Shopalotto.Com Ltd, Re Patent Application GB 0017772.5

This is an appeal from the decision of Mr H Jones, the Deputy Director acting for the Comptroller General, who decided that patent application GB 0017772.5, as amended, was excluded from patentability under s.1 (2)( d) of the Patents Act 1977. The claim as amended before the Comptroller was as follows:

The apparatus features of this claim can manifestly be satisfied by a general purpose computer connected to the Internet, the general purpose computer being programmed to provide a web server, and further software conditioning the machine so as to receive, store, select and compare. This is a computer operating in a new way, to permit a user to play in a lottery. The claim accordingly raises the familiar difficulty presented by the exclusions provided by paragraph 1(2)(c) and (d) of the Act, which exclude from patentability a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; or the presentation of information. The scope of the exclusions is limited by the proviso to subsection 1(2) which states that the foregoing provision shall prevent anything from being treated as an invention for the purpose of the Act only to the extent that a patent or application for a patent relates to that thing as such. As the Hearing Officer correctly observed, these provisions are among the provisions designated in s.130(7) as being so framed as to have, as nearly as practicable, the same effect as Article 52 of the European Patent Convention to which they correspond. There is a substantial body of decisions on these provisions emanating from the Technical Boards of Appeal of the EPO to which regard must be had.

The Applicant's contentions are straightforward. It is contended that the claim is a claim to a game, conceptually no different from a board game, and is therefore entitled to the benefit of the note of Official Ruling 1926(A) (1926) 43 RPC Appendix page i. This note reads as follows:

I have to say that it comes as something of a surprise to me that the practice of the Office in respect of s.1 (2) of the 1977 Act can be said to have been determined by a construction placed upon s.93 of the 1907-1919 Act. The Official Ruling cannot provide a valid guide to the interpretation of the 1977 Act, the more so since the 1977 Act is, as I have indicated, to be interpreted having regard to the provisions of the European Patent Convention.

For some reason which must remain shrouded in mystery, the draftsman of s.1 (2) did not follow Article 52 of the European Patent Convention, but departed from it in a manner which might well be thought to be significant, were it not for the provision of s.130(7). It is better, in my view, simply to refer to the Convention, Article 52 of which is as follows:

A moment's thought will show that it is not possible to provide an exhaustive definition of "invention". The Convention does not attempt to interpret the word but provides a list of things which are excluded, whether or not they would be regarded as inventions.

This is not merely of theoretical interest. The importance of the programmed computer in modern industry, and the recent expansion in attempts to patent business methods, have ensured a substantial body of cases in the Technical Boards of Appeal of the EPO relating to these two exclusions. Discoveries and scientific theories have never given any difficulty, I suppose because it is difficult to work out how to draft a claim to either, but the scope and meaning of the other provisions are not straightforward.

Before any attempt is undertaken to reconcile the various decisions on these topics (a task which, in my view, is unlikely to be crowned with success) I think that the would-be analyst needs to consider whether the excluded matters have anything in common. In my view, they do not. They are a heterogeneous collection, some of which (aesthetic creations) have their own form of protection, others of which (discoveries, mathematical methods and scientific theories) have never been accepted as suitable subjects for monopolies in themselves, on obvious but different policy grounds. The problems are really caused by (c) and (d), which, by reason of their exclusion only to the extent that the patent relates to the subject-matter as such, are remarkably difficult to assess in cases lying near the boundary, particularly as it is difficult to discern any underlying policy. To take a straightforward example, do we only exclude computer programs as such because computer programs are protected by copyright, like aesthetic creations which can likewise be used industrially? Or is there a practical objection, in that this is an area which is exceptionally difficult to search? Or is there some other reason? Whatever the reason, it may possibly be that it is not the same as the reason for excluding methods of doing business.

There has been a tendency, especially in the earlier decisions of the Technical Boards of Appeal, to consider that the exclusions have in common a lack of 'technical effect' . While this may be true of many members of the list, it is not necessarily the case. A programmed computer provides an obvious example. Suppose a program written for a computer that enables an existing computer to process data in a new way and so produce a beneficial effect, such as increased speed, or more rapid display of information, or a new type of display of information. It is difficult to say that these are not technical effects, and, indeed, that the programmed computer, itself a machine that ex hypothesi has never existed before, is itself a technical article and so in principle the subject of patent protection. The real question is whether this is a relevant technical effect, or, more crudely, whether there is enough technical effect: is there a technical effect over and above that to be expected from the mere loading of a program into a computer? From this sort of consideration there has developed an approach that I consider to be well established on the authorities, which is to take the claimed programmed computer, and ask what it contributes to the art over and above the fact that it covers a programmed computer. If there is a contribution outside the list of excluded matter, then the invention is patentable, but if the only contribution to the art lies in excluded subject matter, it is not patentable.

The majority of the English decisions (in particular, Merrill Lynch [1989] RPC 561 (CA), Fujitsu [1996] RPC 511 (Laddie J) and [1997]RPC 608 (CA), Gale [1991] RPC 305), along with EPO decisions such as T208/84 Vicom/Computer-related Invention [1987] OJEPO 14, [1987] 2 EPOR 74, support this approach. The analysis has two stages. First, determine what the inventor has contributed to the art over and above a computer operating in a new way as a matter of substance and, second, determine whether this contribution lies in excluded matter or, on the contrary, whether it consists in a technical contribution or effect. The contribution must be considered as a matter of substance so as (for example) to prevent patents being granted for such things as novel computer programs on a carrier such as a compact disc.

An invention may be viewed as a solution to a concrete technical problem. Merely to program a computer so that it operates in a new way is not a solution to any technical problem, although the result may be considered to be a new machine. It follows that an inventive contribution cannot reside in excluded subject matter. I consider that this is a correct statement of the principle, although the learning in the EPO on this issue is not entirely consistent. Decision T0935/97 IBM/Computer Program II is a case in which a claim to a program on a carrier was allowed, although the material technical effect was found only in the computer once programmed with the claimed software, but I think that the contribution approach is the one that I should take in the light of the decided English authorities, and having regard to what I believe to be the preponderance of the views expressed in the EPO.

The questions may be answered notwithstanding the fact that there has been no novelty search in relation to the invention. I entirely acknowledge the force of the objection made by Mr Davis on behalf of the Applicant that the scope of a contribution to the art can scarcely be ascertained until a prior art search has been done, but one should not confuse the scope of the contribution on the one hand with the area in which the contribution is made on the other. Moreover, there comes a point where the relevant matters are so notorious that a formal search is neither necessary nor desirable and the Comptroller is entitled to use common sense and experience (see Laguerre's Patent [1971] RPC 384 at 398 line 24). Thus, in the present case, the physical underpinnings of the claim are a general purpose computer programmed to provide a web server and the Internet, matters which at the priority date were so notorious that it would be absurd in a technical context to feign ignorance of their existence, purpose and (so far as relevant) manner of operation. Indeed, without such knowledge it is not possible to understand the specification at all.

In my judgment, there can be no question of there being any contribution to the art outside the provision of the various pages to any person suitably equipped to view the pages provided by the server. Over and above that, any element of reinforcing the message of the brand or brands selected by the player must, it seems to me, be methods of doing business and so lying in a forbidden subject-matter. In my view, the Hearing Officer's conclusion is precisely that to which I would myself have come, for the reasons I have endeavoured to set out above. This appeal must therefore be dismissed with costs.