Aerotel yet again

The IPKat was in the middle of writing about a (to him, at least) rather interesting turn on the Symbian/Aerotel view of excluded matter under the UK Patents Act 1977 (more below, for those sufficiently interested), when the very familiar name of Aerotel appeared yet again in his inbox. This time, Aerotel have again appeared in the Court of Appeal, with an argument about the same (already expired) patent that was the central theme of the judgment in Aerotel/Macrossan back in October 2006, and again before Lord Justice Jacob. The judgment is available from BAILII here.

The patent, GB2171877, was upheld in the original Court of Appeal judgment (here), but was then revoked the second time round by HHJ Fysh QC in the Patents Court in May 2008 (here). As this Kat thought at the time, it seems that the patent should really have been revoked the first time round, if only a proper attack had been made on it.  The first alleged infringer, Telco, didn't have a proper go, and gave up before the Court of Appeal decided the matter.  The second alleged infringer, Wavecrest, did have a proper go and relied more on the safer ground of novelty and inventive step, which resulted in the patent being found wanting for the latter.

Rather than taking another pot shot at the alleged inconsistencies of EPO case law, Jacob LJ, in dismissing Aerotel's appeal, chose to have a go at them this time for being a patent troll. Aerotel's barrister, Henry Carr QC, had attempted to argue that one reason the minor difference between what was known at the priority date and the claimed invention in the patent (essentially pre-payment rather than post-payment of phone calls) should be seen as being inventive was because the patent had been so commercially successful. Jacob LJ was, however, having none of this and put his arguments as follows:

"Mr Carr submitted that commercial success was a powerful factor in Aerotel's favour here. I do not see that. For here there is a counterquestion to "why not done before?" It is "why was it not done after?" A grateful market did not immediately fall upon this invention, saying "this is the answer to our problems." When the invention was made known absolutely nothing happened. The world beat a path to the door of Ralph Waldo Emerson's inventor of a better mousetrap, but the path to Aerotel's door remained untrodden.

I must explain. Aerotel does not itself make or sell anything. It is a company formed to exploit the present patent and its corresponding patents in other countries, particularly the US. The priority date is January 1985 and the application was published in Europe in 1986. Yet no one is said to have used the invention until 1994. From then on there was increasing use, but none of it was by virtue of anything done by or with Aerotel. A variety of telephone prepayment businesses just started up: there is no suggestion that any of them even got the idea from the Aerotel patent. There is no suggestion that any one of them came seeking a licence. Mr Carr's skeleton argument asserts that the invention "helped change the industry" and "created a new market which did not exist before". Nothing like that was proved and it is totally improbable.

So how then did Aerotel make money from the patent? By litigation and the threat of litigation against users. And principally in the US. That is unimpressive, for it is notorious that at least from the middle-90s the US patent litigation scene had become immensely pro-plaintiff. A defendant faced with the possibility of litigation had to take into account all of the following matters: (1) the right of the patentee to insist upon jury trial (juries are apt to be pro-plaintiff); (2) the general level of damages awarded in the US – by juries; (3) the real possibility of triple damages for wilful infringement; (4) the fact that even if a defendant won he would have to pay his own, very considerable, legal costs; and (5) the fact that until the decision of the Supreme Court in eBay v MerckExchange U.S. No. 05–131 (2006) there was a strong view that even a non-exploiting patentee who won would get an injunction as of right.

We know that Aerotel entered into licensing arrangements. But we know little more than that. There is no evidence as to why people took licences. I see no reason to suppose they did so for any reason other than the considerable downside risk they would avoid" (paragraphs 30-33).

This now seems to be the end of the line for Aerotel, in the UK at least.  The IPKat supposes that we (IP professionals and academics, that is) should thank them for being the catalyst for spurring a renewed debate on what the exclusions on patentablity mean in Europe.  After all, would we have had the recent referral from the President if Aerotel/Macrossan had not happened? Merpel, however, thinks that it would have happened anyway, it just needed the right McGuffin to kick it all off.

