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The Patent Box

and R & D Credits

Friday 12 July 2013

12:00 – 14:30

Liverpool in London, Royal Mint Court

Jane Lambert Barrister

4-5 Gray’s Inn Square Gray’s Inn

London WC1R 5AH +44 (0)20 7405 5252

+44 (0)79 6637 3922 Jlambert@4-5.co.uk

www.4.5.co.uk

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Welcome!

On behalf of the IP, Media and

Technology Group of 4-5 Gray’s Inn

Square, I should like to welcome you to

our seminar on the Patent Box which we

are running with our colleagues from

Atlas Tax Chambers and our good

friends from BDO and Broudie Jackson

Canter.

I should like to tell you a little about our

chambers and, in particular, about our

IP, Media and Technology Group.

Our chambers have achieved pre-

eminence in chancery, commercial, local

government and public law and planning

with practitioners like Richard Yorke QC,

Elizabeth Appleby QC, Michael Beloff QC

and Jeremy Sullivan QC. Now we are

developing expertise in IP and tax.

Although several members of our

chambers had been in important

copyright and breach of confidence

cases, we had never done much patent

or technology work before February.

Now it is one of our fastest growing

practice areas. My interest lies in

software implemented inventions but I

also advise on mechanical, electronic

and other inventions. My former pupil,

Dr. Alex Khan, who conducted his

research at Birmingham University

medical school, can cover biotechnology

and chemical patents and plant varieties.

We advise on difficult points of law, draft

complex instruments, negotiate in non-

contentious as well as contentious

matters and, of course, represent clients

before all courts and tribunals including

the Patents Court, Patents County Court,

Intellectual Property Office hearing

officers and Boards of Appeal. I and

other Members of our Group have

published books, contributed articles and

keep blogs on all areas of IP and

technology law.

We are particularly glad to share space

and facilities with Atlas Tax Chambers.

It makes us one of the few sets (if not

the only one) with expertise in tax as

well as IP. Having such expertise in one

place is very useful for those who are

setting a new business or developing a

new technology. Our colleagues include

Anne Fairpo, one if the authorities in IP

and taxation Unfortunately, Anne is in

the USA just now but our colleague,

Joseph Howard, who has experience of

all areas of tax law, is present.

Today we have an excellent programme

for you. After a short introduction to

patent law from me, Howard Veares, Tax

Director, Corporate International Tax

Services at BDP LLP, will outline the

Patent Box and R & D credits

concessions. He will explain the

conditions and how best to take

advantage of them. Howard will be

followed by Michael Sandys, Head of

Intellectual Property and Commercial

Law at Broudie Jackson Canter. Michael

will talk about licensing, joint ventures

and commercialization of intellectual

property. There will then be a short

question and answer session after which

we hope you will stay for a light lunch.

After this seminar we will upload the

presentations and handouts to our

Patent Box website which we shall

continue to update from time to time.

In time we hope this will become a

useful resource for both tax and IP

practitioners.

I hope you enjoy this event and I look

forward to getting to know you better.

□

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Programme

12:00 Registration

12:15 Jane Lambert Welcome and Introduction to Patents

12:25 Howard Veares The Patent Box and R & D Credits

12:45 Michael Sandys Licensing and

Commercialization

12:55 Jane Lambert, Howard Veares,

Michael Sandys,

Joseph Howard

Questions and Answers

13:00 Lunch and Networking

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Introduction to Patents

What is a patent?

A patent is a monopoly of a new

invention.

If the invention is a product, the patent

confers the exclusive right to make,

dispose of, offer to dispose of, use,

import or keep the product whether for

disposal or otherwise.

If the invention is a process, the patent

confers the exclusive right to use the

process or offer it for use. The patent

also confers the exclusive right to

dispose of, offer to dispose of, use or

import any product obtained directly by

means of that process or keep any such

product, whether for disposal or

otherwise.

Conditions of the Monopoly

The monopoly is a reward for disclosing

the invention in a manner which is clear

enough and complete enough for the

invention to be performed by a person

skilled in the art.

The Person Skilled in the Art

This is an expression that is used in

several contexts in patent law. The

“person skilled in the art” is sometimes

also called the “skilled addressee”. He

or she can be an individual or a team.

Essentially, it means a person or team

with the skills, knowledge and

experience to make or use the invention.

What is meant by “the art” is discussed

below under “novelty”.

Why do Governments grant Patents?

Patents are granted to incentivize

innovation.

