Mr Justice Lewison has today handed down his judgment in two appeals from the Patent Office. The cases raised similar issues about excluded subject matter. The exclusions found in Article 52 of the European Patent Convention and Section 1(2) of the Patents Act 1977 have been the subject of a number of recent decisions from the English courts and the Boards of Appeal of the European Patent Office (EPO). The English courts have emphasised time and time again the importance of UK Patent Law being aligned with the jurisprudence of the EPO. In the area of excluded subject matter, this has not proved easy.
AT&T's application related to "a content broker hosting service system". The system provided a solution to the problem that users of digital content (e.g. music) do not all have the same functionality on their playback system and may need different versions of the content. The solution was for the supplier to have a "device profile table" which indicates the capabilities of various devices and to use the table to supply to individual users versions of the content suitable for the device which the user has.
CVON's application was for a message modifying system used to modify messages, such as text messages, dependent on the membership of the sender or recipient of a "group". The message transmission system interrogates a database to find out whether the sender or recipient is a member of a group and modifies the message accordingly, for example by adding an advertisement.
In a detailed and illuminating review of the cases, the judge identified the critical issue of assessing in each case the technical contribution. He emphasised that exclusion from patentability cannot be put into a watertight compartment as identification of the contribution made by the patent cannot be separated completely from novelty, an issue central to the differences which some observers find between the approaches of the English courts and the EPO.
Although the judge reviewed the cases relating to computer programs, in the end, both applications were rejected as being in a different category of excluded subject matter, namely business methods. Both were, he decided, computerised ways of carrying out business methods. Earlier in his decision, commenting on the EPO decision in Vicom, the judge pointed out that in such cases, "you assess the patentability of a claimed invention ignoring the fact that it operates through a computer program. If, ignoring the computer program, it would be patentable. then the fact that a computer drives the invention does not deprive it of patentability." The decision shows the judge also considered the converse to be true.
The decision would seem to emphasise two important aspects of the test for excluded subject matter in the English courts. The first is the need to identify what the invention adds to the fund of human knowledge; this is the contribution. The second is to establish whether the contribution is technical, a concept not well defined in the cases. The contribution will not be technical if it is just a business method. Much more difficult is the question of whether a computer program makes a technical contribution but these cases did not add to the already confused case law on this issue.