Talk:Aerotel Ltd v Telco Holdings Ltd

Support by the EPO

IMHO this sentence:

The conclusion, if not the reasoning, behind the Macrossan part of the judgment was supported by the European Patent Office on 7 November 2006 in that they issued a declaration[3] refusing to search Macrossan's related EP patent application 1346304.

should be reworded. The mere fact that the European Patent Office has issued a declaration under Rule 45 EPC cannot be viewed as an endorsement of the judgment by the EPO. This appears to be original research unless a citation can be given of course. --Edcolins 19:37, 14 February 2007 (UTC)

I have reworded the section to remove what I believed to be original research. The last sentence would still need an external citation. --Edcolins 19:56, 14 February 2007 (UTC)

I disagree with the reasons for the edit but will leave it as it is since the end result is fine bar a minor correction. The EPO have stated that they only issue no-search declarations on cases where they think there is no reasonable chance of a patent being granted at all. Do not have a reference for that, though since the Guidelines for Examination have not been updated to include the reasons for issuing the declaration in view of unpatentable subject matter - although they do say that declarations should only be issued when the Search Division decides a search would not serve any useful purpose having regard to "any possible future prosecution of the application" [1]

Also, while the examining divisions of the EPO are not bound to follow the BoA, they DO follow the Comvik decision. GDallimore 09:04, 15 February 2007 (UTC)

After going over the section, I decided to give it a complete rewrite. Explaining what has happened with the declaration, explaining the practice of the EPO and, only then, explaining how the EPO will treat the application differently that in the UK courts as a consequence of the situations previously explained. I believe these edits make it clearer that this is not WP:OR GDallimore 12:29, 15 February 2007 (UTC)

Two cases and one decision

It would be interesting to know why the two cases have been consolidated into one. If I understood this correctly.--Edcolins 20:20, 14 February 2007 (UTC)

Edcollins, yes the two cases were consolidated into one, so to speak. And this was because Lord Justice Jacob decided that the two cases ought to be heard together, presumably because he thought that they raised common legal issues - in this regard see the court's Order dated 26 May 2006 (and particularly the part of that Order headed "Information for or directions to the parties"). And having heard the two cases togeher, it seems that the Court decided that it would be sensible to issue a single judgment document in respect of them, which it went on to do. --Neal Macrossan 08:05, 7 March 2007 (UTC)

Is Macrossan's process an "alleged" invention?

There is some dispute among editors as to whether or not the process described and claimed by Macrossan is an "alleged" invention. I've tried to avoid using the term "alleged invention" in the article since neither patent offices nor courts determine whether or not something is or is not an invention. They accept the applicant's definition as to what the invention is by what the applicant claims. They then determine whether or not the claimed invention is patentable.

Counterpoint?--Nowa 15:38, 6 March 2007 (UTC)

Sorry, I was getting confused with the four step test reference to "alleged contribution". "Alleged inventions" is a hangover from the CFPH judgment. My mistake on that point.

However, I think it is true and accurate to say that the application was refused because the "alleged contribution" was not "an invention". The UKPO and courts do consider issues of whether or not something is or is not an invention and even the EPO do at times (I can find you some recent decisions about the psychology of smell and a postal service, if you really want). Macrossan's idea (not invention) was held to be excluded from patentability (see para 74 of judgment). The excluded categories of subject matter are not considered to be inventions (see para 1 of judgment). You can say "the alleged contribution is excluded from patentability" if you want, but these mean the same thing and I think the former is more clear and highlights the difference between UK and EPO practice. So, the truth is possibly half way between our two edits! :)

Also, your most recent edit is not correct. The UKPO examined the application under the CFPH procedure where the novel and inventive bits of the "alleged invention" (correct to use this term here) were important. The Court of Appeal did not apply CFPH (and therefore did not agree with the UKPO examiner's finding), but instead attempted to identify the more nebulous concept of "the contribution".

