With great sadness this weblog regrets to inform its readers of the death of the real Tufty the cat. Tufty, who spent several happy years at his owners' country home after being rescued in 2006, died suddenly this morning after a suspected heart attack.
Tufty, who took a great interest in the legal papers that one of his owners kept bringing home, was the inspiration for the pseudonymous writer of many items on the IPKat weblog, from his first appearance in August 2007 (here) through to his departure from the IPKat in January 2011 to begin this weblog in order to pursue his own path among the esoterica of patent law. His proudest moment was being mentioned by Lord Hoffmann in relation to the amicus brief Tufty submitted to the EPO on G 3/08 (details of which can be found here and here). He was also proud of his more minor contribution to the UK IPO opinions service.
In real life, Tufty was a very loving cat and was often to be found obscuring papers and computer monitors at his home, looking for affection. His favourite food was fresh baby rabbits (caught by himself), and he loved a vigorous head rub from his owners.
Tufty's owners would like to express their gratitude to the charity Cats Protection for looking after Tufty and his friend Pod while they were waiting to be homed and for providing them with such a special cat. He will be greatly missed.
Wednesday, 4 January 2012
Tuesday, 20 December 2011
Sandvik v Kennametal: the dangers of armchair examples
An important part of getting a valid patent is that it needs to disclose the invention in such a way that it can be reproduced without undue effort by a nominal 'skilled person'. This requirement is enshrined in Article 83 EPC, which simply states:
In some cases the applicant may be so confident the invention will work as planned that examples are provided setting out how to make a product according to the invention without this having in practice being done when the application is filed. This is normally nothing to be too worried about, but the applicant should always be aware of the potential fatal flaw in the application if the example does not in fact work.
Such a fatal flaw was revealed in a recent judgment by Mr Justice Arnold in the case of Sandvik v Kennametal, available from BAILII here. Sandvik had obtained a European patent, EP0603144, relating to an alumina-coated cutting tool (similar to those shown in the picture on the right). The key feature of the claimed invention was that the alumina coating had a particular texture, i.e. a preferred crystallographic orientation relative to the cutting face. The claims specified a 'texture coefficient' (TC) of larger than 1.3 in relation to one particular orientation, which meant that this orientation would be preferred over the others. The claims also specified how the texture coefficient should be measured, which was by using standard X-ray diffraction data patterns.
Unfortunately for Sandvik, when an experiment was carried out following one of the 'armchair examples' (as Arnold J put it: paragraph 147), the resulting texture coefficient was much less than expected. The best that could be done was a TC of 0.84, which related to the particular orientation being less preferred rather than more preferred. Sandvik tried to argue that the skilled person would be able to get to the required result specified in the claims by doing a few trial runs, as they had done when optimising the process. However, the key feature that allowed the claimed texture coefficient to be obtained, relating to the supply of gases during deposition of the coating, was not disclosed in the patent and was even admitted by Sandvik not to have been discovered until after the priority date of the patent.
Arnold J considered that this missing information was fatal to the patent. Without the skilled person being informed of how to get the required texture, it was not possible for the claimed invention to be sufficiently disclosed because the information on what to do and why was not part of the common general knowledge. As Arnold J put it, when following the example outlined in the patent "the skilled reader would not appreciate that he was doing something that he was not supposed to do" (paragraph 137). The patent was therefore found to be invalid on the ground of insufficiency. It was also found invalid for being obvious, but this was something of a moot point (unless the insufficiency finding is overturned on appeal).
The main lesson to be learned from this case is fairly obvious, which is that examples of how to perform an invention should be sufficiently described in enough detail for someone else to be able to do it. It is dangerous to assume that the skilled person can fill in any gaps, as these could be too wide when it comes down to proving it.
The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.This requirement is normally not something that can be tested during examination. It is often therefore just taken as read that whatever is described in a patent application could in fact be carried out by a skilled person simply following one or more of the examples in the description. There should, of course, be at least one example in the description that results in a product, or follows a process, that lies within the scope of the claimed invention.
In some cases the applicant may be so confident the invention will work as planned that examples are provided setting out how to make a product according to the invention without this having in practice being done when the application is filed. This is normally nothing to be too worried about, but the applicant should always be aware of the potential fatal flaw in the application if the example does not in fact work.
