|[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]|
England and Wales High Court (Patents Court) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> AT&T Knowledge Ventures LP, Re  EWHC 343 (Pat) (03 March 2009)
Cite as:  FSR 19,  Bus LR D51,  EWHC 343 (Pat)
[New search] [Context] [View without highlighting] [Printable RTF version] [Buy ICLR report:  Bus LR D51] [Help]
Strand, London, WC2A 2LL
B e f o r e :
| Case No: CH/2008/ APP/ 0509
|IN THE MATTER OF the Patents Act 1977
|IN THE MATTER OF UK Patent Application No. GB 0602349.3 in the name of AT&T KNOWLEDGE VENTURES LP
|IN THE MATTER OF an appeal from the decision of the Comptroller General of Patents dated 2 July 2008
|Case No: CH/2008/APP/0619
|IN THE MATTER OF the Patents Act 1977
|IN THE MATTER OF UK Patent Application No. GB 0623571.7 in the name of CVON Innovations Limited
|IN THE MATTER OF an appeal from the decision of the Comptroller General of Patents dated 15 August 2008
Mr Michael Tappin (instructed by The Treasury Solicitor) for the Comptroller General of Patents
Hearing dates: 17, 18 February 2009
Crown Copyright ©
MR. JUSTICE LEWISON:
"(1) European patents shall be granted for any inventions in all fields of technology which are susceptible of industrial application, which are new and which involve an inventive step.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(c) schemes, rules or methods for performing mental acts, playing games or doing business, and programs for computers;
(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such."
i) properly construe the claim;
ii) identify the actual contribution;
iii) ask whether the identified contribution falls solely within the excluded subject matter;
iv) check whether the actual or alleged contribution is actually technical in nature.
"How do you assess the contribution? Mr Birss submits that the test is workable – it is an exercise in judgment probably involving the problem to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended."
"The third step – is the contribution solely of excluded matter? – is merely an expression of the "as such" qualification of Art.52(3). During the course of argument Mr Birss accepted a re-formulation of the third step: Ask whether the contribution thus identified consists of excluded subject matter as such? We think either formulation will do – they mean the same thing."
"Ask whether the invention as defined in the claim makes a technical contribution to the known art - if no, Art. 52(2) applies. A possible clarification (at least by way of exclusion) of this approach is to add the rider that novel or inventive purely excluded matter does not count as a "technical contribution."
"So far as we can see, there is no reason, at least in principle, why that test should not amount to the same as that identified in Duns, namely whether the contribution cannot be characterised as "technical"."
"As for the Board's approach in Duns, it appears to us to involve explaining the limitation "as such" in art 52(3) as imposing a requirement that a computer program has a technical effect before it is patentable. Of course, this can be said to beg the question as to what constitutes technical effect, but the point remains that the requirement represents the Board's view of the effect of art 52(2) and art 52(3). Accordingly, at least on the question of the proper approach to an art 52 argument, there is no necessary inconsistency between the two decisions."
"29 Finally, the Comptroller makes the point that there is no reference to any "technical" requirement or test in art 52, and, indeed, that the meaning and effect of the term have never been explained by the Board. We see the force of that point. The stipulation of a requirement for a technical contribution can lead to a potentially dangerous exercise of asking whether an application satisfies that stipulation rather than whether it satisfies the statutory requirement itself.
30 The danger is all the greater because the concept of a "technical" contribution is imprecise, and could easily mean different things to different people. But that does not mean that the "technical contribution" test is unhelpful or inappropriate. Given the lack of clarity in the concept of "programs for computers … as such", it is understandable, indeed desirable, that tribunals charged with applying that expression give guidance as to its meaning. However, it is essential that such guidance should be clear: otherwise, it has all the disadvantages of the original obscure wording, with the added disadvantage of not even providing the actual legislative test."
i) That the four-stage test in Aerotel remains the law, but it should not be followed blindly;
ii) That the question whether the contribution is "technical" must be asked and answered in the course of the inquiry, but that it does not matter whether it is asked at stage three or stage four.
