17/07/2018
A recent series of decisions from the UK Intellectual Property Office (UK IPO), ‘Landmark Graphics Corporation’, suggests that the UK IPO has been overly strict in applying the law relating to computer related inventions and excluded subject matter (non-patentable subject matter) set out in Section 1(2) of the UK Patents Act.
Of particular interest is guidance in the decision that implies that UK IPO examiners may now have to give the applicant more ‘benefit of the doubt’ when determining the contribution that the invention makes and whether to raise an objection under Section 1(2). The only condition however is that to enjoy this benefit, the applicant needs to demonstrate that there is a “substantial doubt” that the invention is excluded, and put forward a “reasonable case” that the invention makes a contribution in a technical field. If the applicant can do that, then the exclusions should not apply.
The discussion in the case of how examiners and applicants should approach objections of excluded subject matter is also helpful in setting out a more formal a framework for both parties to work within. To this practitioner at least, much of the debate at the examination stage has seemed like a deadlock between the examiner and applicant, involving the presentation of an objection by the examiner and a counter-argument by the applicant, without any real progress in moving the discussion forward. Typically, it has seemed that the UK IPO position is to treat all inventions that can potentially be argued to be excluded subject matter as excluded subject matter unless they fall squarely within one of the safe harbours of “technical subject matter” already decided by the Courts.
In light of the new framework, this practitioner hopes that the UK IPO will now be able to adopt a position that is closer to that taken by the European Patent Office in its assessment of patentable and non-patentable subject matter, involving a little more leeway, and a view that “there are likely to be other areas where a technical contribution is found that have not yet been considered by the Courts”.
The Background
Section 1(2) of the UK Patents Act excludes inventions relating to certain subject matter from patent protection. However, the exclusion applies only to the extent that the invention relates to that subject matter. In other words, if the invention provides more than subject matter in the excluded area, patent protection should not be excluded under section Section 1(2).
The relevant subject matter defined in Section 1(2) is “a mathematical method”, “a scheme, rule or method for performing a mental act, playing a game, or doing business, or a program for a computer”, or “the presentation of information”, and inventions that relate solely to developments in such areas are usually objected to by the Patent Office, before even a search is performed to assess novelty or inventive step.
Landmark Graphics Corporation had filed sixteen patent applications at the UK IPO, relating to aspects of geographical surveying, in particular to 3D Modelling and calculation of Gross Rock Volumes and Reservoir estimates. Although, the applications had been examined by different Examiners at the UKIPO, all had concluded that the claimed invention was no more than a computer program or a mathematical method and therefore excluded under Section 1(2) of the Patents Act.
In a series of decision handed down over 4 weeks earlier in the year, the UK IPO Hearing Officer considered each of the sixteen applications, and found that the respective examiners had in every case made in error in applying the law. The decisions can be found here on the UK IPO website. The hearing officer took the view that nearly all of the applications should not have been objected to on the basis of excluded subject matter.
The Issue
In determining whether claimed subject matter is excluded from patent protection under one of the excluded areas in Section 1(2), Examiners are required to follow the four step test set out in the Aerotel v Telco and Macrossan decision [2006] EWCA Civ 1371. The four steps of the test are:
Step (1) – properly construe the claim
Step (2) – identify the actual contribution
Step (3) – ask whether it (the contribution) solely falls within the excluded subject matter
Step (4) – check whether the actual or alleged contribution is actually technical in nature
From an applicant’s perspective, the difficulty faced is that in step 2 the examiner will often define the actual contribution made by the invention in a very narrow way, such that in step 3 of the test the contribution is inevitably found to fall solely within the field of excluded subject matter.
An example of this pitfall was given as an illustration in the initial Landmark Graphics Corporation decision itself (BL number O/112/18). The applicants argued that in an image processing invention, the difference between the claimed invention and the known art might be the replacement of one calculation technique with another, resulting in a reduction in the processing load of the computer. Although this would be a development in image processing and would generally advance the field of computing, a narrow assessment of the contribution may lead to the view that it is no more than the new calculation technique being used, and so no more than an excluded mathematical method or computer software as such, excluded under Section 1(2) of the Act. The broader, and indeed the correct view, of the contribution would be that it is in fact an improved method of image processing, considered patentable under decision such as Vicom (EPO T 0208/84, Computer Related Invention).
