Friday, 1 November 2013

In search of a technical effect

This is a repost of an article that will shortly be appearing in the October 2013 edition of the CIPA Journal. For anyone who doesn't want to know the score before the issue is published, please look away now. Alternatively, read on for a version in which I have incorporated links to the relevant case law and other material. 

Law and practice on what is considered patentable at the UK and European patent offices has been running along parallel lines for as long as the EPC has been in existence. While the direction of travel is always roughly the same, though with occasional diversions, the lines never seem to converge completely. At the risk of a gross oversimplification, this can be largely blamed on the difference between the law of precedent as applied in the UK and at the EPO. On one side, the EPO Boards of Appeal are apparently content to allow "lines of reasoning" to be developed, and sometimes abandoned, as time goes on and technology develops (see for example T 1227/05, commented by me here on the IPKat). Law and practice in the UK on the other hand has followed more of a process of accretion and correction, where previous case law has tended to act as a restraint on any major changes, although changes at the boundary can and do sometimes happen.

There have been six Court of Appeal judgments in the area of patentability under section 1(2) over the period from 1989 to 2013 (see here for a full list). From these, the law in the UK can be considered settled in a way that is roughly based on the four step test put forward by the UK IPO and approved by Jacob LJ in Aerotel/Macrossan from 2006, with various caveats and fudges applied that try to make the test stay in line with earlier Court of Appeal judgments as well as being as consistent as possible with the approach taken at the EPO. To achieve complete consistency between the UK IPO and EPO from the different approaches is, of course, impossible. In an ideal world, the same test would be applied regardless of the office in which an application was being prosecuted, and the same result obtained, not least because the effect of a patent granted by the UK office is the same as one granted by the EPO. This ideal world is not, however, going to appear in the foreseeable future. A change to match the EPO approach in the UK would require abandonment of not just the Aerotel/Macrossan test and related Court of Appeal case law, but also the well-established Windsurfing/Pozzolli test for inventive step. This is because the EPO test for patentability is inextricably linked with the problem-solution approach for assessing inventive step. Barring a highly surprising result from the UK Supreme Court, and ignoring the long-term possibility of the IPO ceasing to grant patents together with UK courts no longer having jurisdiction over UK patents, this is not going to happen. On the other side, it is unlikely in the extreme that the EPO Boards of Appeal would consider abandoning the universally applied problem-solution approach in order to fit with the different approach taken by only one member state. Since a fundamental change in approach is unlikely from either side, the best that could reasonably be hoped for is that outcomes are as closely aligned as possible. As the Enlarged Board of Appeal stated in G3/08 in relation to the exclusion of computer programs, “a uniform understanding of where to draw the line between applications relating to programs for computers as such [...] still cannot be assumed despite considerable convergence in recent court rulings” (point 4.1 of the reasons). However, despite the discrepancies in approach and principles, as Lord Neuberger stated in Symbian, there is clearly a strong desire for the two offices to be “marching together as far as possible”, and “where there may be a difference of approach or of principle, one must try to minimise the consequent differences in terms of the outcome in particular patent cases” (paragraph 61).

Since we can safely assume, at least for the foreseeable future, that the differences in approach and principle are not going to change substantially, the question becomes: how do we ensure that the outcomes are as closely aligned as possible? Now that the heat and antagonism arising from Jacob LJ’s judgment in Aerotel/Macrossan, which claimed that the EPO Boards of Appeal decisions were mutually contradictory, and the resulting response from Herr Steinbrener in T 154/04 accusing the Court of Appeal of missing the point, has dissipated, others have attempted to patch up any differences by using more common language that can be applied to both approaches. A common theme is the unfortunate but seemingly inevitable use of the word “technical”, in particular in the form of tests and checks for whether an invention provides a “technical effect”. Even though no-one has been able to provide a stable definition for what the word “technical” actually means in the context of patentability, this does not seem to matter because decisions from both sides are building up regarding what can and cannot provide a technical effect, while all decisions carefully avoid providing a definition of the exact boundary outside of which there would be no such effect.

In the UK, following the Court of Appeal judgments in Symbian and Aerotel, an attempt was made by Lewison J (as he then was) in Re AT&T Knowledge Ventures LP [2009] EWHC 343 (Pat) to summarise, in the form of a series of useful “signposts”, what aspects of an invention might point towards a relevant technical effect. These signposts are:

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.