What the IPKat was reviewing at the time he was interrupted was a recent decision from the UK-IPO that may help those who are confused about how things now stand in the UK in relation to the exclusions under section 1(2).  This decision (available here) related to an application made in the name of Toshiba for a computerised system for determining the length of cable runs in a 3D model.  The invention itself, however, was not the interesting thing.  What was interesting to the IPKat was the following wording, which seems to be now standard for UK-IPO decisions relating to excluded subject matter:

"The interpretation of section 1(2) has recently been given further consideration by the Court of Appeal in Symbian Ltd’s Application [2008] EWHC Civ 1066. Symbian arose under the computer program exclusion, but as with Aerotel, the Court gave guidance of a more general nature on section 1(2). Although the Court approached the question of excluded matter primarily on the basis of whether there was a technical contribution, it was quite clear (see paragraphs 8-15 of the decision) that the structured four-step approach to the question in Aerotel was never intended to be a new departure in domestic law; that it remained bound by its previous decisions which rested on whether the contribution was technical; and that any differences in the two approaches should affect neither the applicable principles nor the outcome in any particular case. Indeed the Court at paragraph 59 considered its conclusion in the light of the Aerotel approach. It therefore remains appropriate for me to apply the Aerotel test, but with due regard to the clarification that Symbian provides as to when a computer program makes a technical contribution."

If anyone thought that Symbian really changed anything at the UK-IPO, the IPKat thinks that they are probably either overly optimistic or mistaken. The test, such as it is, is now still the familiar 4-step Aerotel test, but bearing in mind that computer programs can make a technical contribution, contrary to what the 4-step test might suggest. To the IPKat's eye, this seems to be a fudge. Either the whole EPO approach, problem-solution and all, should be used, or none of it. To rely on such a mish-mash of different approaches (which are now apparently incompatible at the EPO) doesn't really make anything clearer, and doesn't seem to help examiners in making the right decisions. Or is that the point?

UKIPO considers the Symbian effect

The UKIPO have provided further evidence as to why they feel the need to appeal against the recent Symbian judgment (IPKat commentary, including many informed contributions from readers, here), in the form of reasons for refusing an application in decision O/120/08. The application in question, published as GB2414831, related to a computerised system for recording driving test results, in which a driving examiner could record results on a portable computer by means of a menu-driven format. The Patent Office examiner had objected on the grounds that the contribution was solely in the form of either a computer program, a method for doing business or the presentation of information.

The hearing officer essentially agreed with the examiner, and unsurprisingly decided to refuse the application. However, in response to persistent arguments from the applicant, he expressed a view that seems to suggest (at least to this IPKat) why Patten J got the Aerotel test wrong:

"For example, in Oneida Indian Nation [2007] EWHC 954 (Pat), Deputy Judge (as he then was) Christopher Floyd was clear (paragraphs 10-11) that the identification of a technical advance did not bring back into contention inventions which had been excluded at the third step, and the fourth step was intended merely to make sure that inventions which had passed the third step were technical in nature: an invention would not pass the third step on the strength of technical advances which fell within one of the excluded categories. This view appears to be supported by the subsequent judgments in Astron Clinica [2008] EWHC 85 (Pat) (paragraph 45) and Autonomy Corporation [2008] EWHC 146 (Pat) (paragraph 45).

However, in the recent Symbian judgment, Patten J (see paragraphs 42 and 58) held that the question of whether a claim fell within excluded matter could not be answered in isolation from the issue of whether it embodied a relevant technical contribution, and that the third and fourth steps were as a matter of law alternatives. He thought it clear from the authorities that the question whether the invention made a relevant technical contribution had to be asked because it was the determinant of whether EPC Art 52(3) (equivalent to section 1(2)) had any application, and that whether it was asked as part of the second, third or fourth Aerotel step mattered much less than whether it was asked at all.

I have to say that I find these judgments difficult to reconcile, but I do not think that I need to attempt this in the present case. I have found above that the contribution programs a device to carry out a business method without causing the computer to act in any new technical way, or solve any technical problem in the operation of the computer. Irrespective of whether, having found the invention to have failed the third Aerotel step, I need as a matter of law to go on to the fourth step, I do not think that the contribution is technical in nature." (paragraphs 20-22)

The IPKat, as he has pointed out before, thinks that the fourth step, involving that awkward word 'technical', will have to be properly dealt with (or disposed of entirely) if anyone is to stand a chance of getting a firmer idea of where the boundary of the exclusions under section 1(2) is to properly lie. Unfortunately, it seems that the Court of Appeal will be unable to help much insofar they are tied to their previous judgments. We will probably just have to deal with the uncertainty for a little while yet, unless the House of Lords (or perhaps the EPO Enlarged Board?) gets involved with this tricky issue. Alternatively, in the words of the renowned philosopher Vroomfondel, perhaps what we really want, nay demand, are rigidly defined areas of doubt and uncertainty?