"Given that the Application seeks to register a computer program, the issue has to be resolved by answering the question whether it reveals a "technical" contribution to the state of the art. Despite Mr Prescott's sustained and elegant, and not unjustified, attack on the vagueness and arbitrariness of the term "technical", that question embodies the consistent jurisprudence of the Board (even though the precise meaning given to the term has not been consistent), and it has been applied by this court in Merrill Lynch, Gale, and (arguably with an inconsistent result) Fujitsu; indeed, it was accepted, through stage 4, in Aerotel.
In deciding whether the Application reveals a "technical" contribution, it seems to us that the most reliable guidance is to be found in the Board's analysis in Vicom and the two IBM Corp. decisions, and in what this court said in Merrill Lynch and Gale."
"… we believe that it would also be dangerous to suggest that there is a clear rule available to determine whether or not a program is excluded by art 52(2)(c). Each case must be determined by reference to its particular facts and features, bearing in mind the guidance given in the decisions mentioned in the previous paragraph."
"The Board is of the opinion that a claim directed to a technical process which process is carried out under the control of a program (be this implemented in hardware or in software), cannot be regarded as relating to a computer program as such within the meaning of Article 52(3) EPC, as it is the application of the program for determining the sequence of steps in the process for which in effect protection is sought. Consequently, such a claim is allowable under Article 52(2)(c) and (3) EPC."
"Generally claims which can be considered as being directed to a computer set up to operate in accordance with a specified program (whether by means of hardware or software) for controlling or carrying out a technical process cannot be regarded as relating to a computer program as such and thus are not objectionable under Article 52(2)(c) and (3) EPC."
"Generally speaking, an invention which would be patentable in accordance with conventional patentability criteria should not be excluded from protection by the mere fact that for its implementation modern technical means in the form of a computer program are used. Decisive is what technical contribution the invention as defined in the claim when considered as a whole makes to the known art."
"5. It can be concluded from the foregoing that the invention is concerned with the internal workings of the processors and the transmission equipment irrespective of the nature of the data and the way in which a particular application program operates on the data files. In so far the proposed control program is comparable to the conventional operating programs which are required for any computer to control and coordinate its internal basic functions and thereby permit the running of a number of programs for specific applications.
6. The Board holds the view that an invention relating to the coordination and control of the internal communication between programs and data files held at different processors in a data processing system having a plurality of interconnected data processors in a telecommunication network, and the features of which are not concerned with the nature of the data and the way in which a particular application program operates on them, is to be regarded as solving a problem which is essentially technical. Such an invention therefore is to be regarded as an invention within the meaning of Article 52(1) EPC. "
"Generally the Board takes the view that giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem."
"The application proposes a solution to a specific problem of this kind namely providing a visual indication about events occurring in the input/output device of a text processor. The solution includes the use of a computer program and certain tables stored in a memory to build up the phrases to be displayed.
9. Even if the basic idea underlying the present invention might be considered to reside in that computer program and the way the tables are structured, a claim directed to its use in the solution of a technical problem cannot be regarded in the Board's opinion as seeking protection for the program as such within the meaning of Article 52(2)(c) and (3) EPC."
"it cannot be permissible to patent an item excluded by section 1(2) under the guise of an article which contains that item — that is to say, in the case of a computer program, the patenting of a conventional computer containing that program. Something further is necessary. The nature of that addition is, I think, to be found in the Vicom case where it is stated: "Decisive is what technical contribution the invention makes to the known art". There must, I think, be some technical advance on the prior art in the form of a new result (e.g., a substantial increase in processing speed as in Vicom)."
