Wednesday 12 June 2013

HTC v Apple - A broader signpost for patentability

Patentability under UK and European law has been something of an ongoing theme of mine for a few years, particularly in relation to patents for software or business methods (although I have been known to occasionally stray into other areas such as stem cells). The last time I visited the issue in any great detail was in May 2010 when the EPO Enlarged Board decision in G 3/08 was issued (see here), a few months after I summarised the position in the UK and Europe in a 'where are we now' style here, and correctly predicted the outcome of G 3/08. Since then, the issue has been largely left for the EPO to get on with what they were doing already (principally based on the reasoning in Comvik, T 641/00), while the UK approach has developed from the flawed Aerotel/Macrossan judgment, followed and augmented by Symbian, both from the UK Court of Appeal. There have been other judgments in the UK that have tinkered with how the Aerotel four step test should be viewed and how to judge whether something is technical, such as Halliburton (see here for my comments) and AT&T/CVON (see here for some interesting comments), but nothing that has significantly altered the way patentability is assessed according to UK law.

As a result of the case law in the UK not really evolving beyond Symbian, reading through the decisions from the IPO relating to Section 1(2) each month (which I do for the CIPA Journal out of the goodness of my heart) has become something of a mind-numbing process. Seeing the same reasoning and the same relentless refusals time and time again can become a bit boring, so I try to avoid reporting too many of them. Something that seems to turn up every time in a decision relating to patentability is the list of 'signposts' from AT&T/CVON. These were intended to be used as a check to see whether there was any relevant technical effect (bearing in mind the fourth step of the Aerotel test, which Symbian indicated should be taken together with the third), and were of course not meant to be exhaustive, let alone binding. They have, however, been used fairly systematically by the UK IPO to determine the presence of anything technical. The signposts, as set out by Lewison J (see paragraph 40 of the judgment) are as follows:
i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; 
ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run; 
iii) whether the claimed technical effect results in the computer being made to operate in a new way; 
iv) whether there is an increase in the speed or reliability of the computer; 
v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
The fourth signpost is often used by applicants (or more usually their attorneys) claiming a technical effect, where there is at least an arguable case for an improvement in efficiency obtained as a result of a new computer program. UK IPO hearing officers, however, tend to view this signpost quite narrowly, and usually only allow such efficiencies to be relevant if they are somehow tied to something outside the normal operation of software. Simply making a piece of software more efficient is usually not enough to point towards an increase in the speed or reliability of the computer, despite what Symbian might have suggested.

A recent judgment from the UK Court of Appeal, in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 might help in allowing arguments relating to the fourth signpost to be given more weight. The case related to European patents EP2098948 (application number 09154313.2) and EP1964022 (application number 06846405.6), both of which were found by Floyd J in the Patents Court to be invalid (see here). EP1964022 related to the well-known "slide to unlock" feature (shown in the drawing on the right, taken from the patent) used in Apple's iPod, iPad and iPhone products. This was found by Floyd J to be either not novel or to lack an inventive step over the prior art.

EP2098948 was also found to be invalid, although for relating to excluded subject matter, in particular for being a computer program as such. This patent related to how multi-touch gestures were processed so that recognised multi-touch gestures could be directed accordingly to software elements in the device. Apple argued that the invention met all the signposts of AT&T/CVON, meeting the fourth one because the invention simplified application coding. Floyd J disagreed, and considered that the invention was concerned with the way in which software operated on the data relating to touch events, which did not make the computer operate in any new way and there was no evidence of an increase in speed or reliability. On appeal, however, both Kitchin LJ and Lewison LJ (as he now is) considered that the narrow interpretation placed on the fourth signpost was too restrictive. Lewison LJ reflected on the signposts that he formulated and thought that they "may have been expressed too restrictively", preferring the judgment of Mann J in Gemstar-TV Guide v Virgin Media, who said "It would be a relevant technical effect if the program made the computer a better computer in the sense of running more efficiently and effectively as a computer" (paragraph 42). Kitchin LJ also considered that they were "useful signposts, forming as they do part of the essential reasoning in many of the decisions to which we must look for guidance. But that does not mean to say they will be determinative in every case. I have also had the benefit of reading in draft Lewison LJ's judgment in this case. I respectfully agree with that too, including his observation that, in the light of Mann J's judgment in Gemstar-TV Guide International Inc v Virgin Media Ltd [2009] EWHC 3068 (Ch), [2010] RPC 10, he would adopt as his fourth signpost the less restrictive question whether a program makes a computer a better computer in the sense of running more efficiently and effectively as a computer. Indeed, this is, to my mind, another illustration of the still broader question whether the invention solves a technical problem within the computer" (paragraph 51).

I now eagerly await the first decision from the IPO where this newly broadened signpost has been properly taken into account. Although the change will probably not have a great effect on extending the boundary of what is considered patentable for computer-implemented inventions, it will certainly result in some greater consideration at the IPO of what constitutes a technical effect according to UK law.

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