CIPA Guide to the Patents Acts (UK & European Law)

by Dennis Crouch

I just received my new copy of the CIPA guide to the Patents Acts – Seventh Edition, published by Sweet & Maxwell in the UK. CIPA is the Charted Institute of Patent Attorneys and represents about 3,200 patent attorneys, trainees, and other UK intellectual property law professionals. The guide is edited by Paul Cole and Stephen Jones. The book – affectionately known as the "Black Book" – is actually black and has been in print continuously since 1980. Although the book focuses primarily on UK law, it is highly relevant to considerations of both European and American law. Both Lord Justice Jacob and Chief Judge Rader wrote forwards to the book. In his forward, Judge Rader remarked positively on the growing dialogue between US courts and those of Europe and Asia and noted that US patent courts should be prepared to understand and – at times – apply the law of other nations. Point being – this book is relevant to those in the US practice of patent law. Lord Justice Jacob wrote "I shall continue to keep the book within easy reach. So should anyone else concerned with European or British patents."

Parallel to Judge Rader's thoughts, in a working paper (not yet public) I argue that the America Invents Act further compels US courts to consider the law of other nations in order to implement the harmonization mandate found in the newly enacted legislation.

In his summary of the work, Paul Cole writes that this book is "intend to provide the most comprehensive single-volume reference work for patent law in the UK and under the EPC." The book references over 3300 decisions of the UK IP Office and courts and of the EPO Appeal Boards as well as all relevant statutes.

You can purchase the book for £250 (about $400) from the publisher. [LINK]

Congratulations and Cheers!

As an aside – I will be leading a CIPA short course this summer in London at Lord Jacob's home institution of the University College of London (UCL) Faculty of Laws. The course is primarily intended for UK and European patent law professionals and will focus on the new American law and how the changes will impact prosecution, litigation, and licensing of patent rights.

41 thoughts on “CIPA Guide to the Patents Acts (UK & European Law)

  1. The PCT compels member states to grant patents on applications that satisfy PCT requirements. It does not compel them not to grant patents on applications that do not satisfy those requirements. Just as TRIPS compels the granting of patents in “all fields of technology” but does not prohibit the granting of patents for “non-technological” inventions.

  2. What is “technical”? It strikes me there will always be (thankfully so) a “puzzle at the edge of the claim”, or a degree of fuzziness at the envelope being pushed. An irreducible finite non-zero minimum amount of wiggle room allows the jurisprudence to respond to progress in the useful arts in ways unimaginable to the legislator.

    I am reminded of the EWCA judgement in Unlin v Berry, where Robin Jacob had to construe “free of play”. Did it mean “absolutely free of play” or did it mean “free of play for practical purposes”? Obviously, he plumped for the practical way forward.

    So it is too, with “technical” and patent-eligibility.

  3. Paul,

    Such is, of course, of interest. But should such interest be of such a driver of law? Are we overemphasizing the marginal?

    On the other hand, it is at the edges that that a shape is defined (in a deliberate, albeit subtle reference to central claiming versus edge of fence claiming).

  4. Aside from this all-encompassing “buzzword,” if we want to get technical, business itself has evolved and merged with the technical world. There is no way to separate the two. Now I don’t know how many patent attorneys out there have spent any real time out in the real business world, but I can pretty much assure you that all business of most any size has evolved to include applied science, be it from supply chain management, six sigma, Deming principles, and wave after wave after wave of quality movements.

    And the D_iehrbots must love the throw-in of “subject matter as a whole.” But that’s a whole ‘nother thread to fill.

  5. Anything of the practical science applied to commerce will do. But wait, business means commerce, so anything applied to business will do. And since technological includes the sum of the ways, then this includes all of the ways (provide itself as a verb is not so subtly expansive, especially when combined with “the sum”).

  6. So we see how helpful these dictionary meanings are to distinguish business method patents between technological and non-technological inventions. Anything of applied science to commerce falls within the definition. Falling within the definition is also anything of pure science that interrelates with life, society and the environment.

    Did we leave anything out? Can we leave anything out?

  7. Or, looking at the related World English Dictionary (since we are supposed to apply world norms to the AIA):

    technology (tɛkˈnɒlədʒɪ)
    1. the application of practical sciences to industry or commerce
    2. the methods, theory, and practices governing such application: a highly developed technology
    3. the total knowledge and skills available to any human society for industry, art, science, etc

  8. So what is one to do? I pulled out the dictionary.com definition of “technology” to see what help one can derive from such a technical source:

    tech•nol•o•gy [tek-nol-uh-jee] noun
    1. the branch of knowledge that deals with the creation and use of technical means and their interrelation with life, society, and the environment, drawing upon such subjects as industrial arts, engineering, applied science, and pure science.
    2. the terminology of an art, science, etc.; technical nomenclature.
    3. a technological process, invention, method, or the like.
    4. the sum of the ways in which social groups provide themselves with the material objects of their civilization.

