UK Take on Software Patent Eligibility: Claim Must include Feature that is both Technological and Innovative

By Dennis Crouch

Lantana Ltd. v. UK Comptroller General of Patents, [2013] EWHC 2673 (Pat)

Earlier this month, High Court Judge Colin Birss released a new opinion on the European view of software patentability as seen through the eyes of an English judge. The basic rule coming from the EPC is that "programs for computers . . . as such" are not patentable. EPC Article 52. This particular case arises from the refusal of the UKIPO (not the EPO) to grant a patent to Lantana. However, the UK Patents Act of 1977 implements Article 52 UK roughly follows the law set down by the EPO.

Digging in, the main subject-matter related question that the UK court asks in software related inventions is whether the invention offers an innovative technological contribution beyond the computer program itself. In HTC v Apple [2013] EWCA Civ 451 and Aerotel Ltd v Telco Holdings Ltd, [2006] EWCA Civ 1371, the UK Court of Appeals explained the four-step process for determining whether a particular claimed invention meets this technological contribution requirement. The steps are:

i) construe the claim;

ii) identify the actual contribution offered by the claimed invention;

iii) determine whether the contribution falls solely within the scope of excluded subject matter (i.e., programs for computers); and

iv) determine whether the contribution is actually technical in nature.

In those cases, the courts made clear that the technical contribution could be either a technological mechanism or a technological effect.

A key point in the US debate on patentable subject matter is whether the technological (or non-abstract) contribution needs to be innovative. In the UK/EPO, the answer is yes, that contribution must itself be innovative in the way that it makes a "contribution to the known art."

Here, Judge Birss followed anything but an integrative approach to patentable subject matter. Rather, the focus is on whether the elements of the invention that qualify as subject-matter-eligible (i.e., technological) also offer an innovative contribution. Lantana argued that this approach conflated the question of subject matter eligibility with those of novelty and non-obviousness. However, Judge Birss disagreed:

Mr Beresford [Counsel for Lantana] submitted that [Judge Birss's approach] conflicted with the acceptance by the examiner that the claim was novel and non-obvious. I do not agree. Those matters [decided by the examiner] apply to the claim as a whole, that is to say the entire combination of features. The point here is a different one, i.e. that the idea of an email message containing machine readable instructions as a contribution to the art in this case is wrong. The computers in the claim are not operating in a new way. . . .

The claim has been found to be novel and inventive by the examiner and in that sense it makes a contribution of some kind to the art [when examined as a whole], but the applicant has been unable to identify anything which this claim can fairly be said to contribute which has a technical character.

Thus, the focus here is on finding elements of the invention that are both innovative and have a technical character. Although Judge Birss did not cite to the U.S. case of Parker v. Flook, 437 U.S. 584 (1978), he could have so reach out for support. In Flook, the U.S. Supreme Court similarly pushed patent applicants for an inventive concept that itself is a practical application, writing:

Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.

I suspect that the rule supported by Judge Birss here is not too far removed from that which the current U.S. Supreme Court would also fashion if given the chance. However, the current USPTO does not require that particular elemental linkage.

One important result of this approach – well recognized by Judge Birss is that the scope of subject matter eligibility shifts over time. The Lantana case involves a particular use of email systems. If the patent had been filed in the early days of email and was able to introduce an a technological mechanism that was new at the time then the application would be subject matter eligible. However, the reality is that email systems were already very well known by the time Lantana filed its application. In Judge Birss' words, the technological aspect of the invention was "conventional." As such, there was no technological contribution to be found.

In the end, the result here is that Lantana's appeal has been dismissed with the UKIPO's judgment of nonpatentability still standing.

= = = = =

As an aside, Lantana is a small US based company and the listed inventor John Wysham is the company CEO. The US version of the application (Serial No. 12/867825) was abandoned after a final obviousness rejection.

= = = = =

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251 thoughts on “UK Take on Software Patent Eligibility: Claim Must include Feature that is both Technological and Innovative

  1. Leopold,

    You need to be a but more direct with Malcolm when he is attempting his dissembling spin.

    For example, Malcolm is trying to confuse things by labeling manufactures as compositions.

    From link to uspto.gov :

      The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles that are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.

    Clearly it is disingenuous to purposely confuse these words, and since Malcolm is a professed ‘master’ of English as a first language, his choice of doing so must be on purpose.

    Perhaps you do perfectly understand the subterfuge Malcolm is engaged in (which would engender the question as to why you remain silent in that knowledge).

    Perhaps you disagree but only feel compelled to voice your disagreement with others.

    Either way, it does not change the fact that Malcolm engages in rampant deception in the pursuit of his agenda. You may choose to be silent on this, but please, don’t attempt to force your choice of silent acceptance on others.

  2. Sometimes it is not easy understanding Malcolm’s
    (It’s all done with computer models)
    [][]the way by hand is to work backwards with correction’/input)s(.]]
    ((MALCOLM’S UNDERSTANDING EASY NOT IS IT SOMETIMES[]
    link to en.wikipedia.org
    Patent eligibility is based on a tautology.
    TAZATOLOGY A. ON BASE.D IS IN/ELIGIBILITY PATENT

    based on tautologies. Not logic
    LOGIC NOT TAUTOLOGIES ON BASE

    link to youtube.com
    33:11
    ONE.OF.ONE..ONE.OF.ONE…UNIVERSE IS FILL WITH REDUNDANCY[]
    Let me hose it down with cool water
    WATER COOL WITH.DOWN.IT HOSE ME TEL..IDEAS ABSTRACT IN BELIEF WHY IS THAT?
    VALUE’.RHETORIC..RHETORIC.VALUES//messy

    link to gigaom.com

    link to youtube.com

    Where is the Innovation? Government Sponsorship vs the Private Sector

    link to opengov.ideascale.com

  3. Lotta heat here. As usual.

    Let me hose it down with cool water. Patent eligibility is based on a tautology. Just like God. If something preempts an abstract idea, it is not patent eligible. Assuming you know what an “abstract idea” is to begin with. Which you don’t, because the Supreme Court can’t define it. Ergo, our little tests – like those in Europe – are based on tautologies. Not logic.

    That is why belief in abstract ideas is like belief in God. You either buy into the tautology or you don’t. This does not mean some tautologies are false. What it means is, the difference between the Supreme Court’s tautology and God is, God knows He is not a tautology.

  4. The problem is Ned that you are ignorant of information processing. Of course, software is technical. It performs a transformation of information. It takes time, energy, and space to transform the information.

    Odd that you English having Turing and Newton do not understand this.

  5. as in the density of smellable molecules

    LOL – what a F”n reach.

    Someone call a medic for Malcolm.

    And yet again – the “N” word use and defense of 6′s use is all you.

    You need to own what you shoveled.

  6. No, Malcolm. Vacuous is the accurate description, and it applies to your post.

    And it was not me that brough in Hal Wegner (read much?) Maybe read at all? The reference was supplied in the initial post by Prof. Crouch.

    But please, keep yapping.

  7. LOL – this is all in the archives Malcolm.

    Just because you wish to obfuscate things and kick up as much dust as possible does not mean that I am going to hold your hand on phrases such as ‘as a category’ that anyone – let alone someone who has such a ‘vauneted level’ of skill with English as a first langauge – should readily understand.

    As to ‘effectively’ what was that case that you kept on losing your understanding? Oh, that’s right: Myriad

    LOL – how did that work out for you?

    Tell me again who was right in that case and why?

  8. LOL – your feigned and projected ignorance script is rather stale, Malcolm.

    It’s quite simple. I provided two phrases that describe two different acts (you really asked what the two phrases are? Really?).

    You (apparently) cannot distinguish between the two, and FAIL to recognize why this difference makes you an @ssh@t – consistently – even perpetually.

    Try again (or for the first time).

  9. It can

    Perhaps.

    Perhaps not.

    The critical point is that it IS not.

    Maybe you can explain that to Ned.

    LOL – maybe not.

  10. Simply put Ned – our law is different.

    The fact is that you don’t get this. Thus, you think those that actually uphold our actual law are ‘brigands’ when actually it is you that is simply not applying the actual law.

    It is as simple as that.

  11. The metes and bounds of a composition of matter can not be defined in purely functional terms and “clearly” inform anyone of anything except what the function of the invention is.

    No, but the relevant aspects of a processing circuit can. I just did it this morning, for a pretty interesting invention.

  12. Nice vacuous post

    More like “nice accurate” post, Tr0 llb0y, but since when can you tell the difference?

    You brought Hal Wegner as some sort of guru like figure who’s pronouncements deserve respect because … Hal Wegner!

    I really could care less what Hal Wegner thinks and I told you why (the reason I provided is not the only reason, of course).

  13. explain the difference between the two phrase,

    Looks like Tr0 llb0y is having trouble again. Spit it out Tr0 llb0y! You want something? Learn how to ask for it in English so the rest of us don’t waste time arguing with you about whether we “should have known” what you were babbling about when you move the goalposts.

    Something about “two phrases” is of interest to you for some reason? What’s the reason? What are the phrases? And why can’t you understand the difference and explain the difference yourself? Do you lack the intelligence, or do you simply have some point to make but you can’t make it clearly because your English skills are that of a 13 year old who self-taught the language to himself while reading and writing comments in AmericaOnline chatrooms?

  14. Asked and answwered

    Patent Jeebus, King of Arguments! He has much time to insult others … but time to answer questions explaining the basis for the insult? Please. Let Patent Jeebus do what Patent Jeebus does best. And bow down (that last part is really important).

    this is the guy who occasionaly blanks out on what the word ‘effectively’ means…

    Wait, this is the guy who voluntarily admitted that he needs to wear an ankle bracelet when he leaves the house.

    Fun game, Tr0 llb0y. You want to start the next turn?

  15. It IS interesting how close the English are to the US Supreme Court on this issue. If what makes the claim novel is non technical … The software itself is non technical.

    Why can’t US law be as simply put as this?

    We, because as I see it, the likes of Rader think computer software IS technical even if all it does is compute price.

    Now there we have it.

  16. explain how you smell thickness

    Thickness = density, heaviness, denseness, as in the density of smellable molecules per foot of air; the “stronger” the smell, the greater the thickness

    Nice try, Tr0 lb0y. What next? Do you want to accuse me of being prejudiced against blacks? Did I just “torch my agenda” by defining “thickness” thusly?

    Gosh, I can hardly wait to see where the Magic Tr0 llb0y Insult Wheel lands next.

  17. It is highly doubtful Malcolm that you can actually smell anything over the stench that surrounds you and your duplicity.

    But regardless, maybe you can use that English as a First language ans explain how you smell thickness: “The smell… is getting pretty thick

  18. Can’t answer the question?

    LOL – maybe you can try to answer the question first asked of you instead of moving goalposts and kicking up dust?

    Sounds pretty novel to you, no doubt.

    Give it a try.

    (LOL – we both know why you are avoiding even tryign to give a substantive answer on copyrights – you don’t know JACK)

    As to your comments and use of the “N” word – hey – you are the one that used it and you are the one that defended the use by 6. Sorry but that ALL is a ‘you’ problem. You are going to have to deal with it (hint: try thinking a bit before you type out your CRP replies).

  19. Max, I fully agree on Keith and Colin. They are skillful advocates. I have had many good conversations with Keith about English patent law, Just as I have had with you.

  20. Perhaps you should try to use that ‘famous’ English as a first language and explain the difference between the two phrase, Malcolm?

    LOL – or perhaps you have not done as I asked – or perhaps you have, and you are just persisitng in your dissembling ways.

    Maybe you should find something else – something you don’t svck so bad at?

  21. Youknow, actual explanations

    LOL – Asked and answwered, Malcolm.

    Come now, You do understand what ‘as a category’ means – that does not even take the ‘super’ level of skill that you possess with your English as a first language.

