Lord Hoffmann on Patentability of Software and Business Methods

Following the astonishing news from New Zealand that I had been mentioned in a speech by Lord Hoffmann there (more details here), I attended an event last night that was organised by the Midlands Intellectual Property Society (no web presence, unfortunately), at which the eminent Lord was the star attraction.

After a very noisy dinner at the Metro Bar and Grill that made my poor ears hurt, the group slipped off down the road to Hammonds HQ in Birmingham to hear Lord Hoffmann speak on the subject of the moment, patentability of software and business methods.

Along with the expected mention of my observations on G 3/08, with which he fully agrees, Lord Hoffmann's main point was to demonstrate that there are two over-arching principles that can be applied to the exclusions of Article 52 EPC that make some sense of the EPO 'technical character/effect' test that confuses so many people (and cats), including at least one English Court of Appeal judge and the current EPO President. These principles can be described as the practical application principle and the human behaviour principle. The former principle applies to some of the non-inventions listed in A52(2) EPC, while the latter applies to the others. If I remember right, Lord Hoffmann divided them up as follows:

Practical Application Principle: discoveries, scientific theories and mathematical methods, aesthetic creations, presentations of information, and programs for computers;

Human Behaviour Principle: schemes, rules and methods for performing mental acts, playing games or doing business.

The reasoning goes something like this: Non-inventions in the first category do not in themselves have practical application, so should not be patentable in themselves, but they might in some cases have the capability to support a patentable invention, for example in the way that a new computer program can support an invention if there is a practical application (or 'further technical effect', if you prefer). Non-inventions in the latter category are aspects that cover human behaviour, so should not be patentable for this reason alone, even though they may very well have practical application (such as new tactics in football or new ways of investing money). An example that was given is a new method for a pilot to use when performing take-off in an aeroplane that minimises noise.

I am not yet sure if this new way of describing the bounds of what should and should not be patentable is workable or consistent, but it certainly seemed to make sense at the time, and definitely makes a lot more sense than the confusion that is going on with the situation in the US with the Bilski case. Whether it can be put to good use in Europe is another matter, particularly given that it seems likely the EPO Enlarged Board will also agree with me. Do the IPKat's readers have any further thoughts on this idea?