I've got a major rewrite of the whole article in mind, so I'm leaving it for now. You can see what you think of the re-write. GDallimore (Talk) 16:13, 6 March 2007 (UTC)

GD, Thank you for your thoughtful response. There may also be some subtle distinctions beween how the word "alleged" is used in the US vs UK. In the US it is a somewhat sarcastic term. A US reader would understand the term "alleged invention" to mean that its not really an invention as anyone with an ounce of common sense could plainly see. Technically I agree with you that "alleged invention" is the proper way to describe what is disclosed and claimed in a pending patent application, but I was trying to stay away from a value judgement as to whether or not new methods of doing business or software are really "inventions".

Regarding the major rewrite, Mr. Macrossan himself has some good references and comments on his talk page. They might be helpful.--Nowa 17:53, 6 March 2007 (UTC)

I changed "alleged invention" to "claimed invention" before reading this discussion. Please feel free to revert my edit. --Edcolins 20:36, 6 March 2007 (UTC)

Regarding GDallimore's comment of 6 March 2007 that -

"Macrossan's idea (not invention) was held to be excluded from patentability (see para 74 of judgment). The excluded categories of subject matter are not considered to be inventions (see para 1 of judgment).", a couple of points -

1. Section 1(2)(c) of the English Patent Act, uses the phraseology "are not inventions for the purposes of this Act" whilst the equivalent Article 52(2) of the EPC, uses the phraseology "shall not be regarded as inventions". In other words these are deeming provisions. So even though something may well in fact be inventive, and constitute an invention, for the purposes of the English Patent Act and the EPC at least, a legal fiction is applied such that such a thing is not going to be regarded as inventive, and as an invention (with the cosequential result that such a thing will not be patentable ... at least under the English Patent Act and the EPC)

2. The patent offices of Australia, New Zealand, South Africa and Singapore have determined that my application is for an invention, and that it is not excluded from patentability under those jurisdictions.

--Neal Macrossan 00:25, 7 March 2007 (UTC)

In response to Nowa

• I hadn't realised that alleged had such a POV meaning in the US. I wouldn't see it that way in the UK. Pretty much any patent application involving software is potentially caught by the exclusions from patentability. Consequently, it is only an alleged invention until such time as the determination of whether it is actually caught by the exclusions has been made. Similarly, the judgment in question discusses at surprising length whether the word "alleged" before contribution is necessary in the four-step test. Some recent cases of the UKPO have turned on the fact that the UKPO disagreed with the applicant as to what their contribution actually was.

In response to Neal Macrossan

• 1. The phraseology of the UK Act was deemed irrelevant since it is supposed to be the same as the EPC. Therefore, it is what the EPC says that matters. When it comes to the EPC, I would have thought that you knew that it lists four requirements for obtaining a patent. Article 52 EPC. There must be an invention, and that invention must be novel, inventive and industrially applicable. Legal fiction or not, your idea was found to fail the first of those tests by the UK courts. That something is inventive does not mean that it is an invention, but is merely one of the requirements for something to be a patentable invention. Conversely, an invention doesn't stop being an invention for the mere fact that it is not inventive.

• 2. The judgment itself says that it is irrelevant what other jurisdictions have said about your idea, mentioning the US and Australia in particular. It may be deemed an invention in Australia, but it is not an invention in the UK. This is now a decided and closed matter. The article does already highlight that your patent application will probably be found to relate to an invention under current EPC practice, but this, again, is well known to be different from UK practice. The Software patent article highlights the particular practice of Australia, too. It could use expanding, though, so do add any info you have on AU patent law to that article. GDallimore (Talk) 08:50, 7 March 2007 (UTC)

In response to GDallimore of 7 March 2007 -

• re "The phraseology of the UK Act was deemed irrelevant ..".

Sorry, but it wasn't deemed irrelevant. The Court simply suggested that it was advantageous, for the four reasons listed at para. 16 of the judgment, to work directly from the source. And in any event, as the Court of Appeal is bound by its own previous decisions, including its Fujitsu decision (which not only did not deem the phraseology of the UK Act irrelevant, but positively worked from the phraseology of the UK Act), the Court couldn't have deemed the phraseology of the UK Act to be irrelevant. (As a matter of law, the Court of Appeal is bound by its own previous decsions, except in circumstances not applicable here.)