Software patents - yet more confusion

In a press release, the UK-IPO has highlighted Mr Justice Patten's decision of today (available here from BAILII) to overturn the UK-IPO's decision to refuse an application by Symbian, on the grounds that it consisted solely of a computer program. The application "describes how in a computer a library of functions (DLL), which can be called on by multiple application programs running on the computer, is accessed. In particular, it provides a way of indexing these library functions to ensure the computer will continue to operate reliably after changes are made to the library."

The judge drew attention to the split between the attitudes of the UK-IPO and the EPO, since the EPO has already allowed the patent to be granted. However, the UK-IPO has said that it intends to appeal, arguing that the judge failed to use the Aerotel/Macrossan case.

Says the IPKat: and the EPO thinks there's no divergence of the patentability of computer programs as such...

Update: The Symbian case has prompted much coverage elsewhere, including from the BBC, The Register, Computer Weekly, IT Week and Out-Law. Some of the commentary to this post may also be worth reading, if you have the stomach for it.

UK-IPO u-turn on software patents

After the recent decision of Astron Clinica (IPKat posts here and here), and a decent two week period for reflection, the UK-IPO have now decided that they will not be appealing against the decision. Consequently, a new practice notice has just been issued by the UK-IPO (right: not a u-turn but a 'clarification'), which says the following:

1. The Office's Practice Notice dated 2 November 2006 detailed the way patent examiners should assess whether inventions are for patentable subject matter following the judgment of the Court of Appeal in the matters of Aerotel Ltd v Telco Holdings Ltd (and others) and Macrossan's Application [2007] RPC 7 ("Aerotel/Macrossan"). Among other things, paragraph 14 of that Notice recorded the Office’s view that Aerotel/Macrossan left open a question over permissible forms of claim: can claims to a computer program (or a program on a carrier) be allowable when other claims in a different form, claims covering the use of that particular program, would be allowed? For reasons the Notice explained, the Office concluded that claims to computer programs or to programs on a carrier were not allowable.

2. In his judgment in Astron Clinica and other’s Applications [2008] EWHC 85 (Pat) ("Astron Clinica"), Kitchin J has now clarified the law in this area. He has decided that where, as a result of applying the test formulated in Aerotel/Macrossan, claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable then, in principle, a claim to the program itself should also be allowable. However, Kitchin J made it clear that the claim to the computer program must be drawn to reflect the features of the invention which would ensure the patentability of the method which the program is intended to carry out when it is run. Where, but only where, these conditions are met, examiners will no longer object to claims to a computer program or a program on a carrier.

3. The Office will implement this change in approach immediately. Apart from this one change, the practice of the UK-IPO remains as set out in the Practice Notice of 2 November 2006.

This appears to settle for now the matter of computer program claims, which many will be relieved to see (although not, of course, those against software patents in general). The IPKat sees no reason why he should not have the following claim allowed by a UK-IPO examiner (where claim 1 is an allowable method claim):

"A computer program comprising computer program code adapted, when said program is loaded onto a computer, to make the computer execute the procedure of claim 1".

There is nothing wrong with this, according to Kitchin J in Astron Clinica and the new practice notice, so one of the IPKat's amenuenses will be putting exactly this form of claim to a UK examiner in the near future, in the expectation of it being allowed. After all, we should be looking at the invention as a matter of substance, not the form in which it is claimed. Can anyone see the reason why this claim would not be allowed at the EPO? The IPKat suspects he can, but would like others to first point out why he is wrong, yet again, on the subject.

Autonomy lose UK patent appeal

In another appeal from the Comptroller General of Patents, Trade Marks and Designs following swiftly on from Astron Clinica (see previous IPKat posts here and here), the Honourable Mr Justice Lewison in the Patents Court has dismissed Autonomy's appeal against a refusal of their patent application relating to automated computer searching. The judgment, released only yesterday, has made its way very swiftly on to the BAILII servers, and is available here.

The application related to a method for generating links relevant to the content of an active window displayed on a computer screen, and for embedding an icon representing the links within a part of the window. The claimed invention involved analysing text in an active window, performing search queries based on the test without user input, and displaying to the user links relating to the content of the window, in the form of icons and lists activated by clicking on an icon. Autonomy had argued in their appeal before a hearing officer at the UK-IPO (here) that the contribution their invention made was an “improved man-machine interface”, which the hearing officer did not consider as being helpful in terms of the problem to be solved or of any advantages provided by the claimed features. The hearing officer considered that the contribution provided was an improved graphic user interface having an icon which allowed convenient access to a list of documents relevant to the content of an active window. This was viewed as being an improvement in the way a computer program interacted with the user. The contribution therefore lay within a computer program as such, and the application was refused.

