AT&T Knowledge Ventures & CVON Innovations v The Comptroller General General of Patents, Designs & Trade Marks
| Jurisdiction | England & Wales |
| Judge | THE HONOURABLE MR. JUSTICE LEWISON,MR. JUSTICE LEWISON |
| Judgment Date | 03 March 2009 |
| Neutral Citation | [2009] EWHC 343 (Pat) |
| Date | 03 March 2009 |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: CH/2008/ APP/ 0509 |
[2009] EWHC 343 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Before: THE HONOURABLE MR. JUSTICE LEWISON
Case No: CH/2008/ APP/ 0509
CH/2008/APP/0619
Mr Richard Davis (instructed by RGC Jenkins & Co.) for AT&T [and] (instructed by EIP) for CVON the Appellants
Mr Michael Tappin (instructed by The Treasury Solicitor) for the Comptroller General of Patents
Hearing dates: 17, 18 February 2009
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
MR. JUSTICE LEWISON:
Introduction
AT & T Knowledge Ventures LP and CVON Innovations Ltd each appeal against a decision by UKIPO that their claimed inventions were not patentable. In AT & T's case the decision was that of Mr RC Kennell, acting for the Comptroller; and in CVON's case the decision was that of Dr JE Porter, again acting for the Comptroller.
The law
The appeals raise, once again, the scope of the exclusions from patentability contained in section 1 (2) of the Patents Act 1977, which corresponds to Article 52 of the European Patent Convention. Article 52, as amended, provides:
“(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.”
The scope of these exclusions has now been considered twice by the Court of Appeal in recent times: first in Aerotel v. Telco; Macrossan's Application [2007] RPC 7 (“ Aerotel”), and second in Symbian Ltd v Comptroller-General of Patents [2009] RPC 1 (“Symbian”). I think that my first task is to consider what these two cases decide.
In Aerotel the Court of Appeal laid down the following four step test to decide whether a claimed invention is patentable:
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.
The first step is plainly an exercise in claim construction and will be tailored to the patent or application in suit. No general point of principle arises. In Aerotel Jacob LJ described the second step as follows:
“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.”
He described the third step as follows:
“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.”
In deciding whether the contribution is solely of excluded matter the Court of Appeal held that the correct approach was what it described as “the technical effect approach with the rider”. This was summarised earlier in the judgment as being:
“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.”
If I may venture two comments at this stage: first, asking what the inventor has added to human knowledge necessarily means that the questioner has some notion of the state of the art. In other words, patentability cannot be put into a watertight compartment completely separate from novelty. Second, in Aerotel the court did not elucidate what it meant by “technical”. What this encompasses is something to which I will return.
In the course of its review of a number of decisions of the EPO Technical Board of Appeal (“the Board”) the Court of Appeal was critical of a number of its decisions. This led to some ill-feeling in Munich; and in its turn the Board accused the approach of the Court of Appeal as not being “consistent with good faith interpretation of the EPC” (Duns LicensingAssociates T 0154/04). Thus the stage was set for Symbian.
In Symbian Lord Neuberger of Abbotsbury said that the approach in Aerotel and the approach of the Board could be reconciled (§ 11). He said of the third step in Aerotel:
“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”.”
Stripping out the double negative, Lord Neuberger was saying that the two tests were the same. Continuing, he said (§ 13):
“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.”
Having referred to a further decision of the Board, he said that it was necessary to find that the contribution must be “technical” (§ 15). He then warned against following a staged approach blindly in every case (§ 16). I take this to mean that the four stage Aerotel test is not inevitable. Lord Neuberger then discussed the rival submissions on the appeal. He said:
“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.”
Curiously, having said that the “technical contribution” test is helpful, he went on (§ 31) to endorse remarks made by a German patent judge deprecating the use of the word “technical” not least because a computer program's interaction with the hardware is always, in a sense “technical”. After a discussion of authority, Lord Neuberger concluded that the court should follow the approach laid down in Aerotel (§§ 44 and 46). Lord Neuberger then went on to apply “the principles” to the facts. What, then, are the principles? I think they are:
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.
In his application of the principles to the facts Lord Neuberger gave some consideration to the meaning of “technical”. He said (§§ 48 and 49):
“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.
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