• re: "When it comes to the EPC, I would have thought that you knew that it lists four requirements for obtaining a patent. Article 52 EPC."

Yes, you are right I do know that the EPC lists four requirements for obtaining a patent. And one of those requirements is that even if the thing for which a patent is applied for might in normal parlance be considered to be an invention, it will "not be regarded as [an] invention" (i.e. for the purposes of the EPC it will be deemed not to be an invention) if it is for one of the things listed in Article 52(2).

• re "That something is inventive does not mean that it is an invention ..."

Conversely, that something is deemed by law not to be an invention, does not mean that it is not actually an invention in normal parlance.

• re "Conversely, an invention doesn't stop being an invention for the mere fact that it is not inventive."

Sorry, but I don't understand this. I might be missing something here but perhaps you could give me an example of something that is an invention, yet not inventive.

• re "The judgment itself says that it is irrelevant what other jurisdictions have said about your idea, mentioning the US and Australia in particular."

It may well be irrelevant in terms of what is legally regarded not to be considered to be an invention for the purposes of UK law. But it is relevant to what readers of the article (and not just UK readers) might think when they read phrases the likes of "Macrossan's alleged invention", instead of neutral phrases like "Macrossan's patent application was for .." or "Macrossan applied for a patent for ..."

Regards. --Neal Macrossan 01:20, 8 March 2007 (UTC)

Your error is in assuming that we are talking about "invention" in terms of normal parlance. We are not. We are talking about invention as a legal construct on the basis of which a patent (itself a legal construct which assigns property rights to otherwise intagible assets) may be granted. With this in mind, perhaps you'll realise that an invention can lack novelty and an inventive step and still remain an invention in legal terms.

Also, I've already accepted that "alleged invention" was an error. It has now been removed. Not sure what point you're trying to make?

Finally, I don't think Fujitsu ruled on whether or not the EPC of the UK Act was the defining text, it merely used the UK Act. Therefore there was no binding precedent on this point.GDallimore (Talk) 14:31, 8 March 2007 (UTC)

Yes, now that you have accepted that "alleged invention" was an error, and now that it has been removed, my substantive concern has been addressed, and the rest doesn't really matter. But as a mere matter of curiosity I'm still intrigued by your statement that: "With this in mind, perhaps you'll realise that an invention can lack novelty and an inventive step and still remain an invention in legal terms." Sorry but I didn't realise that at all and I still don't realise it. However I'm completely open to being enlightened by you on that - perhaps you can give me an example? Thanks. --Neal Macrossan 06:11, 9 March 2007 (UTC)

The classic UK example is the Lux traffic lights case, where the inventors blew the novelty aspect of their invention by trialling it on a public road before they had filed a patent application. This was held to be public disclosure. (Similarly for any number of inventions that have been revealed at trade shows, in technical reports, in press releases, etc. before getting the patent applications in).

An invention may be found to lack inventive step if, say, it is considered an obvious extension of what has gone before; or an obvious combination of already known ideas - even if the specific combination has not been made before. Jheald 07:44, 9 March 2007 (UTC)

Excellent point on novelty. --Nowa 11:47, 9 March 2007 (UTC)

This is, of course, the central problem with most attempts to patent software which enacts business processes; that they are almost inevitably obvious. Irrespective of the other issues under discussion, this seemed to me to be the central problem with the Macrossan application: getting a computer to shuffle documents around with user input was - even in 1985 - basically an obvious application of established computer operation. If it is obvious to a practitioner skilled in the art, it is not inventive. Whether the Australian PO follows the US policy of allowing almost anything to be patented with remarkably little questioning does not seem germane to this issue. —Preceding unsigned comment added by 81.106.83.139 (talk) 20:16, 15 August 2009 (UTC)

Was Macrossan's application examined by the UKPO under the CFPH procedure?