  9. If you are going to define what a Technological invention is, do not use the word “technical” or “technological” three times in the definition.

    This is even worse than defining a process as a process.

  10. In pieces, since the filter is uber sensitive this morning…

    Anyone able to provide a straightforward definition of that simple word will earn a major prize.

    I had to laugh at this thought as I waded through fourteen pages of the Office proposed rule making concerning the Transitional Program for Covered Business Method Patents — Definition of Technological Invention.

    So what do we get after fourteen pages?

    (b) Technological invention. In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis:
    whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.

    I kid you not.

  11. And in the category of “Repeat a lie often enough so that it appears to be a truth,” We have MaxDrei who seeks to implicitly set the definition of “useful arts” in the 18th century.

    How anyone is not sick of this non-US person trying to treat US law is beyond me.

    Sorry MaxDrei, but the US Supreme Court already has defined “useful arts” and does not apply the strict 18th century meaning that you and a host of others would love it to have.

    That position is dead. There is a no resuscitate sign and a living will that forbids you from your attempts. Not that you ever listen. Not that you ever learn. After all, ____ happens and ______ will continue.

  12. Good point Paul, about the PCT Implementing Regulation that requires the specification to set forth the underlying technical problem. Not easy to justify under First to Invent, where obviousness is assessed as of the moment of serendipity in which the invention is conceived.

    But under First to File, where one is writing the specification anterior to the baseline date relative to which obviousness will be assessed, what can one say against it?

    For those who want to read the Aharonian Patent Newsletter on “technical” all I can suggest is that you email him on:

    patnews@ns1.patenting-art.com

  13. How about the PCT? Should it make any difference that the US signed up to that treaty? It includes a rule that the specification should disclose the underlying technical problem. So could the interpretation of the corresponding rule under the EPC be of persuasive authority for a US court? Is the EPO’s problem-solution analysis reconcilable with US law or wholly inconsistent with it? Are the results of obviousness determination the same or different in Europe as before the US courts? Another possible PhD thesis topic if any eager student (or possibly retired practitioner) had the enthusiasm to undertake the project.

  14. Real Question: Unfortunately it is the marginal patents that come before the courts who, on the whole, see our excesses rather than our achievements. As I have said before, what must the judges of the Supreme Court have thought of us when Bilski landed on their desks? It was not the patent for the fan in the Rolls-Royce Trent aero-engine or any other invention of outstanding merit,was it?

    But I do not wholly share your cynicism. Money indeed talks, but on the whole so do the merits of the invention. So what survives litigation and what does not is of interest.

  15. Many thanks Ned for the explanation. I understood that this was the position but wished to be certain. IN neither the US nor UK is ratio discussed much in relation to patent cases

  16. how are they treated by the courts when the time comes for enforcement?

    You of course realize that only the “closer to the edge” ones ever get litigated, right?

    The real, and perhaps unanswerable question is “How much monet is earned on those (specific types of)patents that are not litigated?”

    Then, maybe look at the relative percentage out there versus any other art field of choice.

  17. Only that law that is necessary to the result is the law of the case

    Sort of like when an earlier panel rules on mutliple grounds that such and such would fail the patent law and the en banc panel addresses each of those multiple grounds. Since any one of the multiple would neccesitate a result, each is a holding.

    Sort of like that.

  18. “On ‘technical’ Aharonian has just published another of his rants, this time prompted by a USPTO judge called Tierney who is saying that an invention is a contribution to the art that solves a technical problem with a technical feature combination. It would appear that Tierney also reads the CIPA Black Book.”

    Do you have a link to Aharonian’s article or an application number for the appeal?

  19. Actually, Paul, the concept you describe is also called ratio decidendi here. It is the law that, as applied to the facts of a case, resulted in the holding of the case.

    As we all know, judges at the appellate level like to digress and talk about policy and hypothetical cases. We appreciate here that such digressions are dicta.

    So, to really understand the law the case developed, one must understand the facts and the holding. Only that law that is necessary to the result is the law of the case. Else is dicta.

    As you might appreciate, we have had long and somewhat heated discussions here about Bilski, and the Federal Circuit cases that followed. My post simply observes what I see: the MOT is alive and well. If a claim passes the MOT, it passes 101. Move on to 102/103/112. If it fails the MOT, the burden somewhat shifts to the applicant to demonstrate patentable subject matter. That is what I see in OAs I am actually receiving from the PTO. The examiners still rely on the MOT as the primary test.