Such a fatal flaw was revealed in a recent judgment by Mr Justice Arnold in the case of Sandvik v Kennametal, available from BAILII here. Sandvik had obtained a European patent, EP0603144, relating to an alumina-coated cutting tool (similar to those shown in the picture on the right). The key feature of the claimed invention was that the alumina coating had a particular texture, i.e. a preferred crystallographic orientation relative to the cutting face. The claims specified a 'texture coefficient' (TC) of larger than 1.3 in relation to one particular orientation, which meant that this orientation would be preferred over the others. The claims also specified how the texture coefficient should be measured, which was by using standard X-ray diffraction data patterns.Unfortunately for Sandvik, when an experiment was carried out following one of the 'armchair examples' (as Arnold J put it: paragraph 147), the resulting texture coefficient was much less than expected. The best that could be done was a TC of 0.84, which related to the particular orientation being less preferred rather than more preferred. Sandvik tried to argue that the skilled person would be able to get to the required result specified in the claims by doing a few trial runs, as they had done when optimising the process. However, the key feature that allowed the claimed texture coefficient to be obtained, relating to the supply of gases during deposition of the coating, was not disclosed in the patent and was even admitted by Sandvik not to have been discovered until after the priority date of the patent.
Arnold J considered that this missing information was fatal to the patent. Without the skilled person being informed of how to get the required texture, it was not possible for the claimed invention to be sufficiently disclosed because the information on what to do and why was not part of the common general knowledge. As Arnold J put it, when following the example outlined in the patent "the skilled reader would not appreciate that he was doing something that he was not supposed to do" (paragraph 137). The patent was therefore found to be invalid on the ground of insufficiency. It was also found invalid for being obvious, but this was something of a moot point (unless the insufficiency finding is overturned on appeal).
The main lesson to be learned from this case is fairly obvious, which is that examples of how to perform an invention should be sufficiently described in enough detail for someone else to be able to do it. It is dangerous to assume that the skilled person can fill in any gaps, as these could be too wide when it comes down to proving it.
Similar is not enough
As if to illustrate my point, following my last post on self-represented applicants another opinion has been recently issued by the UK IPO relating to a patent obtained by just such an applicant. The patent in question, GB2324605 (unfortunately available online only in the pre-grant 'A' format), was granted to the applicant and inventor Mr Alan Mackinder in 2001. Mr Mackinder has since then requested and had issued two opinions under section 74A regarding infringement of his patent, the first (opinion 04/05) issued in January 2006 and the second (opinion 18/11) on 6 December 2011. Unfortunately for Mr Mackinder, both opinions have not gone the way he wanted them to.
Claim 1 of the patent as granted goes some way to explaining why Mr Mackinder has so far not succeeded. The claim read as follows:
The question that inevitably comes to my mind at least is whether Mr Mackinder would have fared any better if he had been represented when prosecuting his application. It appears that the key feature of the invention was automatic enforcement of legal speed limits, so even with professional assistance it seems unlikely that he would ever have been able to enforce his patent against an insurance company. Some better claim drafting, even without the benefit of hindsight, might however have got a patent granted with a more useful scope. Unfortunately for Mr Mackinder, who has now spent in the region of £2000 in renewal fees and £400 in opinion fees on his patent, it is all now far too late. When it comes to deciding on the actual scope of a granted patent, the IPO is apparently much less willing to accommodate any weaknesses in a self-represented patentee's case than it is when the applicant is prosecuting his application. Is this a good thing? I think it most certainly is, although such applicants may not feel the same way.
Claim 1 of the patent as granted goes some way to explaining why Mr Mackinder has so far not succeeded. The claim read as follows:
1. A vehicle speed limit enforcement method, utilising an integrated electronic unit using satellite positional information, for detecting, on a worldwide basis, when a vehicle exceeds a legally enforceable speed limit with levels of accuracy demanded by the law enforcement agency and on doing so will transmit a signal to the appropriate law enforcement agency indicating that the speed limit has been exceeded, the speed of the vehicle, the time the speed limit was exceeded, the date the speed limit was exceeded, the name of the driver, the location where the speed limit was exceeded, the registration number of the vehicle, the make of the vehicle and the model of the vehicle.In his request for an opinion, Mr Mackinder alleged that an apparatus known as the "Smartbox" offered by co-operative insurance (CIS) infringed his patent. This device, based on GPS tracking technology, would, when installed in a vehicle, monitor how the vehicle was being driven and allow an insurance premium to be calculated on a 'pay-how-you-drive' basis. The device therefore had some similarities with Mr Mackinder's patented method in how it worked in practice. The examiner, however, considered that similarity was not enough. Claim 1 required an infringing device to do several things in response to exceeding a speed limit, most of which CIS argued quite reasonably the Smartbox did not do. Given that Mr Mackinder had, as the examiner put it, "the ultimate responsibility for the words chosen to define his monopoly", there was no doubt that the skilled addressee would understand him to have intended to limit his monopoly by including the essential feature of transmitting a signal to an appropriate law enforcement agency (which CIS clearly was not). For this, and various other reasons relating to the claim's other restrictions, the examiner did not consider the Smartbox or its method of use to constitute an infringement of the patent.