"Now let it be supposed that claim 1 can be regarded as producing a new result in the form of a technical contribution to the prior art. That result, whatever the technical advance may be, is simply the production of a trading system. It is a data-processing system for doing a specific business, that is to say, making a trading market in securities. The end result, therefore, is simply "a method of doing business", and is excluded by section 1(2)(c). The fact that the method of doing business may be an improvement on previous methods of doing business does not seem to me to be material. The prohibition in section 1(2)(c) is generic; qualitative considerations do not enter into the matter. The section draws no distinction between the method by which the mode of doing business is achieved."
"Nor, as I understand the case as presented to us, do the instructions solve a "technical" problem lying within the computer, as happened with patent applications such as IBM Corp./Computer-related invention (Decision Tl15/85)  E.P.O.R. 107 and IBM Corp./Data processor network (Decision T06/83),  E.P.O.R. 91. I confess to having difficulty in identifying clearly the boundary line between what is and what is not a technical problem for this purpose. That, at least to some extent, may well be no more than a reflection of my lack of expertise in this technical field. But, as I understand it, in the present case Mr. Gale has devised an improvement in programming. What his instructions do, but it is all they do, is to prescribe for the cpu in a conventional computer a different set of calculations from those normally prescribed when the user wants a square root. I do not think that makes a claim to those instructions other than a claim to the instructions as such. The instructions do not define a new way of operating the computer in a technical sense, to adopt the expression used in IBM Corp./Document abstracting and receiving (Decision T22/85),  E.P.O.R. 98, 105"
"As Nicholls L.J. points out, other difficult cases can arise where the computer program, whether in hardware or software, produces a novel technical effect either on a process which is not itself a computing process (see VICOM/Computer-related invention (Decision T208/84),  2 E.P.O.R 74) or on the operation of the computer itself (see IBM Corp./Computer-related invention (Decision T115/85),  E.P.O.R. 107). But, in my judgment, those difficulties do not arise in the present case."
"Method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed." (My emphasis)
"The Board is of the firm belief, that it cannot have been the legislator's purpose and intent on the one hand to exclude from patent protection such subject matter, while on the other hand awarding protection to a technical implementation thereof, where the only identifiable contribution of the claimed technical implementation to the state of the art is the excluded subject-matter itself. It is noted that here the term "contribution" encompasses both means (i.e. tangible features of the implementation) and effects resulting from the implementation. In that case Article 52(2) EPC would be reduced to a mere requirement as to form, easily circumvented. The Board believes it is intended as substantive in nature, whatever considerations may have been the source of this exclusion at the time of its adoption."
"It follows from the above that the mere technical implementation of excluded subject-matter per se cannot form the basis for inventive step. The Board concludes that inventive step can be based only on the particular manner of implementation."
i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
iii) whether the claimed technical effect results in the computer being made to operate in a new way;
iv) whether there is an increase in the speed or reliability of the computer;
v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
AT & T's appeal
"In a brokerage system which interfaces to a network to allow a user to communicate with one or more third party digital content providers and to store and manage the digital content which he obtains, the provision of means to store information about the functionality and capability of one or more devices held by the user and to supply it to the provider so that the provider can supply content which is suitable for use on the device."
"I do not think that the contribution does in fact produce any relevant technical effect which would take it outside the computer program exclusion. It seems to me that in essence what the invention does is to provide, in a network-based system for supplying digital content, a more comprehensive list of information about the devices which the user owns, so that the supplier can avoid the risk of supplying digital content which cannot be used. Even if this is not simply the computerisation of a known process as was arguably the case in Macrossan and Fujitsu, I do not think that the contribution embodies any process for supplying content which exists outside a computer, or causes a computer to operate in any new way technically when processing information about the devices. Indeed, it seems to me that there is some similarity with Gale in that the invention provides a better way of carrying out something that a computer (or networked computer system) does, but not in a way which exists outside the computer or computer system. In my view there is ultimately no technical effect over and above the mere running of a program; the invention may well solve a problem but I do not think it is a technical one."
