Patenting software and business methods - Third update
The long running saga continues. Eversheds reported on the Court of Appeal's October 2006 decision in Aerotel v Telco and Macrossan's Application which reviewed the law on the patentability of computer software and business methods (Thu 21/12/2006 16:36) and on subsequent events (Thu 12/04/2007 17:05) and (Thu 03/05/2007 17:48).
What follows is an update on the most recent application of the Aerotel/Macrossan four stage process. The identity of the patent applicant in this case makes interesting reading...
Recap on the Four Stage Process
The Patent Office (now the UK Intellectual Property Office or UKIPO) applies the following test to a patent application for a business method or computer program: The UKIPO will: 1. Properly construe the claim (which means understand what the invention is)
2. Identify the actual [or alleged] contribution (...that the invention makes to human knowledge)
3. Ask whether the contribution falls solely within excluded subject matter. If it does not...
4. ... Check whether the actual or alleged contribution is actually technical in nature (is there a technical advance?).
The UKIPO interpreted this to mean that when an invention fails Stage 3, it is not necessary to go on to use Stage 4. Not all practitioners agreed.
The Four Stage Process applied
On 2 May 2007 in Re Oneida Indian Nation's application [2007] EWHC 0954 (Pat), the Patents Court, decided on the appeal by the New York-based Indian Nation against the UKIPO's refusal to grant a patent for "a system, method or article of manufacture for gaming from an off-site location". Basically, the invention was a two stage method for placing online bets. The Court upheld the UKIPO's refusal to grant the patent on the basis of the Aerotel/Macrossan Four Stage Process, and reiterated that Stage 4 is not relevant unless Stage 3 is overcome.
In this case, the contribution of the invention failed Stage 3. That the invention made some technical advance over earlier methods (the prior art was for a single stage method) was irrelevant, because the invention consisted solely of unpatentable subject matter in that it was solely an (albeit new) method for doing business. It was less clear whether it was also solely a computer program. The technical advance produced by the invention was solely the effect of carrying out the new method of doing business (on a computer) which is subject matter which is excluded from patentability under section 1(2) of the Patents Act 1997 / Article 52(2) the European Patent Convention.
The Court upheld the UKIPO's interpretation that Stage 4 of the Process is merely to make sure that inventions that pass Stage 3 are technical in nature. It is a final obstacle which those overcoming Stage 3 will not necessarily get past.
The Nation had argued that if an invention made a technical advance / a contribution that was technical in nature (ie. it passed Stage 4), this should be considered before that invention fell at Stage 3. But the Court held that it was correct to say that Stage 4 was not relevant unless the invention passed Stage 3. An invention would not pass Stage 3 if its contribution made technical advances but those technical advances were solely within the excluded subject matter.
The Court reaffirmed that Stage 4 of the Process is there to make sure that inventions that pass Stage 3 do not receive patents unless their contribution to human knowledge is actually technical in nature. The Court said that if an invention gets past Stage 3, it is by no means home and dry. An invention's contribution to human knowledge might not fall solely within the excluded subject matter, and so might pass Stage 3. The invention might still not produce the requisite technical effect, and so might fail Stage 4.
Conclusion
The Court reinforced the UKIPO's practice of refusing to address Stage 4, unless Stage 3 is overcome.
-------------------------------------------------- You can find out more about Eversheds e80 and search the Eversheds e80 archive at www.eversheds80.com --------------------------------------------------- Find out more about protecting your reputation online with Eversheds Brandcomplete at http://www.eversheds.com/brandcomplete/home.asp -------------------------------------------------- e80 is provided for information purposes only and should not be regarded as a substitute for taking legal advice ------------------------------------------------ This service is provided by Eversheds LLP - for the terms of service see your welcome message and www.eversheds80.com. Eversheds LLP is a limited liability partnership, registered in England and Wales, registered number OC304065, registered office Senator House, 85 Queen Victoria Street, London EC4V 4JL. Regulated by the Law Society. A list of the members' names and their professional qualifications is available for inspection at the above office. For a full list of our offices please visit www.eversheds.com ---------------------------------------------------- www.eversheds.com
Legal Day Table
Jobs Now
LEGAL DIRECTOR Sought for challenging in-house position with Myspace, the online space which has revolutionized the way people interact, as sole attorney in their London office More >>
HEALTHCARE LAWYER With at least 5 years PQE sought by Capsticks, a leading healthcare practice, to drive forward the development of their Birmigham based office More >>
PI PARALEGAL Required by Plexus Law, a specialist PI firm, to provide in-house support to the Motor Claims Department in their Folkstone offices More >>
NETWORK ENGINEER Sought by Personnel 2000 for their client, an international banking insurance provider, based in the Cayman Islands More >>
LEGAL SECRETARY Required by Law Choice for their client, a prestigious US law firm, to work for 2 partners in their Dubai offices More >>