The question that inevitably comes to my mind at least is whether Mr Mackinder would have fared any better if he had been represented when prosecuting his application. It appears that the key feature of the invention was automatic enforcement of legal speed limits, so even with professional assistance it seems unlikely that he would ever have been able to enforce his patent against an insurance company. Some better claim drafting, even without the benefit of hindsight, might however have got a patent granted with a more useful scope. Unfortunately for Mr Mackinder, who has now spent in the region of £2000 in renewal fees and £400 in opinion fees on his patent, it is all now far too late. When it comes to deciding on the actual scope of a granted patent, the IPO is apparently much less willing to accommodate any weaknesses in a self-represented patentee's case than it is when the applicant is prosecuting his application. Is this a good thing? I think it most certainly is, although such applicants may not feel the same way.
Sunday, 18 December 2011
Self-represented applicants
It is said (although I'm not sure who said it first) that he
who represents himself in court has an idiot for a lawyer and a fool for a
client. Thoughts like this can often
come to mind when reading some of the decisions that come out of the UK IPO
relating to self-represented applicants.
These decisions are, of course, an entirely unrepresentative sample of
how self-represented applicants get on. I
am sure many of them manage quite well and end up getting a patent out of the
process, although usually with the assistance of a helpful examiner. How useful
and enforceable such patents are, however, is another matter (see Opinion 06/06 for a good example of
why such patents can be less than ideal).
It is well known that examiners at the UK IPO tend to be
remarkably patient and accommodating with applicants without a
representative. You only have to see the
difference between how an examiner addresses such an applicant and how the same
examiner addresses a representative.
Examiners tend to do helpful things like explaining the law on novelty,
inventive step, clarity, added matter and the like, which would be unnecessary
to any qualified patent attorney. They
also, thankfully, tend to advise such applicants that they might like to
consider getting themselves a qualified representative, typically pointing them in the direction of CIPA.
Sometimes, however, the self-represented applicant just
doesn't get it and refuses to engage with the examiner in any kind of
constructive way. A couple of recent
cases help to illustrate this point. The
first of these relates to an application filed by VB UK IP Limited, as represented
by the inventor Mr Paul Scanlan, the decision relating to which, BL O/415/11,
was issued on 23 November 2011. In his
application, Mr Scanlan claimed he had invented a method and apparatus for
"determining changes in distance of
visual fixation of a person by use of input from the person's respiratory
function data" (as stated in claim 1).
The idea behind the invention was described in the application in the
following way:
"As discovered by the inventor, the respiratory system directly
influences the visual system. The inventor discovered that pressure from the respiratory
system presses on the rear of the eyeball, changing the eyeball's length from
front to back, thereby altering the focus of the eye. Increased pressure from
the respiratory system pushing on the back of the eyeball reduces the length of
the eyeball for better distance vision.
A decrease in this pressure increases the length of the eyeball for
better close-up vision. Thus when a person changes from viewing an object in
the distance to instead viewing an object close-up, there is a corresponding
change in pressure in the respiratory system" (page 2, lines 16-17 of
the application as filed, published as GB2440966).
According to the inventor, this relationship could be used
to enable auto focus functions on cameras (as shown in the illustration on the left) and for landing aeroplanes, among many
other applications. One problem, however, was
that the examiner did not think that the invention was patentable because it
related to a scientific discovery as such under section 1(2)(a), lacked
industrial applicability under section 4(1) (being contrary to well-established
physical laws), and the application contained insufficient information for a
person skilled in the art to perform the invention, according to section14(3). The applicant disputed all of
these, and argued at the hearing that his theory was correct. The following paragraph of the decision
paints an interesting picture of what went on before the hearing officer:
“To demonstrate his theory, Mr Scanlan hummed while looking from one
finger to another, the fingers positioned at two different distances from his
eye, and the tone of his hum changed. This, he asserted, showed a link
between the respiratory system, and the distance of visual fixation.”
The hearing officer was, unsurprisingly, not persuaded and
considered that this did not provide evidence that there was in fact any link.
Not to be put off, Mr Scanlan also provided evidence in
support of his theory, which included a reference to a contestant on the ITV show “Britain
“This is a gentleman who appears to be able to make his eyeballs “pop”
out of his skull. This effect, according to Mr Scanlan, is achieved by Mr
Popeye having excellent control over the pressure in his respiratory system and
how it affects his eyes. Again, there is no evidence that this effect is not
simply down to good control of the facial muscles and/or extrinsic eye muscles.”