After going through the (by now very familiar) background to the four-step Aerotel/Macrossan test, Lewison J gave a very useful summary of where he considered the state of the law to be regarding the computer program exclusion, in the form of the following list:

i) A computer program is not merely a set of instructions to a computer, but can include the medium (e.g. floppy disc or CD ROM) which causes the computer to execute the program (Aerotel) or a programmed computer (Cappellini [IPKat commentary]);

ii) However what is excluded from patentability is not a computer program but a computer program "as such". Accordingly the mere fact that a claim relates to a computer program does not necessarily disqualify it from patentability (Astron Clinica);

iii) In order to decide whether a computer program is excluded from patentability because it is a computer program "as such" one must consider the substance of the claimed invention (Cappellini);

iv) If the claimed contribution exists independently of whether it is implemented by a computer, in the sense of embodying a technical process lying outside the computer, then the contribution will not be a computer program as such (Gale; Raytheon [IPKat commentary]);

v) This will be the case even though the only practicable way of implementing the contribution is by means of a computer (Raytheon);

vi) If the contribution requires new hardware or a new combination of hardware, or consists of a better computer or solves a technical problem in the functionality of a computer it is unlikely to be a computer program as such (Aerotel; Raytheon);

vii) On the other hand, a mere new hardware test is not enough if the newness consists of a computer program on a known medium (Aerotel commenting on Gale);

viii) The mere fact that a computer program reduces the load on the processor or makes economical use of the computer's memory or makes more efficient use of the computer's resources does not amount to making a better computer, and thus does not take it outside the category of computer program as such (Aerotel commenting on Gale; Raytheon);

ix) An effect caused merely by the running of the program will not take a program outside the exclusion (Aerotel);

x) The manipulation of data stored on a computer (whether on the computer in use or on a remote computer) is unlikely to give rise to a contribution that exists independently of whether it is implemented by a computer (Bloomberg);

xi) Even if the claimed invention is not a computer program as such, it is still necessary to ask whether the contribution lies solely in some other field of excluded matter. If it does, then the contribution will not be patentable (Oneida [IPKat commentary]);

xii) In such a case, although the contribution may well be described as having a technical effect, it is not the right kind of technical effect, and so does not count (shoppalotto [IPKat commentary]; Aerotel; Oneida).

On the invention in question, after construing the claim the contribution was determined to be:

a) Automatically analyzing the text in the active window and generating a list of links related to that content; and

b) Providing an icon that represents a category of such links which, when activated, displays the list of links (which further displays a summary of the content of a link when the cursor is moved over that link).

Lewison J then considered whether this contribution would be excluded:

"In my judgment, as Mr Tappin [representing the UK-IPO] submitted, automatic text analysis, comparison and results generation is a paradigm example of a case in which the contribution falls squarely within excluded matter, i.e. a program for a computer. The claimed contribution, so far as the first element is involved does not exist independently of whether it is implemented by a computer. On the contrary, it depends on a computer processing or displaying information in an active window, and on a search program to analyse it and to compare and generate results. Nor does it require new hardware or a new combination of hardware; and it does not result in a better computer. The only effect produced by the invention is an effect caused merely by the running of the program, which consists of the manipulation of data. It is in short a claim to a better search program.

The second element of the claimed contribution is also, in my judgment, a computer program as such. What the second element of the claimed contribution does is to provide an icon on a graphical user interface which represents a category of links which can be revealed (as can a contents summary). This is done by embedding the icon, displaying the links when the icon is activated, and displaying the contents summary when the cursor is placed on the link. This element of the claimed contribution lies in program design, i.e. the inventor has chosen to denote the output from its text analysis and comparison exercise by means of a nested series of representations (icon, link, contents summary). As Mr Tappin submitted, when one considers how this is provided, there can be no doubt that this part of the contribution relates to a computer program as such. A computer program has been designed to embed an icon, display the links and display the contents summary on appropriate mouse / cursor actions.

Again the claimed contribution does not exist independently of the computer. It is described in terms that envisage the display of an icon on a computer screen and the underlying links being accessible via the icon. It does not require new hardware or a combination of hardware; and it does not result in a better computer. Again the only effect is produced by running the computer program, which so far as this element of the contribution is concerned, consists of the display of information. In my judgment the Hearing Officer was right to conclude that the claimed invention is a computer program as such" (paragraphs 40-42).