    Wait – this is the guy who occasionaly blanks out on what the word ‘effectively’ means…

    LOL

  22. I was being sincere. That’s the worst thing about my alleged “ad hominem” “attack”.

    And to be clear lester, gases supposedly being magical is not a “fact”. But I’ll tell you what, if you want to present some evidence that establishes that “fact” I’ll review it.

  23. The EPO “test” – it’s more an approach – arose from the need of putting the law – the EPC – into practice. U.S. law is different from the EPC, sure, and there is no Art. 52(2) EPC to test. Although sometimes I hear that 35 USC 101 somehow “corresponds” to Art. 52(2) EPC, in my opinion this is a misconception, for a number of reasons that I am not going to explore here.

    It is true that, right now, there seems to be no consensus in the U.S. judiciary on what should be the proper approach for assessing compliance with 35 USC 101, and that in the resulting debate the themes discussed are similar to those explored in relation to Art. 52(2)(c) EPC, but that’s not a reason to advocate a wholesale import of the EPO “Comvik” approach (or the UK “Aerotel” variant, which for practical purposes operates in the same way) into U.S. practice. On the contrary, such a move would not make sense, in my opinion, if not accompanied by a corresponding legislative change.

    What I hope, however, is that when things will finally clear up, the U.S. approach will be similar to the European one in the sense that it will allow an easy determination of whether a claim is patentable/eligible or not in the vast majority of cases.

  24. They make no attempt at a fair argument.

    Right. Without any attempt to address the substance of my comment, Les merely requests an example of a claim of the type I referred to. An example is immediately provided to Les. In response, (surprise!) Les conclusively states that the example proves his horsesh*t proclamation that “all claims are just as functionally claimed as software claims.”

    If that’s your idea of a fair argument, then here’s another one: you’re always wrong about everything except when I tell you that you’re not. Got that?

  25. what does that have to do with information processing

    It has everything to do with, e.g., compositions of matter that are claimed by the recitation of their (allegedly) “new” information processing functionalities.

    That’s pretty obvious. But go ahead and pretend that it’s not. That’s a really effective way of “winning”, in your mind. Enjoy it. Let other people enjoy you enjoying it. The more fun you have sticking your head in the sand and waving your behind in the air, the more convincing your “arguments” become. Seriously. So please do keep your great work.

  26. I agree with you Les. You did a good job proving the point. These guys are not worth caring about. They make no attempt at a fair argument.

    But, then neither do Lemley, Posner, or Lourie.

  27. Soap? LOL

    What’s the matter, Tr0 llb0y? Can’t answer the question?

    Fun game, Tr0 llb0y.

    Are you going to start the next round, as usual?

    Want to try accusing me of being prejudiced against blacks again, Tr0 llb0y? Because that worked sooooo well for you last week. Ask your father/priest Reverend Gene what he thinks about that card. I’m really curious what he has to say. He seems to really like your company. I wonder if he’s aware of how his li’l disciples act.

  28. the archives have your actual self-volunteered admission in black and white.

    Sure they do. They also contain the complete history of the times your parole officer busted you in your bathrobe in the stairwell of the elementary school.

    Fun game, Tr0 llb0y. Are you going to start the next round, as usual?

  29. Business methods as a category

    What is that supposed to mean? If you categorize something as a “business method” then it’s immediately eligible? Go ahead and explain exactlly what you mean by “business method”, Tr0 llb0y.

    What about a purely mental process of deciding what asking price to place on your vintage Star Wars T-shirt (the one with the kool-aid stains)? Is that an “eligible business method”? Please let us know. Or is that not part of your script? You know, actual explanations of what the eff you are rambling on and/or insulting other people over. Let’s hear it.

  30. the facts are irrefutable.

    Not one, but three Patent Jeebuses telling everyone that “software is exactly like everything else (except when it isn’t)”? Wow. What’s behind door number 4?

  31. Soap? LOL – How about you actually answer the question put to you?

    Having trouble with that?

    We both know why.

    Trying to kick up more dust with your projected fantasies won’t hide the fact that you refuse to answer questions on intellectual property.

    You might try understanding that difference sometime.

  32. also volunteered knowing that you’re

    LOL – look up ‘admission against interest.’
    Compare that to ‘baseless accusation’ of another.

    LOL – you need to find something else to do Malcolm. You svck at this.

  33. “Actually, Examiner 6, the inventor is presumed to know how best to claim their invention. The burden is on you, 6. Not the other way around.”

    Which is relevant to them not getting a free pass as the software arts do because…

  34. Like I said, Malcolm – the archives have your actual self-volunteered admission in black and white.

    No amount of spin from you can change that.

    As they say, svcks to be you.

    LOL – as to who cares, you most defintely should,, as your littel anti-patent agenda takes some serious hits from the obvious evidence of your dissembling.

  35. >>You can’t patent the new “functionality” of a >>composition of matter.

    OK, MM Palin, and what does that have to do with information processing? Nothing. You have just decided to spew nonsense as usual.

  36. answered my question yet about the capability to copyright pure math?

    What about the capability to copyright pure soap?

    Deep stuff. If you have some argument to make, Tr0 llb0y, just make it.

    your famous butchering of the differences between copyright and patent protection

    Right, like your famous butchering of your stepdad when he tried to hug your mommmy on that camping trip. Did you talk with your shrink about that yet?

    Fun game. Will you start the next round, Tr0 llb0y, as usual?

  37. What’s wrong with describing the wiring of this new computer in functional terms if doing so fully and clearly informs the skilled person of the metes and bounds of the invention

    The metes and bounds of a composition of matter can not be defined in purely functional terms and “clearly” inform anyone of anything except what the function of the invention is.

    You can’t patent the new “functionality” of a composition of matter. You can patent a new composition (with exceptions). You can patent a new method (with exceptions). But you can’t patent “new functionalities”, no matter how clearly those “new functionalities” are defined.

  38. Projecting your fantasies again,

    No, Tr0 llb0y. Just playin’ the game you started. You know the one? It’s the one where you make up some nonsense about what “I admitted” and then you pretend that I somehow “destroyed my agenda” or some other psych0 nutj*b horsesh*t that you habitually pull out of your bth0le.