i) What we are looking for is a technical effect;
ii) In the case of a mixed invention the question is whether there is a relevant technical effect;
iii) All computers are in a sense technical so that although the mere computerisation of a method of doing business is technical, it is not a relevant technical contribution;
iv) If there is more than a mere computerisation of a method of doing business, (e.g. a teaching of how to computerise it) then the mode of computerisation adds to the sum of human knowledge and is a relevant technical effect;
v) One way of testing this is to postulate the patent being read by a businessman and a technical person. If only the businessman learns something new, then the patent teaches a method of doing business which is not patentable. But if the technical person (e.g. a software engineer) learns something new then there is a relevant technical effect.
i) There might be a time lag between a subscriber joining a group and being able to benefit from its advantages;
ii) If the whole of the third party database was transferred periodically there is an enormous amount of data which has to be transmitted to and then stored at the telecommunications network;
iii) Data might be transferred unnecessarily if a group member was not a subscriber to the particular telecommunications network or, although a subscriber, he did not want to use the advantages of group membership;
"Claim construction was dealt with fairly briefly at the hearing, and in my view there is no great difficulty in construing the independent claims. They relate to a mobile telecommunications network messaging system and method, in which group membership of a subscriber is authenticated (or not), and then used as a basis for modifying messages sent between users' terminals, at least one of whom is a subscriber.
15 This involves group membership data being received from a subscriber and used to identify an appropriate information source, access to which is requested using identification data. The response is used to authenticate (or not) membership of the group, and to update the subscriber records accordingly. When a message is being transmitted between user terminals, the messaging parties (at least one of whom is a subscriber) are identified from transmission data. The subscriber is then identified and their group membership is determined from the updated subscriber record. The message is modified on the basis of that membership and then transmitted to the receiving party's terminal."
"I agree with [CVON] that a contribution made by the invention is the process by which subscriber-driven updates may be effected to the group membership data." (§ 20)
"Thus, looking at the description and the invention as claimed, it seems to me that what has been added to the sum of human knowledge is not an improved mobile telecommunications network. Rather, the contribution made by the claimed invention is in providing subscriber-driven updating and authentication of the subscriber's group membership data, which is held as part of a message modification service in a mobile telecommunication network." (§ 44)
i) This is a particular method of implementing subscriber-driven updates and if it was only one out of many it was more than merely a method of doing business;
ii) The process was being run in a technically different way in order to obviate the need to convert data.
"In my view, allowing a subscriber to prompt for updates to and authentication of his group membership records is not a technical matter, but a decision in relation to the business of running a message modification service. In particular, it is a business choice, made when deciding how to run the message modification service, that one should obtain some sort of confirmation that the subscriber is a member of the group claimed. Furthermore, it is a business choice to allow the authentication to be prompted by the subscriber – that is to say, it is a business decision about how the authentication should be carried out. Thus, for example, it is a choice made in respect of the business of running a message modification service to decide to ask the subscriber to provide log-in details or other data, which are used to verify membership of a particular on-line forum or other group. The way in which this data is then used to carry out the authentication involves the conventional use of websites and the Internet. Thus the decision to use such an authentication step bestows no saving technical element upon the contribution as I have identified it.
48 It follows that there is nothing in these improvements which bring the claimed invention outside of the business method exclusion. The improvement that results is an improved business method – that is to say, a better way of using a conventional message modification system to modify the content of messages on the basis of subscribers' records."
i) The claimed invention does not make the computer work in a new or different way;
ii) The claimed invention does not operate irrespective of the data being processed. All that it does is to cause particular information to flow in a different direction;
iii) The claimed invention does not provide a technical solution to any alleged incompatibility of formats. It avoids the problem by changing the direction of flow of information;
iv) The message modification operates in exactly the same way however information about the subscriber is gathered;
v) The claimed invention does not result in an increase in the speed or reliability of the computer;
vi) The fact that there may be several ways of putting a method of doing business into practical operation does not mean that the selection of one of them is relevantly "technical". Each way of practical implementation may itself be a method of doing business;
vii) The reduction in time lag is precisely the kind of benefit that was rejected as relevantly technical in Merrill Lynch.