Inventors could be rewarded by cash or

benefits in kind as in the former Soviet

Union but that would be an expensive

and not particularly efficient way of

promoting innovation.

In free enterprise economies like Britain

we leave it to the market to reward

invention by granting patentees a

chance to recoup their expenses and

perhaps a little more by giving them the

monopolies described above. Those

monopolies can last for up to 20 years

from the date of application for the

patent.

Qualifications for a Patent

Patents are granted for inventions that

are:

(a) new;

(b) inventive;

(c) useful; and

(d) not excluded from patentability.

Novelty

An invention is new if it does not form

part of the “state of the art”.

Essentially the “state of the art” (which

is sometimes also called “the prior art”)

in relation to an invention includes all

matter (whether a product, a process,

information about either, or anything

else) which has at any time before the

application for a patent for the invention

been made available to the public

anywhere in the world by written or oral

description, by use or in any other way.

Actually, the statutory definition is

slightly broader than that but for present

purposes it is enough. The important

words are “all matter”, “made available

to the public” and “by written or oral

description, by use or in any other way.”

Much of that “matter” is disclosed in

patents or applications for patents that

are made to the world’s patent offices1

but it is not limited to such disclosure.

It can include articles in technical or

scientific journals even if they are not

widely read or circulated, and are

written in languages that are not widely

spoken, in the UK.

The prior art can include matter that is

unpublished so long as it is made

1 The biggest of which are the US Patent and Trademark

Office, the Japan Patent Office, the State Intellectual Property Office of China, the Korea Intellectual Property Office of South Korea and the European Patent Office.

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available to the public. Thus, an

unpatented product that is on sale or

accessible for inspection somewhere in

the world forms part of the prior art.

If matter that should have been taken

into account is discovered after the

patent has been granted, the patent can

be revoked on the ground that the

invention was not new or that it was

obvious. This can be a problem as no

search of the prior art can ever be good

enough.

Inventive

The invention must involve an “inventive

step”. An invention is taken to involve an

“inventive step” if it is not obvious to a

“person skilled in the art”, having regard

to any matter which forms part of the

state of the art

This is another reference to the “person

skilled in the art,” that is to say the

person or team with the skills,

knowledge and experience to make or

use the invention.

Such a person or team is not expected

to know everything in the prior art but

he, she or, indeed, they are supposed to

have some general knowledge that is

shared by everyone with the skills,

knowledge or experience to make or use

the invention.

Identifying the “persons skilled in the

art” and their common general

knowledge are often issues in

determining whether an invention

involves an inventive step.

Another issue is determining whether

the invention really was obvious without

the benefit of hindsight. Simplicity is not

the same as obviousness but viewed

from a point in the future a simple step

may appear to have been an obvious

one. Courts and patent offices have to

be very careful not to confuse the two.

Utility

The Patents Act 1977 says that an

invention must be “capable of industrial

application if it can be made or used in

any kind of industry, including

agriculture.” That does not mean that

the invention has to be in use just

capable of use. The inventions of the

retired patent examiner, Arthur Pedrick,

and his cat Ginger such as their “photon

push-pull radiation detector for use in

chromatically selective cat flap control

and 1000 megaton earth-orbital peace-

keeping bomb” 2 are capable of industrial

application but most have never been,

and are unlikely ever to be, used.

Not excluded from Patentability

S.1 (2) of the Patents Act 1977, which is

derived from the European Patent

Convention (“EPC”) that is about to

celebrate its 40th anniversary this year,

declares that the following (among

other things) are not inventions for the

purposes of the Act:

“(a) a discovery, scientific theory or

mathematical method;

(b) a literary, dramatic, musical or

artistic work or any other aesthetic

creation whatsoever;

(c) a scheme, rule or method for

performing a mental act, playing a game

or doing business, or a program for a

computer;

(d) the presentation of information.”

Since much of the economy of the UK

and most other advanced economies is

based on software, the exclusion of

programs for computers presents serious

problems. Fortunately, the exclusion is

modified by a proviso that “the foregoing

provision shall prevent anything from

being treated as an invention for the

purposes of this Act only to the extent

that a patent or application for a patent

relates to that thing as such”. The words

“as such” make it possible for software

implemented inventions (as opposed to

software per se) to be patented. Over

the years the courts have generated a

vast volume of case law on computer

programs and other excluded matter.

