| Under UK Law (sorry, degree of overlap with EU practice not
known)
the "four
step approach" to check that an application is
patentable (references already
in thread) says:
(1) Properly construe the claim;
(2) identify the actual
contribution;
(3) ask whether it falls solely within the excluded
subject matter;
(4) check whether the actual or alleged contribution is
actually technical in nature.
The third (and fourth) step both help with
forbidding
computer programs, as the exposition and precedents in the
later
sections show:
eg "Substance over form
... constructed using the
principles of normal claim
construction. If the contribution identified in step
two of
the “four step approach”of the invention as claimed lies
solely in an
excluded field, the claimed invention fails at
step three of the “four step
approach” and is not a
patentable invention. In the judgment in
Aerotel/Macrossan,
Jacob LJ elaborated on step two, saying “What has the
inventor really added to human knowledge perhaps best sums
up the exercise.
The formulation involves looking at
substance not form- which is surely what
the legislator
intended”. He went on to say “If an inventor claims a
computer
when programmed with his new program, it will not
assist him if he alleges
wrongly that he has invented the
computer itself, even if he specifies all the
detailed
elements of a computer in his claim. In the end the test
must be what
contribution has actually been made, not what
the inventor says he has made”.
When assessing this
contribution, examiners should not consider prior art
falling in the section 2(3) field.
... Court of Appeal, where application
of the second
step in the four step approach identified the inventor’s
contribution as an interactive computer system involving no
new hardware, and
application of the third step put this
invention solely into an excluded
category. Similarly, in
Bloomberg LLP and Cappellini’s Applications [2007] EWHC
476
(Pat), [2007] FSR 26, Pumfrey J stated that “a claim to a
programmed
computer as a matter of substance is just a claim
to the program on a kind of
carrier. A program on a kind of
carrier, which, if run, performs a business
method adds
nothing to the art that does not lie in excluded subject
matter”.
In Peter Williams’ Application (BL O/038/07),
although the claims related to a
method of providing
personalised transactional benefits over a network using a
code symbol reader, the substance of the claims was
determined to be the
practice of shielding a consumer’s
identity from a retail establishment. This
was held to be no
more than a business advantage, and as such the invention
was excluded under S.1(2)(c)."
Brief commentary and questions about
relevance to US
problem
The other sections are more specific but does
this idea
of substance over form help with software as mathematics -
placing
in the domain alongside those classes of
unpatentable ip?
There is surely
acknowledgement and acceptance of
mathematics as a formal language. It
can be used to
formulate how to do things but does not change the substance
of
the device (would a comparison with, say, "sets of
controls that can be
"hard-wired" rather then programmable,
be a help or a hindrance here?) Just as
a scientific theory
can underpin (and allows) the way a device works but cannot
itself be patented. However, neither is the
formulation of the theory
necessary to make it work -
just that it does! Comparisons here with heuristic
algorithms (my understanding of heuristic comes from the
philosophy of science
so I might be totally off track)?
A novel (unpatentable) scientific theory
or discovery
(expressed and understood in some sort of language) can
substantiate itself through an invention which can still
only be patented if
it is novel but the underlying
theory remains in the public
domain -
even if "coded" in "specialist" notation.
Whatever the merits and arguments
above, how about
arguing for the clear advantages of establishing agreement
between major international trading blocks? Does anybody
know how far UK
practice reflects EU Laws and practice and
how it differs? Hopefully, we can
argue that everybody
should converge to something like the '4 step approach'
with
agreed "excluded subject matter" that includes software.
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