One benefit of these signposts is that there is no need for the word “technical”; the signposts make just as much sense without it. Hearing officers at the IPO seem to like the signposts, and have used them in practically every decision since AT&T, although in the vast majority of cases to show that a claimed invention does not in fact demonstrate any technical effect. The Court of Appeal, in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 (see here for my comments) has indicated that these are “useful signposts, forming as they do part of the essential reasoning in many of the decisions to which we must look for guidance. But that does not mean to say they will be determinative in every case”, but considered that the fourth was too narrowly put, which should instead ask “whether the computer is a better computer in the sense of running more efficiently and effectively as a computer” (paragraph 51 of Kitchin LJ’s judgment). This has been recently confirmed in Lantana Ltd’s Application [2013] EWHC 2673 (Pat), where Birss J has simply rewritten the signposts as modified by HTC v Apple.

Although the signposts, which are now firmly established in UK practice, are useful pointers towards what might be patentable, they are non-exhaustive and do not necessarily apply in every case. As Lewison J put it in AT&T, “it is still necessary to consider whether the claimed technical effect lies solely in excluded matter” (paragraph 41). This caveat leaves plenty of room for hearing officers and judges to conclude that an invention would still be excluded from patentability. In practice though there have been no decisions from the IPO where one of the signposts has pointed towards a technical effect but where the hearing officer has nevertheless still considered the invention to be excluded. The possibility therefore remains open, but it seems unlikely to be used in practice.

One of the main problems with aligning the UK approach to patentability with that of the EPO’s is that an assessment of patentability is typically made, according to the Aerotel test, without any real consideration of the prior art. The contribution (step two) is often assessed without looking at where the claimed invention differs from the closest prior art, and sometimes even without a search having been carried out. In some cases an assessment of novelty and inventive step is carried out by the examiner, and the issue of patentability is the only issue remaining to be resolved. In most cases, however, there is no real assessment of novelty and inventive step and patentability is the sole issue in question. This approach is completely at odds with that taken at the EPO, where the assessment of patentability is deliberately intertwined with that of inventive step through use of the problem-solution approach. This approach requires the closest prior art to be established, which in some business method cases might be simply a ‘general purpose computer’ (requiring no actual search to be carried out). The difference over this prior art is then established, and what technical effect this difference has. The objective technical problem is derived from the effect, and finally a judgment made as to whether the skilled person would find the difference to be obvious. The assessment of patentability is incorporated in the steps of assessing what the technical effect is. In line with the leading case on the subject, T 641/00, any differences that are not considered to be technical are moved into the problem to be solved, rather than considered as being part of the solution. In this way, any non-technical aspects are considered not to contribute to the technical character of the invention. As stated in T 641/00, “the problem must be a technical problem, it must actually be solved by the solution claimed, all the features in the claim should contribute to the solution, and the problem must be one that the skilled person in the particular technical field might be asked to solve at the priority date” (point 5 of the reasons), and “an invention in the sense of Article 52 EPC can only be made up of those features which contribute to said technical character” (point 6).

A recent decision from the EPO Boards of Appeal, T 1670/07 (commented on by the IPKat here), has reviewed in more detail what would be considered to be technical. As with T 641/00 (which, strangely, was not cited in the decision), the consideration at the EPO is largely a negative one, i.e. there are certain aspects that are considered not to be technical. Based on this decision, which related to patentability of a method of facilitating shopping using a mobile device, selecting multiple vendors for a shopping order and provision of a shopping itinerary based on a user profile are both considered to be not technical. The Board also considered that there were certain ‘fallacies’ in the arguments presented for a technical effect, which in essence claimed that non-technical aspects could in some circumstances contribute to the technical character of an invention. The Board considered that they could not.

How then, in practice, do these different approaches to patentability work, and do they result in decisions where one would favour patentability for particular types of inventions over the other? The answer appears to be in looking at how a technical effect is defined, rather than the overall approach to be followed. Consideration of a technical effect is now at least common to both approaches, even if it is used at different steps in the process. There is also a degree of convergence in what would be considered to be a technical effect, even though the way to assess what such an effect might be is a positive one in the UK (i.e. deciding whether the effect can be found from a list) and a negative one at the EPO (i.e. whether the claimed technical effect is one that has been previously decided not to be technical). In the end though, if there is a technical effect according to the UK approach, there will always be at least an arguable case for the effect to contribute to the technical character of the invention according to the EPO approach. Decisions may vary according to the facts of particular cases, and to how well arguments are made but in general, despite the differences in approach, the good news at the moment is that there should be no significant difference in result.