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?

Mewsings on the word ‘technical’

Warning: this post is quite technical, and some less well informed readers might therefore find it difficult to understand.

After recent technical discussions (see IPKat posts here and here), the IPKat was wondering what exactly the EPO means when it uses the word ‘technical’.

While he was pondering this, a “Communication pursuant to the Decision of the President of the European Patent Office dated 12 July 2007 on the filing of priority documents (Special edition No. 3, OJ EPO 2007, 22)” landed on his desk.

(Right: the IPKat gets into techno music for the occasion; click the picture to see more)

The communication effectively tells the applicant that they don’t technically need to go to the bother of getting certified copies of priority documents (as long as they come by technical means from certain selected patent offices) because the EPO have been technically able to get copies themselves electronically, at technically no charge to the applicant. Which is very nice of them, and of course is just the sort of thing that is technically possible in this modern technological age.

What made the IPKat’s technical whiskers spring to attention, however, was the following sentence:

“It should be noted that, for technical reasons, this communication may be issued not only if the priority document has been included in the file ectronically [sic] in accordance with the abovementioned Decision but also if it was filed by the applicant.”

Now what ‘technical reasons’ could there be? Interpreting this according to the EPO technical boards of appeal, the technical reasons may well possess ‘technical character’, and couldn’t therefore technically relate solely to computer programs, business methods or any of the other ‘exclusions’ under Article 52(2) EPC.

Given that the communication technically relates to computer programs retrieving copies of priority documents, as part of the business method (‘administrative task’, if you will) of processing patent applications by technical means, how could there be any ‘technical character’ regarding the reasons why the communication might have issued if the priority documents were instead technically filed by the applicant? Could there be a special cleverly-designed piece of technical machinery somewhere at the EPO where all priority documents have to be technically processed? Or does computerised technical processing of priority documents inherently possess technical character?

Another thought, however, occurred to the IPKat. The word ‘technical’ could instead mean what he always thought it to mean, which is to say: “this is too complicated to explain in a few words, and too difficult for mere mortals to understand, so we would rather you didn’t worry about it until you are sufficiently well-informed”. That seems to make much more sense, particularly as the EPC is full of the word being used in this sense*. The definition of ‘technical character’ consequently also becomes much more easy to understand, which goes something like: “having a character that is quite complicated and cannot therefore be expressed in words that a normal person can understand, but which I, as a well-informed clever person, can”. Now, all we have to do is find a representative clever person...

Such as: “technically qualified” (A18-22), "technical opinion" (A23), "technical information" (A85), "technical means of communication" & "technical requirements" (Rule 2), "technical or legal difficulties" (Rule 11), "technical process" (Rules 27&29), "technical preparations for publication" (Rules 31&32), "technical designation of the invention" (Rule 41), "technical field" & "technical problem" (Rule 42), "technical features" (Rule 43), "technical relationship" (Rule 44), "technical means" (Rule 124) etc. etc.