Gdallimore wrote to Nowa on 6 March 2007 saying -

"Also, your most recent edit is not correct. The UKPO examined [Macrossan's] application under the CFPH procedure ..."

Sorry, but that is not correct. The UKPO did not examine my application under the CFPH procedure. The CFPH decision was not handed down until 21 July 2005, whereas my patent application was examined by the UKPO in early 2004.

--Neal Macrossan 23:56, 6 March 2007 (UTC)

My mistake again, sorry. The source of my confusion was the edit that said that the UKPO determined that the inventive aspects were excluded. That is the CFPH test. Consequently, my assertion that the edit was wrong is doubly true if the UKPO weren't actually applying CFPH at the time. As part of the re-write, I plan to go over the history of the UKPO examination and High Court judgment. GDallimore (Talk) 08:53, 7 March 2007 (UTC)

Ok, even though I don't get the point about the edit, thanks for the acknowledgment.--Neal Macrossan 23:27, 7 March 2007 (UTC)

TRIPS

Regarding the statement in the article -

"However, it has already been well-established in previous case law that TRIPS is not self-enacting and therefore the judgment rightly ignored any impact that agreement might have on current UK law and practice."

Surely the phrase "it has already been well-established in previous case law that TRIPS is not self-enacting" needs a supporting reference to the previous case to which it is referring? What English cases have held that?

--Neal Macrossan 00:34, 7 March 2007 (UTC)

Agreed. Is in the pipeline along with lots of other improvements to the referencing. GDallimore (Talk) 08:54, 7 March 2007 (UTC)

Ok thanks for letting me know. But in the meantime given that -

1. there is no current reference to the previous case law you have in mind (UK I presume?),

2. I am personally not aware of such case law (and, as you could imagine, for obvious reasons I have, over the last couple of years, become pretty familiar with the various UK cases in this area ... although, in saying that, I am open to the possibility that it exists, if only for the reason that it at least seems to be a reasonable proposition),

3. " ... the judgment rightly ignored any impact that agreement might have on current UK law and practice", looks to be POV (for one thing, even if an authoritive UK case does hold that TRIPS is not self-enacting, it would still be open, I imagine, for the UK Courts to choose to interpret section 1(2) in a fashion consistent with the UK's treaty obligations, rather than to choose to interpet section 1(2) in a non treaty compliant manner),

I am deleting the whole sentence. But I am open to it going back in if the case law reference can be provided. --Neal Macrossan 23:07, 7 March 2007 (UTC)

Now do you see why Jacob gave the issue such short shrift? GDallimore (Talk) 14:17, 8 March 2007 (UTC)

Yes and no. Yes, because if the authority you have cited, was the one he was relying on, it might have been a little embarrassing for him explicitly to cite it as it seems that it was his own previous, non-binding (lower court by one tier) High Court decision. And no because he fails to go on to address the possibility that even if TRIPS is not self-enacting, it may still be open to the Court of Appeal to choose to interpret section 1(2) in a fashion consistent with the UK's treaty obligations under TRIPS, rather than to choose to interpet section 1(2) in a non treaty compliant manner. In any event you have now provided the case law references and that is the main thing. So thanks for that. --Neal Macrossan 05:52, 9 March 2007 (UTC)

IF the current Act/EPC is in conflict with TRIPS, the obligation is on the government to create new law, not on the UKP Patent Office/Courts to intepret the existing law differently. I was of the understanding (although I'm not that familiar with international treaty law) that this is what is meant by not having direct effect, or not being self-enacting. In any event, that's a very big IF, since EPC2000 is reputedly TRIPS compliant (specifically stating that patents shall be granted in all fields of technology) without removing any of the exclusions. Thus, the concept that there is any pressure on the UKPO to change the exclusions as a result of TRIPS seems somewhat humourous to me, as it apparently did to Jacob.