The latest decision is HTC Europe Co Ltd

v Apple Inc [2013] EWCA Civ 451 (3

May 2013)3 which I blogged in “Software

Patents: HTC Europe Co Ltd v Apple Inc”

2 GB1426698 (A)

3 http://www.bailii.org/ew/cases/EWCA/Civ/2013/451.html

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on 13 May 2013. 4 A copy of that article

is appended.

Where does one go for a Patent?

Patents are granted by national or

regional patent offices for countries,

occasionally groups of countries and

sometimes even parts of countries.

There is no such thing as a world patent

or even an EU patent though there may

soon be a unitary patent for the whole of

the EU less Spain and Italy.

If an inventor wants a patent for the UK

he or she can go to the UK Intellectual

Property Office (“IPO”) in Newport5 or

the European Patent Office (“EPO”) in

Munich6. Despite its name the EPO is

not an EU institution. It was set up

under the EPC. The parties to that

convention include all the 28 members

of the EU but also several important

countries like Norway, Switzerland and

Turkey which are not members of, and

may never join, the EU. The EPO

examines applications for, and grants,

patents for inventions on behalf of the

governments of its contracting parties.

Patents granted by the EPO are known

as “European patents” and European

patents granted for the UK are called

“European patents (UK)”. European

patents (UK) are treated in the UK for

nearly all practical purposes exactly like

patents granted by the IPO. Applicants

for European patents can apply for

patents for one country alone, even

Monaco or San Marino, some of the

countries7 or indeed all the contracting

countries.

If an inventor wants a patent for

countries outside Europe he r she must

apply to the patent office of the country,

region or territory concerned. My blog

lists most of the leading patent offices.

It used to be necessary to make

separate applications to each of the

world’s patent offices which duplicated

4 http://nipclaw.blogspot.co.uk/2013/05/software-patents-

htc-europe-co-ltd-v.html 5 http://www.ipo.gov.uk/

6 http://www.epo.org/

7 Usually a group of big countries like France, Germany,

Italy, the Netherlands, Spain, Sweden, Switzerland and the UK.

each other’s efforts in determining

novelty, inventiveness and utility but it

is now possible to make a single

application to many national patent

offices simultaneously through an

international agreement called the

Patent Co-operation Treaty (“PCT”) 8.

The initial searches and examination are

conducted centrally. If an application

survives that first stage it is passed on

to individual patent offices around the

world to determine whether the

application complies with additional

national requirements.

How to apply for a Patent

The British requirements are set out in

s.14 of the Patents Act 19779 and the

Patents Rules 2007. 10

A number of documents have to be filed

with the IPO of which the most

important is “the specification.” The

specification describes the invention in

the context of the prior art and explains

to a “person skilled in the art” how it

may be performed. As I have said

above, the disclosure must be

sufficiently clear and complete for it to

be performed by the skilled addressee. If

it is not, the patent may subsequently

be revoked. The specification must also

list in one or more numbered paragraphs

called “the claims” the monopoly that

the applicant seeks. Very great care

must be taken in drafting the claims. If

they are drawn too narrowly the patent

may be circumvented. If they are drawn

too broadly the claim may be invalid.

Patent Agents (Attorneys)

It is for that reason also advisable to

consult a patent agent11 when making a

patent application. Most patent agents

have first degrees in a natural science,

engineering or some other technical

discipline and many have advanced

degrees in one of those disciplines as

well as specialist training in IP law. They

are regulated by the IP Regulation Board

8 http://www.wipo.int/pct/en/texts/articles/atoc.htm.

9 http://www.ipo.gov.uk/patentsact1977.pdf.

10 http://www.wipo.int/pct/en/texts/articles/atoc.htm.

11 Many patent agents in the UK prefer to be called “patent

attorneys”.

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(“IPReg”) 12 under the Legal Services

Act 200713. They represent inventors

and others before the IPO, EPO and

sometimes other patent offices. They

can qualify to conduct litigation and

present cases before the Chancery

Division as well as the Patents and

Patents County Courts. Their

professional body is the Charted

Institute of Patent Attorneys (“CIPA”)14.

The CIPA website has a searchable

database of registered attorneys and

member firms and our chambers can

also introduce clients to firms with which

we have worked satisfactorily in the

past.

What happens to the Application?

After the application is received by the

relevant patent office it is examined to

make sure that everything is in order.

That is to say, that the correct

documents have been received, they

have been filled in properly and that any

fees that may be due have been paid.

