist in this inquiry. Although this position is inconsistent with practice in the EPO and other European countries, which is highly undesirable; if it is the correct interpretation of the approach set out in Aerotel, as I believe it to be, then I am obliged to apply it in the present cases. I consequently find that the program claims are not allowable and that as a result, the patent applications under consideration here can not be accepted in their present form, and stand to be refused".

The IPKat is reliably informed that this decision is almost certain to be appealed to the High Court.