Computer Programs

Question 1

Aerotel and Macrossan, [2006] EWCA Civ 1371

Answer 1

UK - FOUR STEP TEST FOR ASSESSING BUSINESS METHOD AND COMPUTER PROGRAM PATENTS

This case is significant as it provides the current approach for determining whether a claim relates solely to excluded subject matter is a four step test:

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.

Question 4 is in effect a final check, as if the answer to question 4) is that the alleged contribution is technical in nature, it should not be excluded subject matter under question 3.

Note, that this case does not provide guidance on how to determine the “actual contribution” or determine whether that contribution “falls solely within the excluded subject matter” or is “actually technical”. See signposts in AT&T Knowledge Ventures LP and CVON!

Still therefore some difficulties and variation in applying the test.

Question 2

Current position at the Boards of Appeal of the EPO, approach in relation to computer-implemented inventions

Answer 2

1. Determine the technical problem which the invention seeks to overcome.
2. Look at the solution to that problem encapsulated in the invention.
3. If it solves the problem by technical means it is patentable if those means are new, inventive and capable of industrial application.
4. If it does not solve the problem by technical means it is not patentable. For example, it may use or modify matter excluded under Article 52 (2), being no more than an automation of non-technical activity. However, the use of such matter designed to be particularly suitable for computer implementation may, arguably, possess a technical character and, if so, the other requirements for patentability should be tested.