Considering all the applicant’s evidence, the hearing
officer concluded that there was no “credible
evidence to support the applicant’s theory over and above what are considered
to be well established medical principles” (paragraph 24), and there was
therefore no reasonable prospect of Mr Scanlan’s proposals being accepted even
under trial conditions with experts available to give evidence (a reference to
the requirements for refusing an application on section 4(1) grounds following
the decision in Blacklight Power). The application therefore lacked industrial
applicability.
The hearing officer also found the application to be
insufficiently disclosed, under section 14(3), “due to a lack of information concerning the apparatus which should be
used to obtain respiratory function data, the conditions under which that data
should be obtained, and a lack of information concerning how any data obtained
would then be used to derive a visual fixation distance” (paragraph
32). The application was, unsurprisingly, refused.
It appears to me that Mr Scanlan’s invention would be doomed
to failure even if the applicant was represented by a qualified attorney (and
had enough money to take his application through to a hearing). In another recent example, however, I am not
so sure that the eventual outcome would have been the same.
This was the case of Henri Duong, BL O/422/11, this decision being issued on 25 November 2011.
Mr Duong filed his application in January 2008, claiming
priority to three previously filed 1. The basis of inventing and materializing Detectable anti-collision automatic braking device invented for stopping collision/traffic accident in transportation during running; comprising sensor(s)/ radar(s) or similarity is for installing in/on engine/motor-vehicles, automobiles, cars, trucks, buses, vans, trains, high speed trains, underground trains, tanks, motorcycles, airplanes, ships, helicopters, submarines and all moving transportations connecting on "standby" for front and rear detecting at specified distance on the road, on railway, on air route and/or at sea, automatic braking being operated automatically during running based on both functions of sensor(s)/radar(s)/any operative device(s) detecting against obstacle at its detecting zone and of structural automatic braking unit being installed and connected electrically switching on by sensor(s)/radar(s) that motor-vehicle and transportation being stopped running to avert collision grounds, comprising installing as parts of the invention with detecting device in/on all transportation for safe driving, disconnecting function period, automatic water switch, speedometer switch unit, structural operational links & automatic braking unit(s)/ motor(s), automatic brake locking & releasing unit, automatic brake pedal, automatic safety system, operating lamps/similarities on indicator and electrical circuit connection in function grounds as well for adapting automatic traffic stop lamp device in use, including: [sic]The examiner identified several prior art documents relating to automatic braking systems, and objected that the claims were unclear in several ways and that the invention as claimed was not new. There then followed what the hearing officer described as a “vast amount of correspondence between the examiner and the applicant which has not done much to progress the application towards grant”. In this correspondence the examiner repeatedly raised fundamental objections to the application, which were repeatedly ignored by the applicant. Along with the original clarity and novelty objections, added matter objections were raised, as a result of the applicant filing new claims having no clear basis from the application as filed. The examiner's report from March 2009, responding to the applicant's three previous replies, is a model of calm restraint combined with helpful advice:
"In your letter of 14 November 2008 you state that adding matter to your application should be allowed. My job is to guide you through the law so that you can obtain a valid patent. Whether you or I agree with the law doesn't matter, the important thing to note is that a patent that does not comply with the law will not be granted. Added matter is not allowed and as such I am unable to grant a patent containing any information that was not present at the date of filing. [...]
You need to submit a response to the report I sent you on the 12 May 2008. You should read though all of the patents I sent you and find a feature of your application (as filed, not adding any matter) that is not shown in any of these documents and put this feature at the end of claim 1 that you filed on 26 February 2008. Then you should write me a letter discussing each of the patents I have listed and telling me why your new claim 1 is different from these patents (this need not be longer than a few sentences for each patent listed). This will be the first step in the process of obtaining a granted patent for your application, but until this step is made I am unable to grant you a patent."Unfortunately, Mr Duong failed to respond constructively to any of the advice offered. To add to the clarity, novelty and added matter objections, the applicant then prompted a further one of plurality of invention through making more amendments. After another couple of reports, the examiner then suggested that he might like to consider seeking advice from a patent attorney. Yet further amendments then prompted the examiner to add insufficiency to the growing list of objections. Going above and beyond the call of duty, the examiner even suggested a draft set of claims that he considered would overcome all existing objections. The applicant, unsurprisingly by that point, failed to take up the offer and a hearing was then held, although without the applicant appearing in person.
