Patents

Case Note: Fujitsu Ltd's Application

Jane Lambert

June 1997

This article formerly appeared on the Lancaster Buildings  website

S.1 (2) of the Patents Act 1977 declares that a number of things are not inventions for the purposes of the Act to the extent that a patent or application for a patent relates to that thing as such. They include discoveries, scientific theories, mathematical methods, schemes, rules or methods for performing mental acts, doing business and computer programs.

European Patent Convention

That section is substantially the same as art 52 (2) and (3) of the European Patent Convention ("the EPC").  It is clear from the italicized words (and article 52 (3) of the EPC) that some computer programs may be protected under the Act (or as the case may be, the EPC).

VICOM 

In VICOM Systems Inc.'s Application [1987] EPOR 74, the European Patent Office ("the EPO") said that a claim directed to a technical process which is carried out under the control of a program (to be implemented in hardware or in software) cannot be regarded as relating to a computer program as such as it is the application of the program for determining the sequence of steps in the process for which in effect protection is sought and that such a claim is allowable under art 52 of the EPC.

Merrill Lynch   
This approach was approved and adopted for the construction of s.1 (2) of the Patents Act 1977 by the Court of Appeal in Merrill Lynch's Application [1989] RPC 561. Fox LJ explained at page 515 that there must be "some technical advance on the prior art in the form of a new result."   Even though VICOM showed the way to protecting programs running on known hardware, many applications for such programs have failed.   

Fujitsu 
The latest attempt concerned a method for modelling crystal structures for designing inorganic compounds by manipulating the images of known structures, a process that had hitherto been done by linking bits of plastic. The principal examiner found that the invention should be excluded from protection on the grounds that it was nothing more than a computer program and a method for performing a mental act (see Fujitsu's Application [1996] RPC 511).

The Hearing before Laddie J

The applicant appealed to Laddie J who dismissed the appeal on the ground that it consisted "in substance of a scheme or method for performing a mental act" ([1996] RPC 511, 532). In his judgment, Laddie J analysed and distilled the following propositions from the leading decisions of the EPO and the Court of Appeal:

	The types of subject matter referred to in s.1 (2) of the Patents Act 1977 are excluded from protection as a matter of policy whether the matter is technical or not.
	Such exclusion is a matter of substance not form. Thus a literary work or, for that matter, a computer program recorded on media that might of itself be patentable does not qualify for protection.
	Prima facie a computer running under the control of one program is a different piece of apparatus from the same computer when running under the control of another program. Consequently, a claim to a computer controlled by a program as well as a method of controlling a computer by a program or a method of carrying out a process by use of a computer controlled by a program can be the subject of patent protection.
	A data processing system operating to produce a novel result would not be deprived of protection merely on the ground that it is a program. It is necessary to look at what the computer is doing. If all it is doing is one of the activities excepted by s. 1 (2) it will not qualify for protection.

The Appeal
The applicant appealed from Laddie J to the Court of Appeal. Dismissing the appeal the Court identified the crucial question as whether the software produced a technical contribution. That was not necessarily the same as whether the program provided a new tool. On the facts of this case the thing software fell within s.1 (2).

Possible Changes to the Law

Early in 1994 the United States Patent Office held consultations with the computer industry in Silicon Valley as to whether similar provisions of the American patent legislation should be repealed. The United Kingdom Patent Office  held a conference on whether or not to abolish the statutory exclusions in October of that year. Nothing seems to have come of those discussions but it is debatable whether the repeal of sub-section (2) would have make much practical difference as many applications for software patents would fall at the novelty or obviousness hurdles..

 

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