The IPKat wonders whether the same decision would have been arrived at if heard before an EPO board of appeal (if it even got that far). It seems quite plausible to him that the above contribution, if rearranged into the EPO-style problem and solution approach, could well have resulted in a granted patent. Unfortunately, it seems that we will not have a chance to find out, since Autonomy only chose to file applications in the UK and US for the invention in question. It looks like the US application will, however, get through without too much trouble.

From Vicom to Astron Clinica

For those who have not yet had enough of the recent kerfuffle over computer program patent claims in the UK, IPKat co-blogmeister David has written a short article on the subject. This was written at the request of Laurence Eastham, editor of the publication Computers & Law, and it will apparently be making an appearance in the next issue (not the latest issue: right). The article is already available online here, but unfortunately to subscribers only. The author is therefore making it available to all interested readers here. All constructive comments are welcome.

High Court allows computer program patent claims

In a surprising (to this Kat at least) turn of events, the Honourable Mr Justice Kitchin has ruled today that the current UK Patent Office practice of flatly rejecting patent claims to computer program products is wrong. The judgment, in the matter of several GB patent applications in the name of Astron Clinica and others, is now available from BAILII here. Many thanks go to John Gray of Murgitroyd & Co. for originally passing the news on.

After comprehensively summarising the last couple of decades of legal developments, covering the usual suspects (Gale, the oft-misspelled Merrill Lynch, Fujitsu and various EPO decisions), Kitchin J arrived at the main question in this appeal, which was whether the UK-IPO was correct in construing that the Court of Appeal judgment in Aerotel/Macrossan inevitably prohibited the patenting of all computer programs, or whether the old approach of considering the 'potential' technical effect of a computer program (following the EPO approach) could be taken into account, in a similar way to considering the effect of a method claim that would inevitably be carried out by running a program (which all of the applications under appeal contained). The UK-IPO had concluded that Aerotel/Macrossan ruled out computer program product patent claims, and consequently reverted to its old practice of rejecting such claims.

Kitchin J, however, considered that the point did not actually arise in Aerotel/Macrossan, because the court was not even asked to consider the question of computer program products claims. Although the Court of Appeal had criticised many EPO decisions, it had not criticised the main decisions relating to this point, being T 1173/97 and T 935/97. Also, the new four step test approach should produce the same result as the 'old' approach, and the Court of Appeal had said as much by saying that Merrill Lynch must be followed.

Probably more importantly, Kitchin J recognised that it was highly undesirable to have provisions of the EPC construed differently at the EPO as compared with the courts in the different contracting states, and that decisions of the Boards of Appeal should be highly persuasive. Mention was also made of the contrasting approach taken in Germany, where the EPO line tends to be followed closely.

The apparent approval of the UK-IPO's rejection of computer program product claims in Oneida Indian Nation's Application [see IPKat commentary here] was either rejected by Kitchin J as not actually meaning that, or was in the alternative respectfully disagreed with (as the High Court is allowed to do, in contrast with the Court of Appeal), depending on the different possible interpretations of Christopher Floyd's judgment.

In conclusion then, Kitchin J found that the appeals should be allowed. Each application concerned a computer related invention where the examiner had allowed claims to, in effect, a method performed by running a suitably programmed computer and to a computer programmed to carry out the method. The Hearing Officer had rejected corresponding program claims on the basis that they were necessarily prohibited by Article 52, and in Kitchin J's judgment he had erred in doing so. The cases were remitted to the UK-IPO for further consideration in light of the judgment.

The IPKat is, frankly, quite amazed by the judgment, because he was (apparently quite wrongly) convinced that there was no room for manoeuver after Aerotel/Macrossan, in particular in light of one of the central points of A/M being that the scope of the monopoly must be considered when construing the claim, which appears to have formed the basis of the UK-IPO's change of practice. He wonders whether the story has run its course for now, and if we can simply all go back to falling into line with the EPO, or if the UK-IPO will judge that this one is worth going further on. Will they? Can they? Should they? What would/does the embattled Lord Justice Jacob think? The IPKat would very much like to know, and he suspects his readers may be just about to tell him...

Catch up with the issues from the IPKat's previous posts here, here, here, here, here, here, here, here, here and here (to cite just a few).

28 Jan Update: This post has now been linked to, and commented on, in (at the latest count) Slashdot, I/P Updates, Patently-O, the IAM blog, and IP:Jur, as well as in Greg Aharonian's latest Patnews email. Many thanks to all. Expect something to appear shortly on Out-Law and the Register.