Friday, July 22, 2005

UK software patent case

The England and Wales High Court (Patents Court) heard a software patent dispute in March this year. The decision of the deputy judge who presided over the case, Peter Prescott QC, is now available, CFPH LLC, Patent Applications by [2005] EWHC 1589 (Pat) (21 July 2005).

The whole debate over software patents which eventually got rejected recently again by the EU Parliament got horribly hung up on the meaning of the concept of a "technical effect" and what exactly constitutes an "invention." Mr Prescott, to his credit, admits explicitly that this gives the courts a problem:

"What is an 'invention' (in the sense I am now concerned with) is a topic bedevilled by verbal formulae – and by the sweeping of problems under the carpet. So, before I go any further I want to bring some of those problems out into the light of day.

But first: does it really matter? Is it merely a sterile argument about the meaning of words? To which I answer that whoever controls the meaning of 'invention' controls what can be patented and hence an important aspect of industrial policy. There can be but one justification for having a patent system, and that is that it is good for the people of the country. If the patenting of certain things does more harm than good, it matters. Patents that are wrongly granted can be very expensive to challenge and may deter small and medium enterprises.


At the risk of some inaccuracy, patents are supposed to be granted for non-obvious advances in technology. I said "at the risk of some inaccuracy". We sense that we know 'technology' when we see it. And no doubt that is correct, most of the time.

But it is not correct all of the time. Therein lies the delusion. You can prove that for yourself by trying to find a definition of 'technology' that everybody can agree on. The more you try, the more you will discover what a horribly imprecise concept it is. (Would it cover an astro-navigation chart?[4] Naval tactics?[5] Double-entry bookkeeping? The phonetic alphabet?[6]) Many have tried to frame an acceptable definition, but to the best of my knowledge none have succeeded[7]. It is like the equally vexing question, "What is Art?". The hard truth is this: concepts of that sort have no existence, and words of that sort have no meaning, except by human convention; but human beings are hopelessly in disagreement at the margin. And it is, precisely, at the margin of uncertainty that cases come up for decision.

The same goes for the cognate word 'technical'. A number of surveys in the context of patenting have shown that, not only is there no agreement about the meaning of the word, but that most informed respondents agree that "trying to define the words 'technical' or 'technology' is a dead-end" [8]. That 'technical' is vague has implicitly been recognised in our courts too. For example, in Gale's Application [1991] RPC 305, 328 Nicholls LJ said that Mr Gale's algorithm did not solve a 'technical' problem lying within the computer. He continued:

I confess to having difficulty in identifying clearly the boundary line between what is and what is not a technical problem for this purpose. That, at least to some extent, may well be no more than a reflection of my lack of expertise in this field.

But for my part I think Nicholls LJ was too modest. I believe his difficulty arose, not through lack of expertise, but because of the inherent vagueness of the concept itself. In Fujitsu Limited's Application [1997] EWCA Civ 1174, [1997] RPC 608 Aldous LJ said:

I, like Nicholls LJ, have difficulty in identifying clearly the boundary line between what is and what is not a technical contribution.

Likewise the German Federal Court of Justice in XZB 15/98,"Sprachanalyseeinrichtung", 11 May 2000.

I mention this near the outset of this judgment because it is important. If you look at the case law on the subject, both here and in Munich, you will find many references to "technical contribution", "technical result", and so on, being touchstones by which these cases are decided. The use of the word 'technical' as a short-hand expression in order to identify patentable subject-matter is often convenient. But it should be remembered that it was not used by the framers of the Patents Act 1977 or the European Patent Convention when they wanted to tell us what is or is not an 'invention'. In any case the word 'technical' is not a solution. It is merely a restatement of the problem in different and more imprecise language. I am not claiming that it is wrong to decide cases with reference to the word 'technical'. It happens all the time. What I am saying is that it is not a panacea. It is a useful servant but a dangerous master."

Having worked in a Technology Faculty for the past ten years or so, it will be no surprise to know that academic colleagues have wrestled with the notion of a definitive definition of the word "technology" for many generations. It's imperfect and will be of little use to Mr Prescott and judicial colleagues but a working definition we sometimes use with our students is:

"Technology is the application of scientific and other knowledge to practical tasks by organisations that involve people and machines."

No. It doesn't transfer well to the legal context.

The judge decided, btw, that the network betting software under consideration did not qualify as patentable, confirming the original Patent Office ruling.

No comments: