19 February 2007

Patents: The Macrossan Aftermath

Not long after the Court of Appeal's decision in Aerotel Ltd. v Telco Holdings Ltd and Others (Macrossan) [2005] EWCA Civ 1371 (27 Oct 2006) the Patent Office published a practice notice on patentable subject matter which replaced a whole series of previous notices on the topic going back to 1999 and modified others on games and business method patents.

Paragraph 5 of that notice propounded the 4 step test that the the Court had approved in Macrossan: (1) properly construe the claim, (2) identify the actual contribution, (3) ask whether it falls solely within the excluded subject matter and (4) check whether the actual or alleged contribution is actually technical in nature.

Since the Court of Appeal's decision and subsequent practice notice there has been a wealth of excluded matter hearings in the Patent Office in which that test has been applied:
11 Dec 2006 John Lahiri Khan
11 Dec 2006 Rockwell Firstpoint Contact
29 Dec 2006 Nintendo
8 Jan 2007 Consolidated Global Fun Unlimited, LLC
10 Jan 2007 Sony UK Ltd.
12 Jan 2007 New Constructs LLC
19 Jan 2007 Fisher-Rosemount Systems, Inc
24 Jan 2007 Nextpage Inc
29 Jan 2007 Toshiba KK
2 Feb 2007 Canon KK
2 Feb 2007 Peter Williams
12 Feb 2007 Canon KK
14 Feb 2007 Fisher Rosemount Systems Inc.
In all but two of those cases the application failed the 4-point test. In Consolidated Global Fun the hearing officer made no finding on the test but the application failed on other grounds. In Sony the application failed the test but some of the claims related to communications equipment and this got home on other grounds.

The net result is supposed to be much the same as in Europe and indeed it is not supposed to change the law here but I'm not sure that is so. Are you?

1 comment:

David said...

Personally, I think the law has actually changed, notably because of the insistence of the Patent Office to rule out applying the 4th step of the test unless the first 3 are passed. This means that pretty much all the old "technical effect" arguments no longer apply. The 4th step instead looks like another way to rule out inventions that don't neatly fall within the exclusions, as per Lux Traffic Controls. I don't see any other way of viewing it, after Jacob LJ's comments in Aerotel and the recent Patent Office decisions.

The UK approach is now clearly at odds with the EPO approach, as technical effect arguments (particuarly in relation to computer software) still apply at the EPO.