In two judgments of 12 January 2009, the UK-IPO dismissed appeals in respect of patent applications by eSpeed Inc (“eSpeed”) (BL O/009/09) and Schlumberger Holdings Limited (“Schlumberger”) (BL O/016/09) on the basis that the applications were for excluded subject matter under Article 52(2) of the EPC. The appeals are of interest as they illustrate the approach taken by the UK-IPO since the Court of Appeal judgment in Symbian’s application (Symbian v Comptroller General of Patents [2009] EWCA Civ 1066). In Symbian the Court applied the Aerotel four stage test to determine whether an application should be rejected on one or more of the grounds contained in art 52 of the EPC:

(1) Properly construe the claim;

(2)Identify the actual contribution;

(3)Ask whether it falls solely within the excluded subject matter;

(4)Check whether the contribution is actually technical in nature.

The Court also held that the question as to whether an application is excluded as a “computer program as such” could only be answered by asking if the application reveals a “technical contribution to the state of the art” (stage four of the Aerotel test). Following Symbian, on 8 December 2008, the UK-IPO issued a Practice Notice stating that it would continue to apply the Aerotel approach to determine whether or not a computer program-related invention fell solely within excluded matter.

eSpeed’s application

eSpeed’s application related to the use of game controllers for electronic trading, enabling trading commands to be executed with greater speed and accuracy. The applicant argued that the technical contribution was the provision of a new combination of hardware which interacts with new software leading to new functionality with improved efficiency of operation i.e. the game controllers and the interface application together constitute a new input device. However, the hearing officer disagreed with the applicant’s analysis and considered the individual hardware items to be conventional and identified the technical contribution as lying in the computer program for generating the trading commands. He accepted that the program enables trading commands to be generated more efficiently; however, he considered that the advantage arises solely because the program is better and not because there was any technical improvement in the operation of the hardware items making up the overall trading system. He also considered that the program related solely to executing trading commands, which is a business method. The contribution therefore lies solely in excluded matter. The hearing office also found the invention to be obvious in the light of a US specification pleaded as prior art authored by Mazza et al (US 2002 / 0070915 A1). Mazza disclosed software to provide a hand-held “game-controller” interface designed for the trading community having control buttons to perform electronic trading operations.

Schlumberger’s application

Schlumberger’s invention concerned the display of sonic well logging information from the earth formation surrounding a borehole. A log of the geologic formations penetrated by a borehole is generated by measuring the energy emitted from a sonic source placed in the borehole. The sonic source will generally emit energy over a range of frequencies, enabling the varying densities of the surrounding strata to be inferred from the differential rates of absorption and reflection, known as the “dispersive effect”. In conventional techniques the arrival times of these different frequencies are averaged out and therefore information is lost. The invention recognises the dispersive effect and retains all of the information relating to the different frequencies, allowing different and better information to be obtained from the sonic data.

The hearing office considered the technical contribution to be a method of manipulating sonic data in a way which is mathematical, so as to obtain a projection log with the advantages of more reliable quality control indicators and the ability to use sources emitting over a range of frequencies which therefore improves the information available to the operator. The hearing officer did not consider the contribution as relating solely to a computer program, which is merely one way of implementing the invention and the use of non-electronic paper displays was specifically mentioned. However, applying Vicom (T 0208/84), he went on to say that the invention does not produce any change in a physical entity, have any functional link to a physical system or have any internal technical features and therefore relates solely to a mathematical method and therefore to excluded matter.

UK-IPO’s approach

In both of these decisions, the UK-IPO applied the Aerotel test and although clearly identifying the technical contribution in accordance with the requirements of Symbian, the test as to whether the contribution solves a technical problem was narrowly applied. It therefore appears that the Symbian decision has had little effect on the approach of the UK-IPO to the determination of the patentability of computer-program related inventions.

It lies with the EPO Enlarged Board of Appeal to take the opportunity to make a definitive statement of EPO practice in response to questions raised by the President of the EPO concerning the application of the exclusion of computer programs as such (see summary in our May 2008 bulletin). However, it will be some time before this happens; a response from the EPO is not expected until towards the end of this year at the earliest.