    Anyway, go ahead and start the next round if you want to play again. I mean, that’s pretty much all you do here. That’s your specialty.

    Just like you volunteered knowing the controlling law to the exceptions to the printed matter doctrine.

    And who cares? I also volunteered knowing that you’re a s0ci0path. Pretty sure the latter is more relevant to a typical discussion with you about any subject.

  39. Tr0 llb0y: business methods being within the useful arts

    Exactly which “business methods” would those be, Tr0 llb0y? We both know it’s surely not all of them.

    So exactly which ones are within the useful arts and which one’s aren’t? Let’s hear your definitions.

  40. This claim is just as functionally claimed as any software claim.

    Of course it is!

    Meet Les. Les also believes that purely mental processes should be eligible for patenting.

    Les’s little playmate, “anon” (aka “Tr0 llb0y”), can’t even bring himself to state his beliefs on the subject one way or another. A similar affliction seems to haunt the Pope of the Church of Patent Apology. What exactly is the problem with these folks, who refuse to discuss their own beliefs while castigating (or banning) others for expressing theirs? Just follow the money …

  41. You sound like the Pope: so Galileo you think the earth revolves around the sun. Laugh. We’ll burn you at the stake.

    You do sound that bad 6.

    The smell of desperation among the softie woftie crowd is getting pretty thick.

  42. Lester, you’ve plainly gone off the deep end. I’m sorry but I’m unable to help someone as far gone mentally as you obviously are. Please seek medical attention or at least consult with a family member about the possibilities of treatment.

  43. “I’ve written lots of claims to making silicon wafers, but that isn’t the invention.”

    So all of those patent claims you drafted were invalid under 35 U.S.C 112 2nd paragraph for failure to claim what the applicant subjectively believed to be the invention?

    I mean, that’s interesting, as far as tangents go, but I don’t see how that is relevant to our discussion.

    And yes, I know you’ve written some, which is why I dipped specifically down into your realm for an example.

  44. “And, if we used the stream test, then I could do a work around for all circuit patents. ”

    I would very much like to see you “work around” the “circuit patent” I cited in this thread using the “stream test”. I can get you another one if you prefer to have a more straight-forward “circuit patent”. Since in your mind perhaps wired semiconductors aren’t “circuits”.

  45. Thank you for your efforts in identifying an example.

    This claim is just as functionally claimed as any software claim.

    Supply unspecified magic gas that has the special functional properties.

    irraditate the magic gas with a magic beam that has the functional property of making the magic gas function according to the special functional property of the magic gas.

    also aim the magic beam from on high at a magic surface of a first wiring layer

    cross the magic beam with a with another magic beam thereby magically creating a horizontal connection by aiming the second beam at a side surface

    magically aim the first beam on a second magic surface thereby acheiving the magic function on the second magic surface.

    Not only does it preempt all magic gas/magic beam interaction, it does so while violating Dr. Venkmon’s (or was it Egon’s) admonition….. Never Cross the Beams

    1. A method of wiring a semiconductor device by forming a connection wiring between a first wiring layer and a second wiring layer of said semiconductor device by supplying a reactive gas to the semiconductor device and irradiating the same with an energy beam, said method of wiring a semiconductor device comprising the steps of:
    supplying such a reactive gas as forms a conductive material constituting said connection wiring through the irradiation with said energy beam to a position where the connection wiring of said semiconductor device should be formed;
    forming a first connection portion on said first wiring layer by irradiating a surface of said first wiring layer of said semiconductor device with a first energy beam directed from above;
    forming a second connection portion spaced apart from a surface of said semiconductor device at a predetermined interval to extend from said first connection portion in a horizontal direction relative to the surface of said semiconductor device by irradiating a side surface portion of said first connection portion with a second energy beam provided along a direction crossing said first energy beam; and
    forming a third connection portion on said second wiring layer so as to connect with an end portion of said second connection portion by irradiating a surface of said wiring layer of the semiconductor device with the first energy beam from above.

  46. You sound like the Pope: so Galileo you think the earth revolves around the sun. Laugh. We’ll burn you at the stake.

    You do sound that bad 6. Willful ignorance is unethical.

    6 Palin.

  47. Aka a “grown up art” of which MM speaks that involves a method of wiring a general purpose computer so that is capable of performing a desired specific task which recites the actual wiring steps instead of the desired functionality that the “wiring steps” achieve. Also aka a (or “the central”) part of the general purpose computer capable of performing a specific task.

    As a whole, aka writing the claim like people in the grown up arts do.

  48. LOL – 6 brings a 112 knife to a 101 atom bomb test.

    Kind of like Malcolm incorporating an enablement requirement into 101.

    Hmm, similar character traits abound.

  49. Projecting your fantasies again, Malcolm?

    LOL – you do know the difference, right? You do know that the archives do hold your self-volunteered admission right? You do know that NO amount of spin from you will change the plain black and white of the words you yourself volunteered, right?

    Just like you volunteered knowing the controlling law to the exceptions to the printed matter doctrine.

    In fact, exactly like that.

    Mmmmmm, toasty.

  50. And I think you would agree L.B.Z. that U.S. law is in fact different from the EPO test you describe (boiled down or not).

    Right?

  51. LOL – more of the same from you Malcolm. Try again from the 10:59 comment, but htis time try answering my post without your usual spin and strawman.

  52. Per Malcolm’s own volunteered admission: ‘configured to’ is structural language.

    Per anon’s own admission, he isn’t allowed to leave the house without his ankle bracelet and a psychiatric nurse.

  53. I am indicating less than a claim composed totally of thought

    Huh? You “indicated” “less than a claim”? What?

    you insist on talking about a claim composing ONLY thought.

    Uh … no. I have discussed both (1) claims comprised of only thoughts (whether old or new) and (2) claims comprised of mixtures of old eligible steps and new thoughts. I’ve also addressed your silly “points” about “claims with only old steps can also be eligible” (for the billionth time) and “claims can include mental steps and still be eligible” (for the billionth time).

    you insist on accusing others of that which you do.

