Software patents

Court of Appeal and High Court decisions since Macrossan and Symbian

Highlights include:

In Re AT&T Knowledge Ventures [2009] EWHC 343 (Pat), the High Court dismissed two joined appeals from rejections of patent applications relating to a software application which acted as an intermediary between a user wishing to buy digital content and digital content suppliers as being unpatentable subject matter. This case is of note since it was the first High Court case post-Symbian and because Lewison J provided guidance about what constitutes a “technical effect” (see Legal update, High Court considers the meaning and effect of Symbian and box, The “five signposts”).

In Cranway v Playtech and others [2009] EWHC 1588 (Pat), the High Court held that a patent for a system of online gaming was invalid as being anticipated by and obvious over a prior art system, and that the invention was also excluded from patentability as being for a business method and software as such (see Legal update, High Court holds online gaming patent invalid).

In Gemstar-TV Guide International v Virgin Media and another [2009] EWHC 3068 (Ch), the High Court held that two patents relating to on-screen, electronic TV programme guides (EPGs) were invalid as being directed to unpatentable computer programs, with no relevant technical effect. Mann J also held that they were presentations of information “as such”, applying the same relevant technical-effect tests as UK law applies to computer programs. However, a third patent, which provided a facility for transferring recorded programs with their EPG metadata to another storage medium, was not excluded from patentability under either head as it provided a relevant technical effect. The court applied the “five signposts” set out in AT&T Knowledge Ventures (see box, The “five signposts”). All three patents were invalid over prior art. (See Legal update, High Court finds electronic TV guide patents invalid.)

IPO decisions after Macrossan and Symbian

There have been many IPO appeal decisions on software and business method inventions since the Court of Appeal decisions in Aerotel/Macrossan and Symbian, most of which have found the invention unpatentable under Article 52(2). Below is a selection of decisions that indicate general trends.

The first opinion handed down by the IPO since the Macrossan decision suggested that it was taking a conservative approach to the new case law (see Legal update, Patent Office gives first opinion following Aerotel/Macrossan appeal decision).

In subsequent cases, questions have arisen with regard to the role and relevance of the fourth step in the Aerotel/Macrossan test (which involves checking whether the contribution is “technical”). For example:

In January 2009, after the Court of Appeal decision in Symbian, a hearing officer refused a patent application relating to use of a game controller in a trading system on the basis that it was directed to excluded subject matter. Shortly thereafter the same hearing officer also refused, on the same basis, a patent application relating to the use of frequency spread (previously regarded as a problem) in a sonic well-logging system to provide output quality control. In both cases he mentioned Symbian but continued to apply the Aerotel/Macrossan four-step test (see Legal update, IPO decisions show approach to software inventions has not changed).

In February 2009, a hearing officer applied Symbian in rejecting a patent application for a medical ordering system (see Legal update, IPO considers effect of Symbian on examination of patentability of medical computer system). He decided that the invention was no more than a computer program, even though it operated on data representing real physical entities to manufacture an output in physical form. The practical achievement of the invention was a better method of doing business, which was not technical.

There have been some cases where the hearing officer disagreed with an examiner’s objection of unpatentable subject matter:

In January 2008, a hearing officer held that an invention concerned with the extraction of data in air traffic control (ATC) systems for use by business systems without compromising the security of the ATC system was inventive and was not excluded from patentability as being a computer program as such. A point of general interest was the hearing officer’s approach of dealing with inventive step (rather than excluded subject matter) first (which resembles the EPO’s). This meant that the contribution to the art had been fully considered before starting on the Aerotel analysis, which perhaps led to the favourable decision on the section 1(2) issue (see Legal update, IPO decides air traffic control data system is patentable).

In July 2008, an IPO hearing officer held that the addition of a generic manufacturing step to claims specifying a computerised method of designing drill bits for oil drilling was sufficient under UK case law to make the invention patentable subject matter, even though similar claims without the manufacturing step had previously been held unpatentable. The hearing officer had difficulty reconciling cases that seemed inconsistent as to whether adding a manufacturing step could save the otherwise unpatentable subject matter, but did so by considering whether the subject matter of the invention was sufficiently close to the dividing line that adding a manufacturing step was sufficient to take it over (see Legal update, IPO finds drill bit design method patentable when combined with manufacturing step).

In April 2009, a hearing officer overruled the rejection by an examiner of an application relating to a method of developing networked software applications for use on mobile phones as software as such. In the method, the developer used a computer to develop the code, modules of which were then transferred to the mobile using the wireless network (see Legal update, IPO holds invention for developing mobile-phone software patentable). Previously, the software had been developed either on the phone itself or by use of a computer with software emulating the phone, both of which presented technical problems. The hearing officer, applying Symbian, held that the invention made a technical contribution by solving a technical problem and so was not software as such, and that it could not reasonably be said to be a method of performing a mental act.

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