    The Federal Circuit has not been so clear about burden shifting. They may be afraid of the Supreme Court, but I see nothing in Bilski to preclude it.

  20. “should be prepared to understand and – at times – apply the law of other nations”

    Brutal. It really is over, isn’t it?

  21. When that “express intent” is nothing but a nebulous “compelling clause” absent something written and “concrete,” (as a treaty may be – and even then, abdication of our founding priinicples should NOT be so cavalierly dispensed with), the courts should not be rubber stamping what Congress offers. While our esteemed Court quite missed this in the Golan case, our academia should be pointing out this flaw, not glad-handling the matter (“merely interpreting” is merely wrong – and should be noted as such) in the quest for the holy grail of Harmonization.

  22. EG: The reason that inequitable conduct remains part of US law is that US practitioners think it should remain. I suggested at lunch at an AIPLA meeting at one of the CAFC judges was speaking that the time had come to abolish inequitable conduct. We had done so for our analogous doctrine in the UK and the EPO has never had it. The suggestion was met with strong indications of indignation and disapproval from all parts of the room. Even after some years the experience is painful to recall.

    However, we make the loser pay part of the winner’s costs and US courts do not, and that may have much to do with the difference in attitudes.

  23. It’s meaningless mumble-jumble from Ned.

    He still has not accepted the fact and the law that software configured on an all purpose machine makes that machine a new machine.

    This goes with his evasion of the other question: what does it mean to have software “on” a machine.

  24. Kosher – I agree that congress could not delegate authority to the courts to negotiate an international harmonization agreement. However, I think that the harmonization clause in the AIA could be seen as merely creating a rule of construction or an understanding of congressional intent. From that perspective, the courts would not be seen as conducting international harmonization but instead merely interpreting a US statute according to the express intent of Congress.

  25. U L T R A . V I R E S

    Can Congress pass laws abdicating responsibility for the intent of their law to be dependent on a foreign law? I am not thinking a treaty here – I am thinking this nebulous “compelling clause.”

    This smells very bad.

  26. In English law we have the concept of ratio decidendi i.e. the rule of law which was necessary for the decision of the court on the facts before it. That is not the same as what the judges say, and requires an analysis of the essential facts and the reasoning applied to them. It is much more difficult than reliance on dicta, which is why most of us rely on dicta for most of the time.

    Presumably there is the same rule in US law, although I have not seen it given prominence. But if the factual situation is as indicated in the last paragraph of your posting, it is apt to ask what are the judges actually doing (as opposed to what they say they are doing) and why?

  27. Ned, your understanding is good. Two points to keep in mind:

    1. In the EPC’S eligibility section, the words “new and useful” do not appear, so the EPO examines solely for “technical character” and leaves novelty for later. You could say that the eligibility test is absolute and independent of the prior art whereas the patentability (novelty and obviousness) test is relative to the prior art at the date of the claim.

    2. But when it comes to the EPC’s 103 section, Art 56, the EPO examines whether or not there is an inventive step in the sense of a technical effect. Financial effects, economic effects, business effects, aesthetic effects, cultural effects and so on will have no effect (so to speak) on the assessment. It’s the presence of inventiveness in the field of what in the 18th century was called the “useful arts” that makes your software or your business idea patentable at the EPO.

  28. To support Ned on this issue, there are some good comparative law PhD topics out there, of which comparative law concerning patentable subject matter is one.

    In Europe we have some appreciation of the differences, but of course cannot be as knowledgeable as our colleagues in the US about the complexities of US law. And when these business method patents are granted by the USPTO, how are they treated by the courts when the time comes for enforcement?

  29. EG – as to my working paper, I’m not making a policy argument that we need to consider the law of other nations. Rather, I’m looking at the text of the AIA which includes an interpretive clause that (I argue) compels the courts to consider the law of other nations when interpreting the FTF provisions of the AIA.

  30. Max, well, a claim to software per se is a claim to something that is not a new machine or article of manufacture. Under the EPO approach, I think, once one adds the computer or the CRM, the 101 issue vanishes, and one moves on to 102/103/112 or the EPC analog thereof.

    As to BMs, the limitation is only to methods. Claim the new BM as a machine, or software on a CRM, the nominal eligibility problem should be solved. Then, as with software, the problem of patentability moves on to 102/103/112 or their EPC analog.

    This is my understanding of EPO law.

