Citation Codes
Equivalent Citations
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Advocates
- Mr Richard Davis (instructed by RGC Jenkins & Co. ) for AT&T [and] (instructed by EIP) for CVON the Appellants
- Mr Michael Tappin (instructed by The Treasury Solicitor) for the Comptroller General of Patents
Judges
- THE HONOURABLE MR JUSTICE LEWISON
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AT&T Knowledge Ventures LP, Re
Smart Summary
Factual and Procedural Background
This opinion concerns two appeals by Company A and Company B against decisions by the UK Intellectual Property Office (UKIPO) that their claimed inventions were not patentable. The decisions were made by officials acting for the Comptroller. The appeals revolve around the interpretation and application of exclusions from patentability under section 1(2) of the Patents Act 1977, reflecting Article 52 of the European Patent Convention (EPC), specifically regarding computer programs and business methods.
Company A's invention relates to a content broker hosting service system that intermediates between users wishing to buy digital content and suppliers, aiming to ensure compatibility of content with user devices via a device profile table.
Company B's invention concerns a messaging system that modifies messages based on group membership, where subscriber-driven updates authenticate group membership to improve message modification services.
Legal Issues Presented
- Whether the claimed inventions fall within the exclusions from patentability under section 1(2) of the Patents Act 1977 / Article 52 EPC, specifically concerning computer programs and business methods.
- How to apply the four-step Aerotel test for patentability of computer-implemented inventions.
- The meaning and scope of the "technical contribution" requirement in assessing patentability.
- Whether the claimed inventions produce a relevant technical effect that takes them outside the excluded subject matter.
Arguments of the Parties
Company A's Arguments
- The device profile table provides a missing "in-between means" that enables the content broker system to function better, which is unknown in the prior art.
- This represents a technical solution to a technical problem, not merely a business method.
- The transmission of digital content tailored for particular user devices constitutes a new technical result, contrasting with the prior art's uniform content delivery.
- In mixed inventions, the presence of a relevant technical effect should be assessed, and if a technical person learns something new from the invention, it indicates a relevant technical effect.
Company B's Arguments
- The subscriber-driven update and authentication method is a particular technical implementation, not just a business method.
- The process runs in a technically different way to obviate the need for data conversion, implying a technical effect.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Aerotel v. Telco; Macrossan's Application [2007] RPC 7 |
Four-step test for patentability: claim construction, identifying contribution, assessing if contribution is excluded matter, and checking technical nature. |
The court affirmed the four-step test remains law but should not be followed blindly; it guides the assessment of technical contribution. |
| Symbian Ltd v Comptroller-General of Patents [2009] RPC 1 |
Reconciled Aerotel approach with EPO Board of Appeal, emphasizing the necessity of a technical contribution and clarifying the "technical effect" concept. |
Confirmed the Aerotel test and emphasized that patentability requires a technical contribution beyond excluded subject matter. |
| Vicom (T 0208/84) |
Technical contribution assessed by whether the invention relates to a technical process carried out on a physical entity by technical means. |
Supported the view that inventions involving technical processes controlled by computer programs are patentable, not excluded as computer programs as such. |
| IBM Corp. (T 0006/83 and T 0115/85) |
Inventions relating to computer system architecture or solving technical problems in operation of computers are patentable. |
Used to illustrate inventions that operate irrespective of data nature or application, producing technical effects at the system level. |
| Merrill Lynch's Application [1989] R.P.C. 561 |
Confirmed that a mere data-processing system for business methods is excluded; a technical advance (e.g., increased processing speed) is necessary. |
Applied to reject business method inventions lacking a relevant technical contribution. |
| Re Gale's Application [1991] R.P.C. 305 |
Clarified that improvements in programming instructions that do not solve a technical problem inside the computer are not patentable. |
Used to support the exclusion of inventions that merely change programming without technical effect. |
| Hitachi (T 258/03) |
Business scheme modifications aimed at circumventing technical problems rather than solving them do not contribute to technical character. |
Referenced to emphasize that technical character must be substantive and not merely formal. |
| Gameaccount (T 1543/06) |
Technical implementation of excluded subject matter per se cannot form basis for inventive step; inventive step must be based on particular implementation. |
Supported the principle that mere technical implementation of excluded matter is insufficient for patentability. |
Court's Reasoning and Analysis
The court began by reviewing the relevant statutory provisions and the jurisprudence of the Court of Appeal and the European Patent Office Board of Appeal, particularly the Aerotel and Symbian decisions. It emphasized the four-step Aerotel test and the necessity of identifying a technical contribution that is not solely excluded subject matter.
The court acknowledged the difficulty in defining "technical" but relied on established signposts such as whether the invention affects processes outside the computer, operates at the architectural level irrespective of data, causes the computer to operate in a new way, increases speed or reliability, or overcomes rather than circumvents a problem.
Applying these principles to Company A's invention, the court found that the device profile table does not cause the computer to operate in a new way, nor does it solve a technical problem of incompatibility but rather circumvents it by supplying compatibility information. The invention was characterized as a computerised business method lacking a relevant technical effect.
Regarding Company B's invention, the court held that the subscriber-driven authentication is a business decision about how to run a message modification service. The implementation uses conventional technology and does not produce a technical effect beyond the excluded business method.
In both cases, the court concluded that the claimed contributions fall within excluded subject matter and do not provide the necessary technical contribution to warrant patentability.
Holding and Implications
The court DISMISSED both appeals.
The direct effect is that the claimed inventions by Company A and Company B remain unpatentable under the current interpretation of patent law relating to computer programs and business methods. No new precedent was established beyond reaffirming the existing framework for assessing patentability in this field, particularly the application of the Aerotel test and the necessity of a substantive technical contribution beyond excluded subject matter.
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