    Huh? Here’s the original comment again:

    Consider the claim:

    [oldstep]+[newthought]

    A claim is ineligible if practitioners of the prior art (the old step) become infringers merely for thinking about the new thought while they practice the prior art. That’s Prometheus. And it’s impossible to do the analysis without understanding the relationship of the claim to the prior art.

    You’ve said nothing that rebuts this fundamental truth of patent law. You’ve just hurled insults and recited some half-articulated nonsensical “objections” that do not rebut or challenge the accuracy of my comment.

    So what exactly is your problem, Tr0 llb0y? Something about my comment clearly makes you very upset. It’s been upsetting you for years, even prior to the Prometheus decision. Does it your hurt your fee-fees? Or your “wallet”?

    LOL.

  54. I think you misunderstand the EPO test. If you really want to “boil down” the EPO test for computer-implemented inventions, with the inevitable inaccuracy that this exercise entails, you should think of it as “if a method of doing something is not new/obvious, distinguishing it from the prior art by saying that it is a program running on a computer won’t get you a patent”.

    If you have experienced one or more EPO refusals for lack of technical character, I could bet that your claim failed (also) another of the exceptions of Art. 52(2) EPC, most likely the ones related to “methods for doing business” or “presentation of information”, because refusals based only on the “programs for computers” exception are fairly – almost exceptionally – rare.

    It’s not really an “issue” to fight, it’s a feature of European law to be understood so that you can advise your clients accordingly.

  55. Actually, Examiner 6, the inventor is presumed to know how best to claim their invention. The burden is on you, 6. Not the other way around.

  56. Depends on the specific claim LB. See, in these arts you don’t get an automatic 112 1st/2nd pass. Though many examiners don’t know enough about either to apply them. Which, I know, might surprise some people, but is totally what goes on :(

  57. Took like 3 seconds:

    LOL – about the same amount of time that it should have taken for you to provide an honest answer about business methods being within the useful arts, 6.

  58. Still waiting on you ‘champ’ to fulfill your promise on the discussion of the ladders of abstraction.

    Maybe you want to add some more about that new wrinkle of ‘generification?’

    Or is not keeping promises part of the (lack of) character that you have?

  59. “The problem isn’t subject matter eligibility. The problem is intellectual dishonesty, incompetence or cronyism.”

    Of course lester jester, those are the only possibilities!

  60. Said a man who has obviously never killed a deer with a vehicle. If you just killed a deer with your vehicle you’re probably 100x more worried about your vehicle than you are dressing the mangled deer.

  61. “And, the answer brings us back to the Church-Turing Thesis.”

    Everything leads back to the church turing thesis in NWPA’s mind.

    What are we having for dinner tonight NWPA? Good question! And the answer brings us back to the church turing thesis…

  62. I’m still waiting for someone to produce on some prior art invalidating the auto-opening curing apparatus without the Arrhenius equation considered.

    Gasp! Maybe anon has such prior art right now and is about to drop it on us!

    Nah, never mind, false alarm.

  63. That’s what I thought. I’ve read some of the previous decisions and they are doosey’s with their patent-technical-EPO-jargon.

  64. Sometimes it is not easy understanding Malcolm’s purposefully obtuse rantings, even if they are provided by a ‘master’ of English as a first language.

    That’s interesting, anon. I don’t have any trouble understanding MM’s comments, even when I don’t agree with them.

  65. It may have to do with Malcolm’s incorporation into 101 of some type of enablement requirement.

    Sometimes it is not easy understanding Malcolm’s purposefully obtuse rantings, even if they are provided by a ‘master’ of English as a first language.

  66. Oh please, Malcolm, thrill us with som emore of your famous butchering of the differences between copyright and patent protection.

    Which reminds me, have you moved the goalposts back and answered my question yet about the capability to copyright pure math?

    (yes, I know what the answer is, but this is one of those ‘character’ questions – the kind that 6 screwed the pooch on)

  67. Isn’t it wonderful too, to have MM Palin (who is absolutely ignorant of anything to do with computers) telling one skilled in the art how to claim the invention.

  68. Per Malcolm’s own volunteered admission: ‘configured to’ is structural language.

    LOL – he cannot spin away from what the archives plainly show.

  69. There is nothing funny about your “hundreds of times of obvious strawmanning when I am indicating less than a claim composed totally of thought and you insist on talking about a claim composing ONLY thought.

    And yet, you insist on accusing others of that which you do.

    When this is clearly pointed out, all you can do is [shrug] and stand by.

    C’est La Vie.

  70. Except for the biblical reference, which I don’t understand, I’m with NWPA on this one, MM. What’s wrong with describing the wiring of this new computer in functional terms if doing so fully and clearly informs the skilled person of the metes and bounds of the invention, and if the scope is fully enabled?

  71. MM Palin, you mean that the inventor shouldn’t describe them in the terms that one skilled in the art would use? And, what MM Palin? You don’t care that one skilled in the art understand the invention and the metes and bounds of the invention by the claim language? Why not? Please MM Palin don’t recite from the Bible for patent law.

    Please go finish field stripping the deer, MM Palin.

  72. perhaps you want to explain what I actually posted

    Too funny.

    Go and find that rolling donut, Tr0 llb0y. You’ll know what to do when you see it.

  73. Yes, MM Palin there are these things called computers made by man that process information. What? No they aren’t millions of years old so you don’t have to worry about that. What? No we aren’t trying to out do God. Please. Calm down MM Palin.

  74. Yes, MM Palin. We know and those rocks aren’t millions of years old. Have you finished field stripping the road kill deer?

  75. Electronic circuits are human creations that have objective results, therefore they are inventions.

    If you describe the electronic circuits objectively, rather than by their desired “new” functionality, and there will be no argument from the “the courts.”

    But somehow that won’t work for you, will it? Too difficult? The “invention” thus claimed is “worthless” you say? That’s fascinating. Because I’m sure you’ll still go after copyright infringers who steal your “worthless” code. Won’t you?

  76. MM: now you are intentionally being thick. Clever playing with the word “distinguish”–not. I’ll leave to the reader to judge which one of us is intellectual honest and ethical and which one of us is you.

