SOFTWARE PATENTABILITY Te new law expressly excludes from
“THE EPO AND IPO ANALYSIS WILL ALMOST ALWAYS PRODUCE THE SAME END RESULT FOR THE SAME INVENTION, EVEN THOUGH THE ROUTES TO THE DECISIONS WILL BE QUITE DIFFERENT.”
An October 2014 decision by the IPO’s
hearing officer (admittedly only first instance and not strictly binding on the agency), which went in favour of Toshiba Research Limited, found that an invention relating to language processing was patentable. Claim one, aſter amendment, was directed to “a method of speech processing … comprising training a language model using selected bag of word pairs … and processing speech using the model”. Te patentee successfully
argued that
the claimed invention was a better way of speech processing and therefore, since image processing is patentable (as per Vicom), speech processing is also patentable. Another recent (November 2014) UK case,
the technical features that can contribute. In other words, anything within a claim that is not technical will not form a part of the inventive step analysis. This in practice takes away with the hand of inventive step what had seemingly been given with the hand of excluded subject matter. For example, if your invention is a pure
business method implemented on a computer, the invention will avoid falling foul of
the
excluded subject matter test because of the use of the (technical) computer. However, the only features of the claim that will be considered for assessing inventive step will be the (old and well known) computer. Te claim will therefore fail on inventive step.
End result In practice, the EPO and IPO analysis will almost always produce the same end result for the same invention, even though the routes to the decisions will be quite different.
www.worldipreview.com
Lantana v Comptroller, found its way to the Court of Appeal. Te ‘invention’ related to a process by which a document could be automatically emailed to a user from a remote machine, so long as the remote machine had on it a piece of proprietary soſtware with which a user could interact. Te IPO and the court both found the invention lacking in technical contribution.
Permissive behaviour Tere is a long history of the US courts being extremely permissive on what
is patentable
subject matter. Some in Europe have previously identified this as being consistent with a keenly commercial imperative—the “if it’s worth protecting, it should be protectable” doctrine of patentable subject matter. Cases have enshrined into the national
psyche the idea that anything under the sun made by man should be patentable. However, although early US cases seemed to follow this approach, one case that had been rumbling on finally concluded last year when the US Supreme Court, in Alice v CLS Bank, announced a significant departure from the understood position.
patentability anything considered too “abstract”. While this is different from the technical requirement of the original EPO and current UK positions, it does mean that the US practice is more closely aligned with the UK’s and EPO’s than ever before. Within the lengthy Supreme Court judgment there are numerous statements and indications that could almost have been written by a judge in the English Court of Appeal or by an EPO board of appeal member. Applicants pursuing applications in the
area of CIIs are experiencing this very directly. Recent practice directions from the US Patent and Trademark Office (USPTO), supposed to provide some clear direction and understanding on this subject, have not really done so. Many feel they are circuitous and unhelpful at best. Te caseload of the USPTO appeal boards is building as more and more applicants find no success before examiners and resort to the slow but (relatively) low-cost USPTO appeal procedure. Te landscape is shiſting. Te US position
seems somewhat less patentee-friendly than it did a few months or years ago, whereas some recent decisions in the UK seem to have gone, positively, the other way. Te overall advice remains the same,
which is that whereas some inventions, no matter what you do with them in the patent specification, will struggle for legal approval in some jurisdictions, with appropriate draſting and argument, there is some hope of success. Innovators and their attorneys in these areas should bear these points in mind.
Avi Freeman is a partner at Beck Greener and heads the electronics, physics and mechanical engineering team. As a European and UK patent attorney, he works with UK and overseas high-tech companies to navigate the complexities of European, UK and foreign patent law. He can be contacted at:
afreeman@beckgreener.com
World Intellectual Property Review Annual 2015
57
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