CFPH LLC's Applications

JurisdictionEngland & Wales
CourtChancery Division (Patents Court)
JudgeMr Peter Prescott QC
Judgment Date21 July 2005
Neutral Citation[2005] EWHC 1589 (Pat)
Docket NumberCase No: CH 2005 APP 0009
Date21 July 2005

[2005] EWHC 1589 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Royal Courts of Justice

Strand, London, WC2A 2LL

Before

Mr Peter Prescott QC (Sitting as a Deputy Judge)

Case No: CH 2005 APP 0009

Between
In the Matter of Patent Applications Gb 0226884.3 and 0419317.3 by Cfph L.l.c.

Mr Douglas Campbell (instructed by Kilburn & Strode) for the Appellants

Mr Colin Birss (instructed by The Treasury Solicitor) for the Comptroller-General of Patents

Hearing date: 17 March 2005

I direct that pursuant to CPR PD 39A §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 Peter Prescott QC

Mr Peter Prescott QC

I. INTRODUCTION

1

What is an 'invention'? That is what this case is about.

2

Some kinds of ideas cannot be patented at all even if new and very ingenious. For example, you could not patent the plot of a detective story. It would not be considered to be an 'invention' under patent law. Nor could J.S. Bach have patented his Two-Part inventions, and for much the same reason. It goes to show that patent law uses the word 'invention' in a rather special way.

3

Indeed it uses it in several, completely different, ways. You have to work out the meaning from the context 1.

(a) Sometimes it is meant that an idea is not obvious (is clever enough to deserve patent protection): as where Tomlin J referred to the scintilla of invention required to support a patent 2, or as where Lord Herschell warned of the danger of being misled by the very simplicity of an apparatus "into the belief that no invention was needed to produce it" 3. Modem legislation calls this inventive step and we can avoid confusion by using that phrase.

(b) At other times 'invention' is referring to what the patentee himself claims it to be (he may he right, he may be wrong). For example, when a judge or hearing officer says: "I hold that the invention of claim 1 was not new". A striking example is section 72(1)(a) of the Patents Act 1977, which says that a patent for an invention may be revoked if "the invention is not a patentable invention".

4

At still other times, however, the word 'invention' refers to the kind of idea that can be patented at all. It is in that sense that your clever detective story plot is not 'an invention'. And it is with that sense that our ease is connected.

5

Often, the law is easy to apply. It is clear that you can patent a new and non-obvious medicine or mousetrap. But it is just as clear that you cannot patent a new and non-obvious tax-efficiency scheme. That is excluded subject-matter. The problem arises when someone wants to patent an idea that is a hybrid, or mixture of the two: excluded and non-excluded subject-matter.

6

This is an appeal from a decision of Mr H Jones, Deputy Director acting for the Comptroller-General of Patents, dated 14 December 2004. He rejected two patent applications on the ground that they were not for 'inventions', but only for business methods. It is a controversial topic in patent law. For, nearly every time the problem comes up, you will find a business method that is mixed together with what is technology. A

typical instance is an automatic machine that is set up to carry out a business method.

7

In order to decide whether an idea of that sort is patentable the UK Patent Office does not use the same reasoning as the European Patent Office. Even though they are working under what is essentially the same legislation. That is an important point raised by this appeal. The Appellants, Mr Douglas Campbell their counsel, and Messrs Kilburn & Strode their patent attorneys have performed a public service by raising it.

8

Mr Douglas Campbell argued that our Patent Office ought to employ the reasoning that is used by the European Patent Office. Mr Colin Birss, who appeared for the Patent Office, argued that they should be allowed to continue as before. He said that it normally leads to the same result anyway. I shall examine the reasoning, and the merits of those arguments, later in this judgment.

II. LIFTING THE CARPET

9

What is an 'invention' (in the sense I am now concerned with) is a topic bedevilled by verbal formulae—and by the sweeping of problems under the carpet. So, before I go any further I want to bring some of those problems out into the light of day.

10

But first: does it really matter? Is it merely a sterile argument about the meaning of words? To which I answer that whoever controls the meaning of 'invention' controls what can be patented and hence an important aspect of industrial policy. There can be but one justification for having a patent system, and that is that it is good for the people of the country. If the patenting of certain things does more harm than good, it matters. Patents that are wrongly granted can be very expensive to challenge and may deter small and medium enterprises.

