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A recent decision from the
European Patent Office (T 0154/04, Duns Licensing Associates) concerning how to
assess patentability of business methods has strongly criticised the UK Court
of Appeal’s 2006 decision Macrossan & Aerotel Ltd – [2006] EWCA Civ
1371(see our note here) as being “irreconcilable with the European Patent Convention”.
In theory, the UK Intellectual
Property Office and the UK Courts are applying the same law as the European
Patent Office, so should be reaching the same results on patentability, but
patent practitioners are increasingly finding a big disparity between theory
and practice.
The UK Macrossan decision set out
a four step approach for assessing whether an invention should be excluded from
patentability:
1) properly
construe the claim;
2) identify
the actual contribution;
3) ask whether
it falls solely within the excluded subject matter;
4) check
whether the actual or alleged contribution is actually technical in nature.
In T 0154/04, the EPO’s Technical
Board of Appeal have dismissed that approach as being inconsistent with a
good-faith interpretation of the European Patent Convention. In the EPO’s
decision, the Technical Board established that there are four requirements for
patentability: an invention, novelty, inventive step and industrial
applicability. These are separate and independent criteria of patentability. In
particular, novelty is not a requisite of an invention (as might be understood
by the lay meaning of “invention”).
In assessing whether there is an
invention, there must be some technical character. That is, there must be at
least one technical term in the claimed invention, i.e. one which does not lie
solely within an excluded field (e.g. that of business methods). A mix of
technical and non-technical features is permitted.
In assessing novelty and
inventive step, non-technical features to the extent that they do not
interact with the technical features of the claim to solve the technical
problem, should not be taken into account. Non-technical features “as such”
i.e. those which do not even interact with technical features to provide the
technical contribution, should be ignored. When considering inventive step, the
problem solved by the invention must be a technical problem (although the
problem may be formulated using an aim to be achieved in a non-technical
field). Putting it another way, “the innovation
must be on the technical side”.
This teaching is generally
consistent with previous teaching of the EPO, but we have not previously seen
such strong and direct criticism of the UK approach from the EPO. They seem to
believe that the four step approach proposed in Macrossan presupposes that
“novel and inventive purely excluded matter does not count as a “technical
contribution”” (presumably it would fall at step 3) of the four step test?),
whereas the EPO’s view is that a
non-technical feature may, in fact, interact with technical elements so as to
produce a technical effect. There are a number of other points of disagreement.
So, the result so far seems to be
EPO 1: UK 0 and who can say when the matter will be resolved? In the meantime,
we would certainly be agreeing with most patent practitioners that, rightly or
wrongly, obtaining a patent for a method of doing business, or indeed for
software, is currently considerably easier at the EPO than before the UK
Intellectual Property Office. But, we await the next instalment in the debate.
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