Of course part of the problem, is that once the examiner has taken this narrow view, that view is often entrenched and any arguments raised by the applicant to the effect that the examiner is wrong are effectively then dismissed. This leads to something of an impasse unless the case is taken to a hearing in front of the Hearing Officer, or subsequently appealed to the Courts.
The Hearing Officer in this case recognised the tendency for an impasse to arise and observed that:
“there is a burden upon an examiner to demonstrate that an invention falls foul of the exclusions, and […] to overcome such an objection, an applicant must do more than show that [the invention] merely arguably covers patentable subject matter”.
Both the examiner and applicant therefore have a clear duty to properly identify the contribution made, and present their case in as reasoned and robust a fashion as possible.
The Burden on the Examiner
The burden imposed on the examiner is cited in the Landmark decision as follows (this quotes the section in the Macrossan v Comptroller General of Patents decision that itself quotes from Fujitsu):
“The onus lies on the person contesting patentability [the examiner for example] to prove that the invention falls foul of the statutory exclusions. Furthermore, at the patent office stage, benefit of the doubt should be given to the applicant. Refusal of the grant on the basis of a faulty appreciation of what is involved cannot thereafter be remedied”.
Additionally, as clarified in the Macrossan v Comptroller General of Patents decision.
“The reference to the benefit of the doubt is probably intended to signify that if there is substantial doubt then the burden has not been fulfilled”
Thus, if there is a substantial doubt that the invention and contribution does not solely lie in excluded matter, the examiner should not raise an objection under Section 1(2).
The Burden on the Applicant
The Hearing Officer’s comments also set out the level of argument required of the applicant. The applicant “must do more than show that [the invention] merely arguably covers patentable subject matter”. This comment means that it will not be sufficient for the applicant to assert that a non-technical contribution is technical, merely because they can think of an associated “technical effect” that the contribution makes. Such arguments are often somewhat spurious and only indirectly linked to the operation of the invention. Indeed nearly any invention can be said to make a computer work better or faster, or save on bandwidth if the applicant puts their mind to it. This exercise is even easier for those inventions that fall on the borderline between patentable and non-patentable subject matter.
In order to succeed, the applicant must “show that there is a substantial doubt” that the invention is not excluded. The Hearing Officer explained that the question to be asked is:
“whether or not there is such substantial doubt regarding the alleged invention, such that where an applicant makes a reasonable case that their invention is patentable, then [the Hearing Officer] is bound to find in their favour”
Thus, if the applicant can show that there is a substantial doubt that the invention is excluded subject matter, such as if by demonstrating that the examiner has not applied the law correctly, or taken into account all of the actual contribution made by the invention, then a Section 1(2) objection should not be raised.
How should the applicant demonstrate a substantial doubt? One way is to fully explore the actual contribution made by the invention. Examiners frequently seem to interpret the contribution based on a literal and narrow interpretation of the claims, rather than stepping back, and determining what the invention has actual done.
The Hearing Officer in Landmark Graphics Corporation did not hold with this approach and stated instead that:
“when assessing the actual contribution in a computer-implemented invention, I shall take proper account of the task performed by the computer and determine whether the task falls outside the excluded categories…. If the task is carried out within an excluded area, e.g. a computer program, then … this is not necessarily the end of the matter because a program that solves a technical problem relating to the running of computers generally is not excluded by section 1(2)”.
Conclusion
The new guidance set out in the Landmark Graphics Corporation is certainly welcome and indicates that the UK IPO has to date been overly formulaic in it assessment of what is and is not excluded subject matter, and should apply a little more leeway to the test. However, despite the decision it is not clear the extent to which the UK IPO practice will change.
The UK IPO takes a conservative approach in allowing cases that relate to excluded subject matter, and historically has only become more lenient if there has been a clear instruction from a higher court.
In this case, the subject matter considered in Landmark Graphics Corporation relates to image processing in the area of geological modelling, areas determined as being technical ever since the Vicom decision of the EPO “Computer Related Invention” and the Halliburton Energy v Comptroller General of Patents [2011] EWHC 2508 (Pat) decision of the UK Court “Method of designing a drill bit”. It is possible therefore that the office will seek to apply the guidance in the Landmark Graphics Case only to inventions in these safe harbour technical areas, and be reluctant to consider the guidance more widely.
Nevertheless, the decision does give applicants more to work with when presenting their case to the office, and means that examiners will now need to be careful to ensure that they are meeting the required burden in alleging excluded subject matter.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