The hearing officer reviewed the outstanding objections and agreed with the examiner, concluding that "it is abundantly clear to me that a patent cannot be granted for it in its present form". The compliance period had by then expired, so the hearing officer considered whether it would be worth offering the applicant a further opportunity to amend the application to overcome the objections. He concluded, however, that "the application has not moved in the right direction and nor has Mr Duong shown any inclination to heed any advice on how to advance it towards grant despite the countless opportunities that have been given to him. I do not consider it appropriate to offer him a further opportunity to do so now". As a result, the application was refused for failure to comply with the requirements of sections 14(3), 14(5)(b) and 76(2) at the end of the compliance period.
It is clear that Mr Duong could have obtained a granted patent even without the help of a representative if only he had paid attention to the assistance offered by the examiner. I can only wonder therefore whether he even realised what he was trying to do, as all opportunity of getting a patent in the UK for his invention now appears to be lost (assuming that no appeal is being filed). I am not sure what, if any, lessons there are to be learned from this case, but it does appear to me that sometimes the IPO goes beyond what could be considered to be reasonable in providing help to applicants without asking for anything in return, although even their patience does eventually run out. The inevitable question as I see it is whether the IPO is doing the right thing in treating unrepresented applicants so differently. Since everyone has to comply with the same legal requirements, whether or not they are represented, is this entirely fair?
Wednesday, 9 November 2011
Scientific Heresy
While there is nothing much that is going on in European and UK patent law to interest me sufficiently to write a blog post about, here is something else that has been interesting me for a while. Those of you who follow me on Twitter will probably already know what this is about. Others can read on and find out for themselves.
One of the things that impressed me most while I was training to be a patent attorney I found from Paul Cole's book "Fundamentals of Patent Drafting" (which can be ordered from CIPA here). On page 2 of the introduction is a footnote referencing an article titled "Cargo Cult Science" by the physicist Richard Feynman. Paul Cole identified this as being required reading, so I duly went away and bought the book, although it turns out the article in question is also freely available on the internet (here). The book is certainly worth buying anyway, because it is full of all sorts of strange and funny stories from Feynman's life, including how he picked the safes holding the secrets of the atomic bomb while working on the Manhattan project.
The cargo cult science article, which was derived from an address Feynman gave to students at Caltech in 1974, aims to get across what is probably the most important idea that any scientist must understand if they are to do science properly, which is to learn not to fool yourself. Feynman is also quoted as saying that science is "the belief in the ignorance of experts" (see here), which is another important and strongly related idea, since experts in particular can be very prone to fooling themselves, particularly when they get together for a common purpose. In brief, although I would recommend you go and read it yourself, what Feynman was trying to say is that to do science properly you should take nobody's word for it, not even your own. If you see a result and think it was caused by one thing, you must then make every effort to rule all other possibilities out before settling on the idea that you know the cause and effect relationship. Only once everything else has been ruled out can you confidently say that you know what the cause was and why the effect was what it was, and even then you must leave open the possibility that there could be something you have missed. Otherwise you run the very real risk of falling to what is known as confirmation bias, which is to only seek out things that confirm your preconceptions, rather than what you should do which is to actively seek out anything that might go against your current best guess. Only by doing the latter, and then being unable to come up with anything that could otherwise explain your results, can you stand any chance of narrowing down what it is you are after, which is of course the truth. And if you don't think there is such a thing as objective truth, then science (or indeed the real world) is not for you. Try religion instead.
The philosopher Karl Popper considered that the way in which science must work was that any scientific theory must be falsifiable for it to be a theory at all (see here for more), otherwise it was just useless. The theory of gravity is a valid theory not just because all everyday observations support it but more importantly because it could be disproved by, for example, something falling (or not falling) contrary to what the theory predicted. The theory of evolution, which has great explanation power for how life forms change over time, could also be disproved, for example by the existence of rabbits in the precambrian. Other ideas, however, cannot be properly classified as scientific theories if there is no way they could be disproved, or are so vague as to be able to cover every eventuality, especially if they do so retrospectively (astrology, for example). Such theories are useless, largely because they have no predictive power and explain nothing. Another philosopher Bertrand Russell came up with the idea of a celestial teapot as an example of a theory that could not be disproved because no matter where you looked it could always be said that you hadn't yet found it. The burden of proof for any such non-falsifiable theories must therefore fall on those who make such claims, and not on those who consider them to be false.
In what I think of as effectively an update on Feynman's cargo cult speech, Matt Ridley (author of the excellent book The Rational Optimist) recently presented a lecture on 'scientific heresies' at the RSA in Edinburgh. This lecture has been reproduced here and here (with pictures), and has been noted on Richard Dawkins' website here (although Dawkins does not necessarily agree with Ridley's conclusions). It is also available, with images, in the form of a pdf here. I cannot underestimate, or overemphasise, how important it is for anyone who thinks they know how science works to read this. If there is only one thing you read about the subject in question (and after reading it I doubt that this will remain the case), then this should be it. Once you have read it in full, please feel free to come back and tell me why, and how, he is wrong.
