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Excluded Subject Matter

Article 52 (2) of the European Patent Convention and the equivalent provisions of the UK Patents Act exclude from patentability inventions which are:

Don't worry if you find it all rather baffling - the judges do too.  In the Court of Appeal judgement on 27 October 2006 in the Aerotel/Macrossan appeal, Lord Justice Jacob said “there is no evident underlying purpose lying behind the provisions as a group”. Andrew Gowers in his review misleadingly suggests "Currently, only if computer programs have a ‘technical effect’ can they be patented in Europe."

The Four Step Test

The Aerotel/Macrossan appeal set out a four step test for patent examiners.  This goes like so:

The test requires the existence of a reasonable disclosure and claim. Sadly the quality of many patent applications makes it difficult for the examiner even to start to apply the test. Many applicants approach the patent system with the object of grabbing themselves a useful monopoly with little consideration to what they themselves have contributed to the sum of human knowledge.

The criticism in this decision of the EPO Board of Appeal cases has caused a degree of tension between the UK Court and the EPO Boards as expressed in the Duns licensing decision only a few days later. Lord Neuberger tried to restore the peace in the Symbian case on 8 October 2008. In his view the EPO is just conflating the third and fourth steps. Since the EPO Board of Appeal had not offered any clear guidance that differed from the Aerotel/Macrossan precedent, this test will continue to be applied by UK Examiners for the foreseeable future.

Software Patents

Computer programs are the most contentious area of the excluded subject matter and a great deal of effort has been made by businesses, including IBM and Microsoft,  whose model depends on selling software, into emphasising the technical aspects of their innovations so that they can have a patent estate.

It is possible now to draft a claim to a computer program. Following the Aerotel/Macrossan decision examiners in the UK initially refused  claims to the programs even though the inventive contribution of other claims satisfied the four step test. As a result a case (2008 EWHC 85(Pat))was brought before Kitchin J to argue that if the method claim were allowable, then the program claim was too. In his diplomatic judgement of 25 January 2008, Kitchin J held out an olive branch to the EPO and sent a batch of files back to the UK-IPO for re-examination.  He held that the answer to the Four Step Test questions set out above would be the same irrespective of whether the invention is claimed in the form of a programmed computer, a method involving the use of that programmed computer or the program itself. This approach has been confirmed as correct in Symbian where it was held that the mere fact that what is sought to be registered is a computer program is clearly not determinative.

EPO Board of Appeal One Step Test

Look for example at the specification that the EPO Board of Appeal had to consider in Pitney Bowes case T0388/04 now published in the 01/07 Official Journal.

This decision was made on 22 March 2006 but since it was only added to the EPO database in December 2006, it was not considered in the Aerotel/Macrossan appeal. The subject matter of the alleged invention was what to do with returned mail and the suggestion was that a systematic search strategy should be followed and this would be determined by the reason for the mail being returned. It was all pretty trite and nebulous but the prior art that could be located in the patent literature was merely background.  The examiners looked to see if there was anything technical.  In the broad understanding of the Hitachi (2004) T258/03 decision, the unspecified technical means such as a computer were enough to provide technical character but the examiners rejected the application because it was administrative and could not be regarded as an invention, apparently based on decision T 931/95 (Pension Benefits).

The Board of Appeal considered whether they could take the technical contribution approach and decided that they were entitled to assess the exclusion before considering inventive step.  They therefore went straight to step 3  of the four step test and just asked whether there was anything in the claim that was not excluded - regardless of side issues as to whether the steps were technical or administrative.  Since each step was a typical business activity or decision there was nothing patentable and the application remains refused.

Biological and Moral Exclusions

Article 53 of the EPC also knocks out

The last exclusion is the reason we have Swiss form claims that monopolise the use of a known substance for a specific purpose possibly at a specific dosage. In  Actavis  v Merck a learned judgement by Lord Justice Jacob (who has much of his own hair despite his great experience) upheld the validity of  a  patent  for using a low dose of finasteride to halt the balding process. Its a pharma company's dream - a drug you must continue to take to keep your hair every day for the whole of your life. It was a really exceptional fact scenario. Although the drug had been disclosed for this purpose before the priority date at a higher dose, there were further publications that meant the skilled man would not  at the priority date of this patent  go on to test whether lower doses worked. The claim was not obvious.

Frequently patents about dosage regimes will be obvious. The long running battle over the once-a-week alendronate product patents belonging to Merck & co, Inc is an example. The Enlarged Board of Appeal of the EPO is to consider the patentability of Swiss claims where the drug is already known for treatment for the same illness in Case G2/08.  The case involves taking niacin at bedtime as a treatment for high cholestorol. Even if the patent is granted it will be of doubtful value as it can't be infringed by a doctor telling the patient to take the existing product at that time. The Board of Appeal believe that the dosage regime is not obvious either but they have not had the benefit of any expert evidence. It does indeed seem strange that methods of treatment are excluded from patentability but patents can be issued that seem to monopolise the right to sell the product with appropriate instructions.  The EPO is not answerable to any policy making body and struggles with political  questions like this. Sometimes it is helpful to have a democratic element to decide what is the correct policy for an ordered society - just one more reason why we need a Community Patent.

Scientific Theory

This exclusion is not often an issue, but it was considered in the UK-IPO in the Blacklight Power case.