A UK view on technical contribution, post-Aerotel/Macrossan

The recent months have seen the first applications of the most recent test for excluded subject matter, proposed in the Aerotel Ltd. v Telco Holdings Ltd. and others/Macrossan’s application [2006] EWHC Civ 1371. In particular, the first court decision based on this approach has been issued, providing further examples of the application of the test and interesting comments regarding the form and substance of claims to potentially excluded subject matter.

Following the Aerotel/Macrossan decision by the Court of Appeal last October, the UK Intellectual Property Office issued a Practice Notice on the Patentability of Computer Programs and Business Methods (accessible via http://www.ipo.gov.uk/patent/p-law/p-law-notice/p-law-notice-subjectmatter.htm). The Practice Notice stated that the four-step test proposed by the Court of Appeal was to be treated as a definitive statement of how the law is to be applied and that it should rarely be necessary to refer to previous UK case law or Decisions of the European Patent Office Boards of Appeal.

The test can be summarised as follows:

step (i) construe the claim;

step (ii) identify the actual contribution;

step (iii) ask whether the contribution falls solely within the excluded subject matter; and

step (iv) check whether the actual or alleged contribution is technical in nature.

The recent months have seen the first applications of the new test by hearing officers in the UKIPO and in court. In the first court decision utilising the new test, Pumfrey J considered a method of distributing and processing data in order to improve inter-operability (Cappellini’s application & Bloomberg LP’s application [2007] EWHC 476 (Pat)). The claims of Bloomberg’s application related to the distribution of financial data records to a plurality of recipients, in which the transmitted data is put into a form (“mapped”) that can be accessed via an application used on the computer terminals of the individual recipients.

In the Decision, Pumfrey J found the contribution to lie in the treatment of data to match the requirements of a particular end-user to improve co-operation between software at a server and a client (step (ii) of the test). He took the view that the relevant treatment was performed by a computer program and the result achieved was entirely specified by that computer program, concluding that the advance made by the invention was a computer program as such. The rejection of the application was upheld.

Interestingly, Pumfrey J compared Bloomberg’s application to the patent in RIM v Inpro [2006] EWHC 70 (Pat). The RIM patent dealt with the treatment of data, prior to transmission, to reduce its information content, in order to allow more rapid transmission over reduced bandwidth channels. Crucially, the RIM claims were limited to systems in which the information density of the data was reduced and the receiving device was a “field computer”, which was taken to mean a device having reduced bandwidth capabilities. Pumfrey J maintained that the subject matter claimed by RIM provided a technical effect but noted that the position may have been different, had these limitations not been included.

This line of thought was expanded in Pumfrey J’s remarks regarding Cappellini’s application, which was rejected in the same judgement. Pumfrey J commented that the question of patentable subject matter relates to the form of the claims and that it would be possible to draft claims that do, or do not, relate to excluded subject matter, based on the same disclosure. He ventured that objections regarding excluded subject matter were primarily objections to the width of a claim.

This latest Decision suggests that, in at least some cases, the inclusion in a claim of limitations relating to the context of the invention may prove crucial for providing technical character to its contribution and avoiding exclusion under Section 1(2) of the UK Patents Act 1977.

Diana Pisani 01 Jan 2007

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