Pumfrey J has considered all four steps of the Court of Appeal's new patentability test, including the role of "technical effects" whilst the EPO has said there is no need to consider Jacob LJ's referral questions on the test for patentability despite his assertion that there were "at least four differing points of view" between the Boards of Appeal on the assessment of the patentability of computer inventions.
On 27th October 2006 we reported the eagerly awaited decisions of the in Aerotel Ltd v Telco and the Macrossan's Application1 in which the Court of Appeal set out a new four step test for assessing whether a computer related invention would be excluded from patentability or not. Pumfrey J has now had the opportunity to apply this test in Pablo Cappellini's Application and Bloomberg LP's application2, 13th March 2007, and has provided further illustrations for industry of where the line between patentability and non-patentability is to be drawn.
In a twist, the President of the EPO has also responded to Jacob LJ's request for a referral to the Enlarged Board of Appeal of the EPO, stating that there are insufficient differences between current Board of Appeal decisions to justify a such a referral.
Pablo Cappellini's Application and Bloomberg LP's application were appeals from decisions of the Comptroller-General of the UK Patent Office, heard before the decisions of Aerotel and Macrossan. However, by the time they reached Mr Justice Pumfrey in the Patents Court in December 2006, the Court of Appeal authority was established. Consequently, Pumfrey J acknowledged that the starting point for assessing the patentability of a computer related invention is the four step test in Aerotel/Macrossan, recited as follows:
Step one – Construe the claim
Step two – Identify the contribution
Step three – Is the contribution solely of excluded matter?
Step four – Check whether the contribution is technical.
Before applying these to the facts of the cases in front of him, Pumfrey J gave three useful points of guidance on:
Computer programs – Pumfrey J reiterated his view (which he deemed supported by the Court of Appeal) that not all "technical effects" were relevant under step four. In particular, for computers, the technical effect had to be a technical effect over and above that to be expected from the mere loading of a program onto a computer. Furthermore, the mere loading of a new computer program, would not lead to the conclusion that there was a new machine and therefore a technical effect.
Methods of performing mental acts – Construe the claim. If the claim covers a method of arriving at a particular result by the exercise of rational processes alone, then it is a "scheme, rule or method for performing a mental act" and is not permitted. On the other hand, if the mental act is "tethered" to, say, a physical article that results from that act and this is a feature of the claim, it will fall outside excluded subject matter under step three and pass the fourth step.
Business methods run by computer – A claim to a programmed computer as a matter of substance is just a claim to the program on a kind of carrier. A program on a kind of carrier which, if run, performs a business method adds nothing to the art that does not lie in excluded subject matter.
The applications at issue
Bloomberg LP's Application
This patent application was summarised by Pumfrey J as claiming a method of distributing data in which the data transmitted to a user is "mapped" (using a record relating to the applications that that user has access to) to a form suitable for the specific application which the particular user wishes or is authorised to use. The method is performed by software only.
Pablo Cappellini's Application
In essence, this huge application (214 pages of text and 127 pages of diagrams) claimed (claim 1) an algorithm for determining the routes to be taken by a carrier when delivering packages, the permitted routes being variable to allow two carriers to deviate, meet and transfer one or more packages. To perform the algorithm, a computer system is used employing a database of available transports, defined as start points, end point and time, which can be matched up to the users requirements by joining up these elements of a transport trajectory to make a whole trip. There was also a second element of the invention (claims 11 and 12), that of using the above system for a method of coordinating a transportation process by generating the necessary data to direct the transport of unspecified articles by their respective carriers.
Bloomberg LP's Application
Pumfrey J considered that the contribution of the application lay in the idea of appropriately treating data to match the requirements of a particular end user prior to its transmission to that end user. The invention was only to be performed by a computer program, and despite the suggestion that the virtue of the invention was improved interoperability between pieces of hardware there was no such limitation to hardware in the claims. The advance made by the application was therefore a computer program as such and it failed on step three of the above four-step test. Interestingly, Pumfrey J went on to consider whether there was a technical effect under step four of the test. He found that there was not. In doing so, however, Pumfrey provided more guidance to what may be patentable, by contrasting Bloomberg LP's Application with the RIM 3 case where he had held that a claim to treatment of data to ensure more rapid transmission over reduced bandwidth was a patentable technical effect.
Pablo Cappellini's Application
Pumfrey J did not hesitate to hold that the first, claim 1, aspect of the application was not patentable. There was no "physical" or "real-world" effect. The application was essentially for the combination of a database and a computer performed algorithm to use it. At best, he thought that it was a computer program (which is excluded subject-matter) resulting in the presentation of information (also excluded subject-matter). He equally considered that it was a mathematical method alone (further excluded subject-matter).
He was more uncertain about the second aspect of the invention (claims 11 and 12), because there seemed at least the possibility of producing a particular physical effect, that is the effect of moving known items (by lorries, vans, taxis etc). However, he went on to conclude that such a method of performing such a set of journeys was actually a method of doing business. The subject-matter of the application was therefore entirely excluded by step three of the test with no technical effect under step 4.
In a convenient piece of timing, the EPO responded yesterday to the suggestions that Jacob LJ made in Aerotel/Macrossan that certain questions should be asked of an Enlarged Board of Appeal at the European Patent Office to secure further clarification on excluded subject matter and ensure a consistent approach from the EPO.
The President of the EPO, Alain Pompidou, has effectively rebuffed Jacob LJ by replying that he does not find sufficient legal basis to refer questions regarding the exclusions to patentability to the Enlarged Board of Appeal.
"Leaving aside Board of Appeal case law the line of reasoning of which has been abandoned by later case law, I believe there are insufficient differences between current Board of Appeal decisions dealing with Article 52 EPC exclusions on important points of law that would justify a referral at this stage. This of course does not mean that a clarification of certain issues by the Enlarged Board of Appeal would not be welcomed. The EPO will continue to monitor case law closely, whereby I believe the appropriate moment for a referral would be where the approach taken by one Board of Appeal would lead to the grant of a patent whereas the approach taken by another Board would not."
In the decisions of Pablo Cappellini's Application and Bloomberg LP's Application Pumfrey J has demonstrated in practice that as far as English law is concerned there is now a clear starting point for the consideration of computer-related invention applications, and indeed applications and patents that deal with subject matter that may fall into the other exclusions under section 1(2) of the Patents Act (Article 52 EPC). It is clear that the four step test of Aerotel/Macrossan will be the applicable test under English law for the foreseeable future.
Whilst every case must of course be decided on its own facts, a body of cases can now be built up to assist those interested in applying for such inventions in the UK Patent Office. Whilst there will be difficult borderline cases, as Pumfrey J found in considering claims 11 and 12 of Pablo Cappellini's Application, there is at least the security of knowing that they are being decided from a consistent starting point.
However, this is not so in the EPO. It is perhaps surprising in the light of Jacob LJ's comments that Alain Pompidou views the case law in the EPO as having insufficient differences to merit a referral to the Enlarged Board. Consequently, there remains some confusion as to the approach that the EPO will apply to such applications.