The UK Patent Office has changed the way it examines patentability. The new approach is very similar to that taken by the European Patent Office (EPO), and will not materially affect the scope of what is patentable under the UK Patents Act 1977.
The change in examination practice has been introduced following two recent decisions in the UK Patents Court. In his judgement in CFPH LLC's Application [2005] EWHC 1589 Pat., Peter Precott QC, sitting as a Deputy Judge of the High Court, concluded that assessing inventions against section 1(2) [which defines subject matter which is excluded from patentability] in isolation by applying the "technical contribution" test is not the right approach. Rather, all the requirements for patentability set out in section 1(1) have to be looked at together. This, the judgment says (paragraph 95), suggests a two step approach to assessing patentability, which can be summarised as follows:
1. Identify what is the advance in the art that is said to be new and not obvious (and susceptible of industrial application).
2. Determine whether it is both new and not obvious (and susceptible of industrial application) under the description of an "invention" in the sense of Article 52 of the European Patent Convention (EPC) - which section 1(2) [of the UK Patents Act 1977] reflects.
In Halliburton Energy Services Inc v Smith International (North Sea) Ltd and others [2005] EWHC 1623 Pat., Pumfrey J reaches a similar conclusion, saying "the contribution the inventor makes must lie in a technical effect, and not merely in excluded subject matter".
Unless and until there is any guidance from the courts to the contrary, UK Patent Office examiners will now apply the CFPH approach to determining patentability, as set out above.
Effect of the new approach
In the past, the UK approach to patentability has been perceived as somewhat different to the approach adopted elsewhere in Europe. UK Patent Office examiners have, until now, used the "technical contribution" test to assess whether inventions fall outside the exclusions set out in section 1(2). However, examiners have often also applied the test now used by the EPO, as set out in the EPO Board of Appeal decision in Hitachi T258/03, but only as a cross-check, taking the view that the "technical contribution" test was the proper one under UK law.
The UK Patent Office has always held that its approach and the EPO approach led to the same answer in nearly every case. While it is true that Hitachi addresses examination under Article 52 EPC as a separate step (and hence needs to import the concept of "technical contribution" into the obviousness test), whereas CFPH does not, in practice the two approaches seem very close.
The UK Patent Office believes that its change to using the CFPH tests does not change the boundary of what is patentable. There will inevitably be cases on the borderline of patentability, which might have been considered patentable under the old approach and are not under the new CFPH tests, and vice versa, but for the vast majority of cases the answer is likely to be the same. This is supported by the results of a trial carried out by the UK Patent Office, before it introduced the new approach to examining patentability, in which examiners applied the CFPH tests to a number of case studies.
Details of the new approach
In identifying the advance in the art that is said to be new and not obvious, examiners will look at the claim as a whole, including aspects that might fall within the section 1(2) categories. This is consistent with case law and with the comments made in paragraphs 101 to 104 of the CFPH judgment.
In light of paragraph 96 of CFPH, the UK Patent Office now considers that it will not always be necessary for an examiner to carry out a search before he or she can conclude that the invention fails the second step of the CFPH test. Examiners can reach this conclusion on the basis of what is acknowledged in the specification and/or the examiner's own specialist knowledge.
An invention still will not be patentable if it is new and not obvious merely under the description of things that are excluded by section 1(2). This is clear from paragraphs 100 and 127 of the CFPH judgment and also from the expression "as such" in section 1(2).
In the case of computer programs, the UK Patent Office has indicated that the approach suggested in paragraph 104 of the CFPH judgment may sometimes be useful in determining patentability. This asks the question: "Would it still be new and not obvious in principle even if the same decisions and commands could somehow be taken and issued by a little man at a control panel, operating under the same rules?". If the answer is yes, this suggests that the invention is not a computer programme “as such”, and is therefore not excluded under section 1(2).
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