Follow EPO approach to patentability of inventions, says court

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.