One of the things that impressed me most while I was training to be a patent attorney I found from Paul Cole's book "Fundamentals of Patent Drafting" (which can be ordered from CIPA here). On page 2 of the introduction is a footnote referencing an article titled "Cargo Cult Science" by the physicist Richard Feynman. Paul Cole identified this as being required reading, so I duly went away and bought the book, although it turns out the article in question is also freely available on the internet (here). The book is certainly worth buying anyway, because it is full of all sorts of strange and funny stories from Feynman's life, including how he picked the safes holding the secrets of the atomic bomb while working on the Manhattan project.
The cargo cult science article, which was derived from an address Feynman gave to students at Caltech in 1974, aims to get across what is probably the most important idea that any scientist must understand if they are to do science properly, which is to learn not to fool yourself. Feynman is also quoted as saying that science is "the belief in the ignorance of experts" (see here), which is another important and strongly related idea, since experts in particular can be very prone to fooling themselves, particularly when they get together for a common purpose. In brief, although I would recommend you go and read it yourself, what Feynman was trying to say is that to do science properly you should take nobody's word for it, not even your own. If you see a result and think it was caused by one thing, you must then make every effort to rule all other possibilities out before settling on the idea that you know the cause and effect relationship. Only once everything else has been ruled out can you confidently say that you know what the cause was and why the effect was what it was, and even then you must leave open the possibility that there could be something you have missed. Otherwise you run the very real risk of falling to what is known as confirmation bias, which is to only seek out things that confirm your preconceptions, rather than what you should do which is to actively seek out anything that might go against your current best guess. Only by doing the latter, and then being unable to come up with anything that could otherwise explain your results, can you stand any chance of narrowing down what it is you are after, which is of course the truth. And if you don't think there is such a thing as objective truth, then science (or indeed the real world) is not for you. Try religion instead.The philosopher Karl Popper considered that the way in which science must work was that any scientific theory must be falsifiable for it to be a theory at all (see here for more), otherwise it was just useless. The theory of gravity is a valid theory not just because all everyday observations support it but more importantly because it could be disproved by, for example, something falling (or not falling) contrary to what the theory predicted. The theory of evolution, which has great explanation power for how life forms change over time, could also be disproved, for example by the existence of rabbits in the precambrian. Other ideas, however, cannot be properly classified as scientific theories if there is no way they could be disproved, or are so vague as to be able to cover every eventuality, especially if they do so retrospectively (astrology, for example). Such theories are useless, largely because they have no predictive power and explain nothing. Another philosopher Bertrand Russell came up with the idea of a celestial teapot as an example of a theory that could not be disproved because no matter where you looked it could always be said that you hadn't yet found it. The burden of proof for any such non-falsifiable theories must therefore fall on those who make such claims, and not on those who consider them to be false.
In what I think of as effectively an update on Feynman's cargo cult speech, Matt Ridley (author of the excellent book The Rational Optimist) recently presented a lecture on 'scientific heresies' at the RSA in Edinburgh. This lecture has been reproduced here and here (with pictures), and has been noted on Richard Dawkins' website here (although Dawkins does not necessarily agree with Ridley's conclusions). It is also available, with images, in the form of a pdf here. I cannot underestimate, or overemphasise, how important it is for anyone who thinks they know how science works to read this. If there is only one thing you read about the subject in question (and after reading it I doubt that this will remain the case), then this should be it. Once you have read it in full, please feel free to come back and tell me why, and how, he is wrong.
Tuesday, 1 November 2011
Protecting Kids The World Over, while chipping away at the Section 1(2) exclusions
Not so long ago, I wrote about a recent decision from the Patents County Court, Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat), in which HHJ Birss considered that the exclusion under section 1(2) relating to methods for performing mental acts should be viewed narrowly rather than broadly, as the UK-IPO had been doing. This was all very helpful for applicants faced with such problems at the IPO with their applications, but I was then concerned about what would happen as a result. Would the IPO simply switch to using the exclusion of programs for computers as a backstop? It turns out that my pessimism was not necessarily fully justified, as another decision has now arrived that follows Halliburton and deals with exactly this issue.
The applicant, strangely named Protecting Kids The World Over Limited (or PKTWO for short), appealed against a decision of a UK-IPO
hearing officer (BL
O/439/10) refusing their application (GB 0723964.3, published as WO
2006/094335 A1) relating to a system for monitoring electronic
communications. The hearing officer had
found the claimed invention to be excluded from patentability because it
related to a computer program and to a method for performing a mental act as
such.
