“The invention has nothing to do with how that computer program would be structured or how it would be written, but with what the program must do,” said Hearing Officer Stephen Probert.
Few Java programmers need to learn Sun’s Java Bytecode instruction set. But it is used to execute their programs on a wide variety of different platforms, including PCs, mobile phones and pagers. The problem with the existing Bytecode instruction set is that it is large, with over 220 instructions, many of which overlap.
On a PC, this is not a problem; but Sun’s proposal for a reduced instruction set will carry out all the operations of the original set, but improve performance on systems with limited resources, such as embedded systems.
The case examiner looked at the application and decided that it related to a program for a computer as such, and was therefore not patentable under the Patents Act. Sun disagreed, and the case came before Hearing Officer Stephen Probert.
He assessed the case in the light of a High Court ruling from last year concerning a company known as CFPH LLC. In that decision the Court held that “a patentable invention is new and non-obvious information about a thing or process that can be made or used in industry.”
It also set out a two-stage test for assessing what is new and not obvious:
- Firstly, examiners had “to identify what it is the advance in the art that is said to be new and non-obvious (and susceptible of industrial application);” and
- Secondly, examiners should “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]).”
In this case, said Hearing Officer Probert, the invention was both new and inventive under the European Patent Convention.
“There is no doubt that the invention as claimed would involve a computer program for its implementation; the applicant also says that this is the case. But as CFPH indicates, that does not establish, in and of itself, that the invention is not patentable,” he explained.
In his opinion it was right to consider whether the advance involves a technical effect when considering whether it was new and not obvious.
“In this case, I do not consider that the invention lies in excluded subject matter as such, i.e. a computer program,” he said. “The invention was almost certainly made at a much earlier stage in the creative process, before any computer program had been written (or flowcharts generated) with a view to implementing the invention.”