'Technical'

11

At the risk of sonic inaccuracy, patents are supposed to be granted for non-obvious advances in technology. I said "at the risk of some inaccuracy". We sense that we know 'technology' when we see it. And no doubt that is correct, most of the time.

12

But it is not correct all of the time. Therein lies the delusion. You can prove that for yourself by trying to find a definition of 'technology' that everybody can agree on. The more you try, the more you will discover what a horribly imprecise concept it is. (Would it cover an astro-navigation chart? 4 Naval tactics? 5 Double-entry bookkeeping? The phonetic alphabet'? 6) Many have tried to frame an acceptable definition, but to the best of my knowledge none have succeeded 7. It is like the equally vexing question, "What is Art?'.

The hard truth is this: concepts of that sort have no existence, and words of that sort have no meaning, except by human convention; but human beings are hopelessly in disagreement at the margin. And it is, precisely, at the margin of uncertainty that cases come up for decision.

13

The same goes for the cognate word 'technical'. A number of surveys in the context of patenting have shown that, not only is there no agreement about the meaning of the word, but that most informed respondents agree that "trying to define the words 'technical' or 'technology' is a dead-end" 8. That 'technical' is vague has implicitly been recognised in our courts too. For example, in Gale's Application [1991] RPC 305, 328 Nicholls LJ said that Mr Gale's algorithm did not solve a 'technical' problem lying within the computer. He continued:

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 field,

But for my part I think Nicholls LJ was too modest. I believe his difficulty arose, not through lack of expertise, but because of the inherent vagueness of the concept itself. In Fujitsu Limited's Application [1997] EWCA Civ 1174, [1997] RPC 608 Aldous LJ said:

I like Nicholls LJ have difficulty in identifying clearly the boundary line between what is and what is not a technical contribution.

Likewise the German Federal Court of Justice in XZB 15/98, "Sprachanalyseeinrichtung", 11 May 2000.

14

I mention this near the outset of this judgment because it is important. If you look at the case law on the subject, both here and in Munich, you will find many references to "technical contribution", "technical result", and so on, being touchstones by which these cases are decided. The use of the word 'technical' as a short-hand expression in order to identify patentable subject-matter is often convenient. But it should be remembered that it was not used by the framers of the Patents Act 1977 or the European Patent Convention when they wanted to tell us what is or is not an 'invention'. In any case the word 'technical' is not a solution. It is merely a restatement of the problem in different and more imprecise language. I am not claiming that it is wrong to decide cases with reference to the word 'technical'. It happens all the time. What I am saying is that it is not a panacea. It is a useful servant but a dangerous master.

'Invention' Cannot Be Defined

15

How, then, does the law define what is an 'invention'? The answer is that nobody has ever come up with a satisfactory, all-embracing definition and I do not suppose anybody will,

16

But how can that be so? It is because we are dealing with a rather peculiar branch of human knowledge. First, what is an 'invention' is no more than a convention of human culture. Secondly, it is about legislating for ideas that have not yet been thought of and which, perhaps, at present, cannot be conceived. When you stop to think about it, it is rather odd. I want to stress this too at the outset and to draw attention to the rather unusual nature of this part of the law.

17

By its very nature, therefore, the subject cannot be reduced to a precise verbal formula. It is, indeed, something of a moving target, because the progress of technology continues apace. That was recognised by a very strong High Court of Australia (Dixon CJ, Kitto and Windeyer JJ) in NRDC's Application rep. [1961] RPC at 1629. After pointing out that it was "a field which already, in 1623, was excitingly unpredictable", their Honours said:

To attempt to place upon the idea the fetters of an exact verbal formula could never have been sound. It would be unsound to the point of folly to attempt to do so now, when science has made such advances…

Exclusions

18

Therefore, in telling us about patentable inventions the Patents Act 1 977 does not try to define what is an 'invention'. Instead, it contains a list of things that are not inventions. I have already hinted at one exclusion: 'a literary, dramatic, musical or artistic...

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