The applicant, strangely named Protecting Kids The World Over Limited (or PKTWO for short), appealed against a decision of a UK-IPO
hearing officer (BL
O/439/10) refusing their application (GB 0723964.3, published as WO
2006/094335 A1) relating to a system for monitoring electronic
communications. The hearing officer had
found the claimed invention to be excluded from patentability because it
related to a computer program and to a method for performing a mental act as
such.
The application claimed a system for monitoring electronic
communications, in which packets of data were analysed for expressions matching
with a stored hash table of expressions (right: a small sample of an XML arrangement of some of the less offensive expressions, as taken from the published application). An alert score was assigned according
to matching expressions, and a raised aggregate alert level triggered a
notification to an administrator. A
response from the administrator could result in one of a number of actions,
including terminating the communication and shutting down the user equipment.
The hearing officer had considered, following the four-step
test from Aerotel Ltd. v Telco Holdings
Ltd & Ors Rev 1 [2006] EWCA Civ
1371, that the invention did not make a technical contribution because
there was no increase in the speed or reliability of the computer that was
independent of the program running or the data being processed, and that the
invention did not operate at the architecture level of the computer but at the
application level.
Prior to the appeal hearing, the UK-IPO indicated that the
mental act exclusion was no longer being relied on, in light of the recent
decision in Re Halliburton. The objection relating to the application being excluded for being a computer
program was, however, maintained.
Floyd J, following the judgment of HHJ Birss in Halliburton, considered whether
generation and transmission of an alert notification was a relevant technical
process for being assessed as part of the contribution of the invention. The IPO argued that it was not, while the
appellant argued that it was, particularly when considering the claimed invention as a whole. Referring to Gemstar-TV Guide International Inc. v Virgin Media Ltd [2009] EWHC 3068
(Ch), in two out of the three patents considered in that case the contribution related
to information being simply displayed on a screen, which was judged to be not
technical. In the present case, however,
in which an alarm alerted a user at a remote terminal to the fact that
inappropriate content was being processed within the computer, the contribution
was considered by Floyd J to be qualitatively different (paragraph 34). The contribution did not simply produce a
different display, nor did it rely on the output of the computer and its effect
on the user. The effect of the
invention, when considered as a whole, was judged to be an improved monitoring of
the content of electronic communications, which was said to be technically
superior to the known prior art. The
contribution had the necessary characteristics of a technical contribution
outside the computer itself, and was therefore not excluded for being a
computer program as such. The appeal was
allowed, and the application remitted to the IPO.
The decision appears to be another blow to the IPO's way of considering excluded matter, which they have been insisting follows the reasoning of the string of Court of Appeal cases of Aerotel, Symbian et al. It is certainly going to provide some useful ammunition for applicants and their attorneys in trying to get over objections from examiners where the same old familiar material is wheeled out. As Floyd J states, however, in following Symbian "Each case had to be decided by reference to its own particular facts and features, bearing in mind the guidance given in the decisions mentioned" (paragraph 12). There is consequently still plenty of wriggle room for IPO examiners to continue arguing their case. I would not be surprised if the IPO left their practice notice on computer programs largely unchanged as a result.
The decision appears to be another blow to the IPO's way of considering excluded matter, which they have been insisting follows the reasoning of the string of Court of Appeal cases of Aerotel, Symbian et al. It is certainly going to provide some useful ammunition for applicants and their attorneys in trying to get over objections from examiners where the same old familiar material is wheeled out. As Floyd J states, however, in following Symbian "Each case had to be decided by reference to its own particular facts and features, bearing in mind the guidance given in the decisions mentioned" (paragraph 12). There is consequently still plenty of wriggle room for IPO examiners to continue arguing their case. I would not be surprised if the IPO left their practice notice on computer programs largely unchanged as a result.
Monday, 24 October 2011
Halliburton: construing mental acts
If an invention is claimed as a series of method steps, does it make any difference in what form the claim is presented as far as patentability is concerned? If so, is the question about form over substance or is it more complicated than that? The answer, according to the judgment of HHJ Birss QC in Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat), appears to be the latter. The case relates to an appeal from the IPO, the facts of which were outlined in my post from earlier this year here. In brief, three of Halliburton's UK patent applications relating to methods for designing drill bits using computer modelling were refused at the IPO, all on the grounds of the assessed contribution being a mental act (section 1(2)). A fourth application was refused for the same reasons in a separate later decision. All four applications were combined in the appeal. In the appeal, as with the IPO decision, one representative application was chosen because the others, defining very similar inventions, would stand or fall on the same grounds.