  77. Software is a way of wiring a general purpose computer.

    So why not a claim a method of wiring a general purpose computer so that is capable of performing a desired specific task?

    In that method claim, be sure to recite the actual “wiring” steps, instead of the desired functionality that the “wiring steps” achieve. You know, write the method like people in the grown-up arts write their method claims.

    I think that would address most of the concerns.

  78. L.B.Z. — the fact is that the EPO test boils down to exactly what I said. And, you are speaking to someone that has spent an enormous amount of money (my clints’ money) on fighting this exact issue.

  79. [repost with better formatting]

    We go ’round and ’round with you

    Right, that’s because you keep reciting absurd nonsense like “there is no way to distinguish between software and hardware”.

    Parts of any circuit are easily turned into software.

    How would you know if one is “turned into” the other if there is no way to distinguish between them?

    Please work on your script, bro’.

  80. We go ’round and ’round with you

    Right, that’s because you keep reciting absurd nonsense like “there is no way to distinguish between software and hardware”.

    Parts of any circuit are easily turned into software.

    How would you know one is “turned into” another if there is no way to distinguish between them?

    Work on your script, bro’.

  81. So nice of you to provide both the bonfire and the stuff of fluff marshmallows.

    Thanks Malcolm.

    (and yet again with the strawman of “comprising only” – haven’t you beat that to death? – perhaps you want to explain what I actually posted instead of the hundreds of times of strawmanning, that way you won’t have to engage in your usual acuse-pthers-of-that-which-you-do blatant 1ies and m0 r0n accusations)

  82. The decision commented in the post is from a UK court, not from an EPO Board of Appeal or Examining Division.

    That being said, I agree that saying “that something is technical if it somehow saves on critical hardware is ridiculous.” However, neither the decision above nor the EPO says such a thing.

  83. The reason courts have such a difficult time with software enabled inventions is that they have failed to define what an invention is and do not understand what software does. An invention is a human creation. But so is a painting. The difference is an invention has an objective result.
    Software is a way of wiring a general purpose computer. A computer is an electronic circuit. A specialized machine, such as a compiler converts the software into the wiring scheme of the computer. Once this is done you have a specialized (specific) electronic circuit. Electronic circuits are human creations that have objective results, therefore they are inventions.

  84. Meanwhile, over at TB0y’s favorite roost:

    link to ipwatchdog.com

    Please note that on IPWatchdog.com we require comments to be intellectually honest. Those the persist in denying self-evident truths are banned. Software is not math. You cannot solve or reduce software code, math is descriptive of reality while software directs action. Still, if you feel compelled to demonstrate your ignorance on this issue and and choose to pretend that software is math please visit one of the many other places on the Internet that will allow you to spew such provably false nonsense.

    Like father, like son. LOL!

  85. I don’t know why a blog post was dedicated to this decision, it does not seem to innovate in any particular way the UK case law about computer-implemented inventions.

    Perhaps the manner in which it was written made the issues and analysis more clear compared to the earlier decisions.

  86. Don’t be thick.

    Translation: “Don’t ask me! I’m just shooting off my mouth again and I ave no idea how Mr. Bakels “wallet” would be hurt if he changed his views on this subject. It just makes me feel good to say this stuff because I’m … hey! You kids! Get off my lawn!”

  87. We go ’round and ’round with you MM Palin. The problem is form. Is the test whether it COULD BE streamed? If so them 99.99 percent of circuit patents are invalid. And, if we used the stream test, then I could do a work around for all circuit patents.

    Parts of any circuit are easily turned into software. And software is easily turned into a circuit. And, as you know MM Palin, software is really nothing but a specification for a machine.

  88. Still does not account for claims composed of all old steps (eligible)

    Two points: first the analysis doesn’t “account” for all kinds of situations that aren’t relevant to the analysis (e.g., the analysis doesn’t account for the rings on Saturn – so what?). Second, it’s not true that claims which recite all old steps are per se eligible, so whatever “point” you are trying to make is predicated on a false statement. Do you understand that? Of course you don’t. You’d never admit it anyway because you’re a s0ci0path and a l i a r.

    then taking such a claim and adding a newthought;

    Huh? Again, you’re just changing the hypothetical I was discussing into a different hypothetical. Do you have a claim reciting a mental step preceded by old steps that you want me to analyze? The issue then is whether the old steps were carried out in the prior art in the order that they are recited in the claim. In that case, the analysis is identical to the analysis when a single old step is recited.

    nor does it take into account the actual law providing eligibility for claims with thoughts (old or new).

    Of course it does. The “actual law” is (1) all claims comprising only mental thoughts are ineligible and (2) some claims comprising a mix of physical steps and mental steps may be eligible, others are not.

    This has all been explained you to you dozens (hundreds of times before)? And yet you continue to l i e and pretend that none of it was explained to you. So we must once again ask the question: are you a m0 r0n? A l i ar? Or both?

    My bet is on the latter and has been for a long time.

  89. Consider the claim: [oldstep]+[newthought]

    Mmmmm, toasty.

    Still does not account for claims composed of all old steps (eligible), then taking such a claim and adding a newthought; nor does it take into account the actual law providing eligibility for claims with thoughts (old or new).

    Y A W N.

    Better trolling please.

  90. Hal Wegner does find it worthy of mention as a comparative (i.e. different) item of law.

    Another guy who was really slow on the uptake when it came to Prometheus. But I think he did eventually manage to “get it”, unlike some of the puppy dogs here who seem to enjoy hiding in his shadow.

  91. that is how ridiculous you people are.

    Got that? People like NWPA who analyze a claim in a ridiculous manner are ridiculous. I have no idea what this has to do with Lourie, who surely would not find that claim ineligible.

  92. If a judge is looking at an element of a claim and saying does that add an inventive concept, then they are into 102, 103 territory and not 101. Simple. Clean. The SCOTUS knows that is the law

    Wrong on all counts.