To be honest, I'm not sure it's even worth mentioning in the article as it has no relevance to the judgment itself. I'll probably delete it unless someone objects. If someone wants to save this factoid, maybe it could be moved to TRIPS or software patent debate? I know some people have a bee in their bonnet about TRIPS so it could be useful elsewhere. GDallimore (Talk) 13:04, 9 March 2007 (UTC)

Maybe useful to keep, if this hasn't been said in the Court of Appeal before. Jheald 13:53, 9 March 2007 (UTC)

I agree "keep". But I don't think "keep in this article" as it's an extraneous detail here. Any more suggestions for other articles. Having now taken a look at TRIPS, it is looking a little lacklustre, so maybe there? GDallimore (Talk) 14:01, 9 March 2007 (UTC)

Maybe the most neutral, yet informative, thing to do would be to have it remain in this article but say something like this? -

"The judgment briefly mentions[12] the TRIPS agreement and the fact that its lack of a list of exclusions from patentability and its requirement that patents should be available in "all fields of technology" puts political pressure on Europe to remove or reduce the categories of non-inventions. And the judgment also mentions that a paradigm example of a field of technology seems to be that of computer programs. However, the judgment went on simply to say that "The [TRIPS] point does not arise here", without giving any reason, or citing any case law, as to why it did not arise. However, perhaps this can be explained by the fact that Jacob (the Lord Justice delivering the judgment in this case) had eleven years previously, as a High Court judge, himself ruled[13] that TRIPS does not have a direct effect on UK law, and that the idea that the Court of Justice might nonetheless hold otherwise was "fantastic". Or perhaps Jacob simply thought that the point merited no further consideration as being self-evident."

--Neal Macrossan 05:07, 10 March 2007 (UTC)

Sorry, but that's hardly NPOV. "Paradigm example", "without giving any reason", "eleven years previously", everything is geared to making it sound like this judgment was a bad one. I accept that my previous use of the word "rightly" was a bit extreme, but let's not let this go to the other extreme.GDallimore (Talk) 08:45, 10 March 2007 (UTC)

Sorry, but "paradigm example" are Jacob's own words from paragraph 6 of the judgment, where he said:

"Some of the Art.52(2) excluded categories are not fairly within the description “field of technology” and so not within TRIPS (e.g. aesthetic creations) but others seem to be within it – the paradigm example being computer programs." (emphasis added)

"without giving any reason" - absolutely true, and noteworthy I think, but I'll wait to see whether any of the other editors think it to be noteworthy. On a related point, why did Jacob even mention TRIPS in the judgment at all? And why did he include it under a heading "Other considerations" ... in what way did he consider it to be a "consideration"? It's curious isn't it? ... why specifically raise it as a point and then say that "it does not arise here" without explaining why it does not arise?

"eleven years previously" - again absolutely true (based on the 1996 citation you supplied). And there is nothing derogatory about a judgment being from 11 years ago ... if anything, the longer a judgment goes without being overriden the greater its stature tends to be.

Anyway, taking into account the above and your comments, how about this? -

"The judgment briefly mentions[12] the TRIPS agreement and the fact that its lack of a list of exclusions from patentability and its requirement that patents should be available in "all fields of technology" puts political pressure on Europe to remove or reduce the categories of non-inventions. And the judgment also mentions that a paradigm example of a field of technology seems to be that of computer programs. However, the judgment went on simply to say that "The [TRIPS] point does not arise here", without giving any reason, or citing any case law, as to why it did not arise. However, perhaps this can be explained by the fact that Jacob (the Lord Justice delivering the judgment in this case) had previously, as a High Court judge, himself ruled[13] that TRIPS does not have a direct effect on UK law, and that the idea that the Court of Justice might nonetheless hold otherwise was "fantastic". Or perhaps Jacob simply thought that the point merited no further consideration as being self-evident."

--Neal Macrossan 08:01, 11 March 2007 (UTC)

Template help - BAILII citations

Since there are going to be lots of citations to Bailii in this article, I've created a new template, template:Cite BAILII, to automatically generate links. I'm having some problems getting it to work properly. Please visit template talk:Cite BAILII if you what to help! GDallimore (Talk) 14:46, 8 March 2007 (UTC)

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