To summarise a fairly long and complicated decision, the judgment in the end came down to whether a method claim, which did not result in anything physical and, although not specified in the claims, would inevitably need to be implemented on a computer, should be considered to be excluded for being a mental act. According to the Court of Appeal in Fujitsu, it might. According to Jabob LJ's (arguably obiter) comments in Aerotel/Macrossan, however, it might not. The hearing officer at the IPO had considered that the broader view of Fujitsu should be taken, and effectively ignored Jacob LJ's doubts in Aerotel about the width of the mental act exclusion.
HHJ Birss, placed in the difficult position of being bound by both precedents from the Court of Appeal as well as having represented the IPO in Aerotel, managed to steer a careful path through the precedents towards the goal of correcting what was a clear discrepancy between UK-IPO and EPO practice (see here for more details; this particular rift between the IPO and the EPO has been in place for the past few years). He firstly dealt with the question of whether it would be inevitable that the claimed method would be performed on a computer, even though this was not explicitly claimed. At paragraphs 21-23,
"In my judgment the skilled reader would understand perfectly well that the simulations referred to in claim 1 are computer simulations from reading the specification as a whole. I also note that the simulations being "computer simulations" is expressly referred to from p21 line 30 - p24 line 23 in the specification. Moreover the reader would understand that "outputting" to a "resource" is something computers do, not people. Accordingly I find that claim 1 (and its brethren) are limited to carrying out the simulations on a computer. They are computer implemented methods."That disposed of the argument relating to whether the scope of a claim could realistically cover an actual mental act, i.e. a calculation carried out by a person, if the processes involved were ones that humans simply would or could not do.
The judge also tackled the question of whether the contribution to the art was technical in nature (steps 3 and 4 of the Aerotel test). After considering Symbian, he considered that the question to be considered was "what task it is that the program (or the programmed computer) actually performs. A computer programmed to perform a task which makes a contribution to the art which is technical in nature, is a patentable invention and may be claimed as such" (paragraph 32). A task that fell within excluded matter, such as a business method (a securities trading system, for example, as in Merrill Lynch) would be not patentable because the result itself is a "prohibited item" (paragraph 33). However, when the task represented "something specific and external to the computer" (paragraph 38), the circumstance is likely to indicate that the invention is patentable.
In conclusion HHJ Birss decided that the balance of the case law was in favour of a narrow scope for the mental act exclusion, referring with apparent approval the EPO decision of Infineon (T 1227/05) that established the latest IPO/EPO rift, arguing that the reasoning was the same as that in Kapur. This was enough to overturn the hearing officer's decision to refuse the applications, finding it to be ill-founded.
The judge did, however, then go on to establish whether the claimed inventions would in fact pass the Aerotel test. The contribution did not fall within excluded matter for being a mental act, but would it be excluded instead for being a computer program? HHJ Birss thought not, and disposed of the matter quite briefly:
" Is it more than a computer program as such? The answer is plainly yes. It is a method of designing a drill bit. Such methods are not excluded from patentability by Art 52/s1(2) and the contribution does not fall solely within the excluded territory. Drill bit design is not a business method, nor a scheme for playing a game nor (as I have held) is this claim a scheme for performing a mental act." (paragraph 71)This very short passage is, in my opinion, the key feature of the judgment. Although the bulk of the judgment relates to whether the mental act exclusion would apply, this would all be completely irrelevant if an examiner could then change tack and state that the method was in any case excluded for being a computer program as such. I would therefore have liked to have seen more on this aspect. As it is, at least for Halliburton, it seems that their applications will be rescued from being refused and will most likely all now be granted once they have been past the examiner again. I wonder, however, whether this will also apply to other applications that have been facing similar difficulties. I have my suspicions that the IPO will indeed change tack and, given the lack of clear indications from this case, decide to refuse such applications on the computer program exclusion instead. This suspicion is, I believe, confirmed by the way the IPO have now indicated that they will change practice in light of this decision. In a new practice notice, the IPO state:
"Following the decision of HHJ Birss QC in Halliburton's Applications [2011] EWHC 2508 (Pat) examiners will now take a narrow view of the mental act exclusion. In future, claims which specify that the invention is implemented using a computer will not be considered to be excluded from patentability as a mental act."There is no indication in the notice that IPO practice in relation to the computer program exclusion will be changing. Indeed, the new notice states that it replaces the guidance given to patent examiners only in paragraph 8 of a previous notice relating to patentability of computer programs. As a result, I strongly suspect that, except for applications specifically relating to drill bit designs, life will continue to be difficult at the IPO for computer implemented inventions that do not output a physical result. But then, maybe I am just overly cynical. We shall see.
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