    Consider the claim:

    [oldstep]+[newthought]

    A claim is ineligible if practitioners of the prior art (the old step) become infringers merely for thinking about the new thought while they practice the prior art. That’s Prometheus. And it’s impossible to do the analysis without understanding the relationship of the claim to the prior art.

    Basic stuff.

  93. you are shamelessly plugging

    Shameless plugging is apparently only allowed over at The Church of Patent Apology where TB sits on Gene’s lap all day and polishes his buttons.

  94. you are shamelessly plugging for a WHATEVER view of patent law that you have advocated for in the past – one that the Court recently took the chance to say ‘not a chance’ in the 9-0 Prometheus decision.

    Huh? When did Dennis “advocate for” a “WHATEVER view of patent law” (<– huh?) in the past and where is Dennis doing that here?

  95. And, Reinier Bakels, I challenge you to answer some of my questions I put to you. I know your type will hide behind that you are some great scholar, but try to resist. Try to come to grips with your unethical behavior and reform. The punishment will hurt your wallet, but you will be able to sleep at night.

  96. >Paradoxes can not be solved. They require the >question to be rephrased rather than answered

    RB, people like you that are willfully ignorant should never write such sentences. You are not in the club of scholars. You are a brigand. You have no standing. No ethics.

  97. Good question Anon. And, the answer brings us back to the Church-Turing Thesis. The fact is that only a tiny set of hardware is needed and the rest can be software. The hardware today in say a modern Intel chip could all be done with software. And, the EPO attempt to say that something is technical if it somehow saves on critical hardware is ridiculous.

  98. …but the following doesn’t conflate subject matter eligibility with novelty or obviousness….no sir..

    “One important result of this approach – well recognized by Judge Birss is that the scope of subject matter eligibility shifts over time. The Lantana case involves a particular use of email systems. If the patent had been filed in the early days of email and was able to introduce an a technological mechanism that was new at the time then the application would be subject matter eligible. However, the reality is that email systems were already very well known by the time Lantana filed its application. In Judge Birss’ words, the technological aspect of the invention was “conventional.” As such, there was no technological contribution to be found. ”

    The problem isn’t subject matter eligibility. The problem is intellectual dishonesty, incompetence or cronyism.

  99. Why is there any need to distinguish between software and hardware? In the UK the law excludes computer programs regardless of whether that program is embodied in hardware or software.

  100. And, RB, functional claiming? Really. Is that what Mark Lemley thinks? The one who says software has no strucutre. What do those skilled in the art of computer science say? The functional claiming in software is structural. I am one skilled in the art and there is no doubt about that. The claims define a large set of machines that perform the function just as circuit claims and mechanical claims and chemical claims.

    Go spend a few hours and research this question.

    Willful ignorance is unethical BR.

    How can you look yourself in the mirror?

  101. How does a person like you RB, live with yourself? How do you reconcile your desire to be an ethical scholar with your complete lack of ethics in regards to software patentability?

    Willful ignorance is unethical. Please spend a few hours and research the following: does software have structure? Willful ignorance is unethical.

  102. Is that the same Mark Lemley who says that software has no structure? And does not cite directly contrary opinions to his from noted scholarship published in law journals?

    That Mark Lemley? The one no one should trust a thing he writes. I’d put $1000 on the fact that if I read his “scholarship” I can find unethical behavior on his part.

    Please explain Deener to us. Please tell us how software has no structure. Please explain to us the conservation of information. Please explain to us the Church-Turing Thesis.

    Medieval boy has come to post, haven’t you RB?

  103. An odd post from RB, being on point as to why the decision simply would not fly under US law, but reverting to his established anti-patent ways in the fourth paragraph, siding with the anti-patent Lemley (and his child, Lex Machina).

  104. I think the US was right to reject the patent for obviousness.

    Requiring the techncal or non-abstract features to conincide with the novel features is an old mistake, known as the Kerntheorie (core theory) in Germany and the point of novelty approach in the US. While this approach violates the principle that patent applications must be assessed as a whole, it is still used occasionally because it appears to provide intuitively better results, occasionally. But the very UK courts have explained brilliantly the flws of this approach in Genentech.

    Paradoxes can not be solved. They require the question to be rephrased rather than answered.

    Since 1841 (Neilson v. Harford) patents are only granted in the UK in case of a complete solution that does not require “undue experimentation”. In software, there is a tendency to describe the problem to be solved without actually diving the solution. US professor Mark Lemley recently wrote about the return of “functional claiming”, a bad thing. It rminds of bygone centuries when patents were privileges to conduct certain business. But as early as 1623 the UK government showed its awareness that privileges = monopolies = bad.

  105. Hal Wegner does find it worthy of mention as a comparative (i.e. different) item of law.

    Contrast that with the naked implications here that the US law could readily be the same.

    C’est la vie.

  106. I guess, Max, that all honor is gone in the world. If you or the other on this board were honorable you would incorporate the counter arguments to your asserts in your posts. But you do not. And, the counter arguments are based on the science and engineering of the technology of which you remain willfully ignorant.

    Really, just filthy behavior.

  107. Of course the problem is that there is no way to distinguish between software and hardware. And, the EPO has become a you are eligible if you have the money and cache to be eligible system. Typically Europe.

    It is funny dealing with you people. You just fall back to your old positions no matter how many battles you’ve lost. Quite telling in human character.

  108. On the issue of “does one filter under 101 or 103″ for me the most interesting sentence of Lantana is the 5th in para 41, on the question what sorts of inventive activity fall to be considered when debating patentability.

    For the EPO, the only form of inventive activity that can help patentability is technological inventiveness. Clever accountancy, or business management, do not count.

    Conversely, for the UK it seems, you can be patentably new and inventive even in fields lacking any technical character.

    Then there is the interesting issue of how to assess the “contribution” under the eligibility provision.

    On the one hand, in England, the judge does it relative to what has aleady, by the date of the claim, become “conventional”. That might accord with “new” in 35 USC 101.

    On the other hand, at the EPO, they believe implacably that when judging eligibility you should not be swayed by what is the state of the art one day before the date of the claim. What is eligible should be absolute, not dependent on the particular events of the week before.