  31. Paul, if anything can be taken the US government brief in Prometheus which argues that the issue in that case is not 101, but 102/103/112, the one would think that the US government agrees with the European Union: If a claim nominally is to patentable subject matter, the issue switches from eligibility to novelty, etc., and whether the point of departure over the prior art is itself new or not the kind of departure that would render the subject matter new, as in the printed matter doctrine, or any claiim limitation that has no functional relationship to the patent eligible subject matter.

    Thus, if the government approach is adopted by the Supreme Court, a claim to a machine, or to a article of manufacture or to a composition of matter would be categorically directed to patentable subject matter forcing the question of patentability into 102/103/112.

    The issue regarding processes is not so simple, but Prometheus brief provides a guideline: if the claim otherwise passes the MOT, as does the Prometheus claims, the real issue is not 101, but 102/103/112.

    That leaves the most interesting issue of all with respect processes, and that is when claims do not pass the MOT. What then? It is to be observed that not a single claim that has failed MOT has been approved by the Supreme Court, or by the Federal Circuit.

  32. Ned, Art 52 EPC denies patent-eligibility to, inter alia, methods for doing business and programs for computers. But only for that subject matter “as such”.

    Some Americans complain that the EPC fails to recite a definition for “as such”.

  33. On “technical” Aharonian has just published another of his rants, this time prompted by a USPTO judge called Tierney who is saying that an invention is a contribution to the art that solves a technical problem with a technical feature combination. It would appear that Tierney also reads the CIPA Black Book.

    Many aspects of patent law are changed when there is a switch from FtI to FtF. Take obviousness, for example.

    Under FtI, one must pretend that obviousness is tested as of the date of conception. Not so with FtF, where obviousness is assessed relative to the entire state of the art on a date after the inventor writes the spec and composes the claims.

    Clearly, ex post facto analysis is verboten, in any objective examination of obviousness. But, under FtF, when one holds the inventor to what he wrote before the date on which obviousnes falls to be decided, and decides obviousness on that basis, there is no ex post facto analysis whatsoever.

    Which is one reason why exploration of the obviousness issue is going to change, when AIA comes in.

  34. I hope, pray, proselytize, beg, borrow, steal, and sell my soul to the devil that US law is trending in the same way as European Law

    Fixed.

  35. I think you will find that the subject is treated in some detail in the discussion of Section 1 of the UK Act which corresponds to Art. 52 EPC and is said to be “harmonised” with it.

    There is a major philosophical split between the UK courts and the IPO and the EPO Appeal Boards. The UK considers whether what is claimed is excluded as a matter of substance under s. 1(UK). The EPO considers that any patentable apparatus feature avoids the exclusion, but that when considering the novelty and inventive character of the resulting apparatus anything of an excluded nature should be disregarded. For example a ROM is a technical product qualifiying for patentability and remains so even if business method software is recorded in it. Although the ROM is not excluded under a.52, if the novelty of the software is entirely in the field of business administration the application will be refused for lack of novelty or inventive step.

    The name of the game, of course, in both jurisdictions is to conveince the patent office or a court that what is being claimed is “technical”. Anyone able to provide a straightforward definition of that simple word will earn a major prize.

  36. It would be interesting to see a short comparison between jurisdictions on the law of patentable subject matter. I for one have enjoyed MaxDrei and Paul Cole and others from Europe explain how they handled the topic of software, which is categorically excluded. I also think Business Methods are categorically excluded.

    Regardless of labels, I think US law is trending in the same way as European Law. Software that is tied to traditional processes and to new machines is eligible. Ditto Business Methods. Otherwise they are condemned here as “abstract.”

  37. “I argue that the America Invents Act further compels US courts to consider the law of other nations in order to implement the harmonization mandate found in the newly enacted legislation.”

    Dennis,

    Please don’t use that “fig leaf” with me that has been used by others to justify the oxymoronic AIA. The AIA (Abominable Inane Act) has nothing to do with “harmonization.” For example, inequitable conduct is still with us (ROW doesn’t have it), the new “first to file” regime of the AIA is even more onerous than ROW (even compared to Europe), so where’s the “harmonization”? Instead, the AIA has everything to do with slanting the patent playingfield further in favor of certain multi-nattional Goliaths against the American Davids of innovation.

    And please don’t suggest that “we need to consider the laws of other nations” nonsense. Some SCOTUS Justices have already made that mistake in our constitutional law area. The AIA isn’t admiralty and maritime law (governed primarily by ROW civil code) or anything like it. Nothing in the AIA is compelled by TRIPS or any other IP international treaty we’re signators to, so why should we consider the “laws of other nations” relevant to the AIA? We don’t need “laws of other nations” to plague our patent law as well.

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