The High Court expressed this view in a case concerning
applications submitted by CFPH LLC for two patents for networked
interactive betting systems, designed to give users
up-to-the-minute information prior to the placing of bets.
Before the case went to the High Court the Hearing Officer at
the Patent Office had refused to grant the applications submitted
by CFPH on the grounds that they concerned only the provision of an
“improved transactional process over a computer network”. The
Hearing Officer concluded these amounted to "business method"
patent applications and as such were excluded from patentability
under the Patents Act.
Furthermore, said the hearing officer, no "technical
contribution" was made by the inventions (as would have been
required to make an otherwise excluded invention patentable), as
they merely represented “non-technical changes to a business method
in order to overcome technical problems”.
CFPH appealed, arguing that the Patent Office had considered the
question of “technical contribution” at the wrong stage of the
application process.
In submissions on behalf of CFPH it was argued that when it
comes to considering patent applications of this nature the Patent
Office currently considers this question of the "technical
contribution" at the first stage of the application process, when
deciding whether the subject matter of the application falls under
one of the exclusions. This approach follows the approach that has
been taken by the European Patent Office, and subsequently
supported by UK case law.
However, CFPH argued that the way in which the European Patent
Office consider these applications has now moved on, and that the
EPO now considers whether there has been a "technical contribution"
at the last stage of the application process, when the question of
"obviousness" is considered.
Peter Prescott QC, sitting as a Deputy Judge in the High Court,
agreed with CFPH that the EPO approach, while with some
difficulties, was the better line to take. Referring to the
technical contribution test, he said:
“Properly regarded, that was a two-stage
test that identified what was new (not disclosed in the past) and
then asked whether it was 'technical' (i.e. not excluded from
patentability). But it cannot be right to stop there. The new
advance also must not have been obvious to those skilled in the art
and that too must be under the description 'technical' (i.e. not
excluded from patentability). In practice it may not be useful to
consider whether something is an 'invention' without considering
whether it is new and non-obvious.
“A patentable invention is new and
non-obvious information about a thing or process that can be made
or used in industry. What is new and not obvious can be ascertained
by comparing what the inventor claims his invention to be with what
was part of the state of the existing art. So the first step in the
exercise should be to identify what it is the advance in the art
that is said to be new and non-obvious (and susceptible of
industrial application). The second step is to determine whether it
is both new and not obvious (and susceptible of industrial
application) under the description 'an invention' (in the sense of
Article 52 [of the European Patent Convention]). Of course if it is
not new the application will fail and there is no need to decide
whether it was obvious.”
Nevertheless, on looking at the facts of this case, it was held
that the two patent applications submitted by CFPH did concern what
amounted to "business method" patents and as such were not
patentable. The appeal was therefore dismissed.
On a general note, commenting on the difficulty in applying the
Act to some inventions, the Deputy Judge said:
“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.
“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.”
He added:
“At the risk of some 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.
“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? Naval tactics? Double-entry bookkeeping?
The phonetic alphabet?) Many have tried to frame an acceptable
definition, but to the best of my knowledge none have succeeded. 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.”
Words that perhaps the drafters of the European Commission’s
controversial Directive on the Patentability of Computer
Implemented Inventions – recently rejected for the second time by
the European Parliament might well agree with.