    LB suggests there is nothing new here. I dare say he is right. He wonders why Dennis runs this thread. I suggest because it is topical, and provocative enough to stimulate useful debate. Hal Wegner anyway thought it worth mentioning.

  109. This mixing up business is complete insanity.

    A door comprising:
    a rectangular piece of wood; and
    two hinges rotatably attached to the wood.

    Under the Lourie test: (1) The abstract concept is a material for providing an opening between two spaces that can be opened and closed; (2) wood is old and know. hinges are old and known. adding hinges to wood is old and known. (3) Ineligible under 101 as this is an attempt to claim the abstract concept of providing an opening between two spaces that can be opened and closed.

    Boy and girls that is how silly the Lourie test is and that is how ridiculous you people are.

  110. This decision is recent, the precedents that are cited generally predate the AIA. Tbh, I don’t know why a blog post was dedicated to this decision, it does not seem to innovate in any particular way the UK case law about computer-implemented inventions.

  111. This mixing up a lot of stuff. The differences among UK, EPO, and US law. And, at the end of the day, for the US it should be the 1952 Patent Act. And, that act was written to get rid of the back door of mixing 101 and 102, 103, and 112.

    If a judge is looking at an element of a claim and saying does that add an inventive concept, then they are into 102, 103 territory and not 101. Simple. Clean. The SCOTUS knows that is the law and that is why the DOJ evil master Stern got around the law with the three deadly judicial exceptions.

  112. This case helps to expose the fault line between UK law and that of mainland Europe, when it comes to eligibility (under the umbrella European Patent Convention) of programs for computers. Even if he wanted to, Judge Birss is not free to follow EPO caselaw. Rather, he is constrained by the precedents laid down by the higher courts of England.

    I believe that the Federal Circuit (esp. Rader CJ) is well aware of the choice of approach and that the tussle in the Federal Circuit is a battle over which path to choose. Note (above) that in England novelty and non-obviousness were conceded. Had this case been argued at the EPO, the claim would have survived an eligibility, only to fail on novelty and obviousness.

    Those higher English courts strive to follow the authority of the EPO’s Enlarged Board of Appeal (the G Decisions of the EPO). Hence the English Rule iv) “is the contribution technical in nature”. But then the English courts finesse out of that by pronouncing that step iv) is only a step to confirm what will have been settled already by performing steps i) to iii). Nice diplomacy. We in England are good Europeans. We DO follow the authority of the EPO (but on our island we do it our way, thank you very much).

    By the way, one could not have wished for a more skilful and learned advocate than Mr Keith Beresford. He was already ten years ago writing textbooks on patentability of software and is a veteran of the scene. So too is Colin Birss. Like nearly all of the English patents judges, he was a patents barrister for the first half of his career, appearing half the time for the rights owner and the other half for the accused infringer. So he understands the practical importance of decisions such as this one.

    will the case go to Appeal in England. I doubt it.

  113. I think he predicted that they’d rule that the software claims that don’t involve a technical advance over the prior art will not be eligible. And he may be saying that the technical advance must itself be novel and non-obvious ivo the prior art (as it was in Diehr). It actually is one way of characterizing their previous holdings, see where D discusses Flook.

  114. “I suspect that the rule supported by Judge Birss here is not too far removed from that which the current U.S. Supreme Court would also fashion if given the chance. However, the current USPTO does not require that particular elemental linkage.”

    Dennis, are you predicting that the Supreme Court will ultimately rule that software is not patentable??

  115. Wow. Branching out to other countries and not mentioning Australia’s affirming software patenteligibility last week? Amazing, unbiased blog yoy have here.

  116. I suspect that the rule supported by Judge Birss here is not too far removed from that which the current U.S. Supreme Court would also fashion if given the chance

    I suspect otherwise – especially given that you are shamelessly plugging for a WHATEVER view of patent law that you have advocated for in the past – one that the Court recently took the chance to say ‘not a chance’ in the 9-0 Prometheus decision.

    Did I say chum? I meant shameless chum.

    C’est La Vie.

  117. JB – read the final paragraph of the opinion:

    Finally I will stand back from the detailed submissions and look at the claim overall. In substance the claim relates to computer software running on conventional computers connected by a conventional network. The task the software performs moves data from one computer to another using a conventional technique for carrying out that task, i.e. email. The context in which this arises is that accessing remote computers via continuous connections can be problematic but this is not a technical solution to those problems, it avoids them, but does so using a conventional technique. The claim has been found to be novel and inventive by the examiner and in that sense it makes a contribution of some kind to the art, but the applicant has been unable to identify anything which this claim can fairly be said to contribute which has a technical character. In my judgment this claim is to unpatentable subject matter and is contrary to s1(2) of the Act / Art 52 EPC.

  118. Not only that, but the blog’s conclusion is in direct variance with the actual content of the ruling:
    “One important result of this approach – well recognized by Judge Birss is that the scope of subject matter eligibility shifts over time. The Lantana case involves a particular use of email systems. If the patent had been filed in the early days of email and was able to introduce an a technological mechanism that was new at the time then the application would be subject matter eligible. However, the reality is that email systems were already very well known by the time Lantana filed its application. In Judge Birss’ words, the technological aspect of the invention was “conventional.” As such, there was no technological contribution to be found. ”

    Yeah. Actually, that’s not what the judge ruled, at all, and moreover, untrue.

    These must be tough times for software patent lobbyists and apologists.

  119. I’m pretty sure that most of these UK decisions are pretty recent, moreso than the AIA even.

    And moving forward it will be an acceptable compromise for congress to consider enacting here.

  120. A massive WHATEVER chum bucket here for conflating patent eligibility and patentability will serve the US system – NOT AT ALL.

    This lack of rigor in legal thinking is exactly what we do not need.

  121. A key point in the US debate on patentable subject matter is whether the technological (or non-abstract) contribution needs to be innovative

    I would beg to differ on the apparent distinction being made tha technological must be a set that is mutually exclusive with non-abstract.

    Trying to shoehorn US jurisprudence into UK jurisprudence is simply inviting massive errors in legal thought.

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