The filing of the application itself gives

the applicant priority over other

applications or patents for similar

inventions because any grant is

backdated to the date of the application.

Although no action can be taken for the

infringement of a patent until after it has

been granted damages for infringement

can be backdated to the date of

application.

The applicant then has up to a year to

decide whether he or she wants to

pursue the patent application. If so, the

application is then examined by an

official known as “the examiner” to see

whether the application is new,

inventive, useful and falls outside any

exclusions. If the examiner spots a

problem with the application he or she

may draw it to the attention of the

applicant or his agent. Sometimes the

problem can be resolved by

correspondence. If not, the applicant can

appeal against an examiner’s decision to

a tribunal (which in the IPO is known as

“a hearing officer”) who considers the

parties’ evidence and arguments. If the

12

http://ipreg.org.uk/ 13

http://www.legislation.gov.uk/ukpga/2007/29/contents. 14

http://www.cipa.org.uk/pages/home

application survives the examiner’s

objections is published it on the internet

and the patent office’s journal where it

can be read by members of the public.

Anybody can make representations on

the application. These are considered by

the examiner and the applicant. If the

application passes such further scrutiny

it proceeds to grant. Particulars of the

invention and the claims from the

specification are entered onto a register

of patents and the applicant (who is now

called “the proprietor” or “patentee”)

receives a certificate of grant

How to make Money from a Patent

It has to be emphasized that a patent is

no lottery ticket. Peter Bissell15 used to

begin his presentations by stating that

most patents on the register are never

worked, most of those that are, never

cover their costs, and of the few that do,

only a tiny proportion ever make serious

money for their proprietors. Many of the

patentees who do make money do so by

manufacturing the invention themselves.

Others license third parties to make the

invention. Patentees are encouraged to

grant licences to anyone who wants

them by reduced renewal fees and other

incentives. Such licences are known as

“licences of right”. Although the scope

for compulsory licensing has been

limited by TRIPS16 patentees may be

ordered to grant licences if their

inventions are not worked properly.

Michael Sandys will talk more about

licensing and commercialization in his

presentation.

Infringement

A patent is infringed if anyone other

than the patentee does any of the things

mentioned in the first three paragraphs

of these notes in relation to a patented

invention without the patentee’s

permission. The infringer need not have

been aware of the patent or even of the

invention. If he makes, sells, imports,

keeps a product, or uses a process that

15

Co-author of “A Better Mousetrap, the Business of Invention” 16

Agreement on Trade-Related Aspects of Intellectual Property Rights, http://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm

7

falls within any of the claims, he

infringes the patent.

The question that usually arises is

whether the infringer’s product or

process falls within one or other of the

claims. That in turn depends on how the

claims are to be interpreted. It must be

remembered that the specification,

including the claims, are addressed to

the “person skilled in the art”. It will

therefore be written in a way that can be

understood readily by such a person.

Sometimes technical language or

shorthand is used which may have a

completely different meaning to the

skilled addressee than to the general

reader. The judge’s job is to construe

the claims without reference to the

allegedly infringing product or process.

He or she has to put him or herself in

the position of the skilled addressee, a

process that is sometimes called

“donning the mantle”. For European and

British patents there is a Protocol to the

EPC and a massive body of case law to

help with such interpretation.

Essentially the judge reads the claims by

reference to the body of the specification

and any drawings that may be annexed

to it. Typically he or she will identify

and list the “features” or “integers” of

each claim and then look at the allegedly

infringing product or process to see

whether it shares those features. If it

does the patent is said to have been

infringed at least in respect of that

claim. If not, the patent is not infringed.

In most cases, the alleged infringer will

deny infringement and argue that the

patent is invalid and should never have

been granted. The usual grounds of

invalidity are that the invention was not

new or that it was obvious. That usually

requires a trawl of the prior art by the

alleged infringer that is a great deal

more diligent than that carried out by

the inventor and indeed the examiner

before the patent was granted.

However, there are other grounds of

invalidity. A good example of a case

where nearly every ground was

considered is Mr. Justice Birss’s decision

in Lizzanno Partitions (UK) Ltd v

Interiors Manufacturing Ltd [2013]

EWPCC 12 (11 April 2013) 17 which I

blogged in Construction of Patents -

Lizzanno Partitions (UK) Ltd v Interiors

Manufacturing Ltd on 17 June 201318. A

copy of that article is also appended.

Enforcement

Patent infringement is not yet an offence

in the UK though it is in some other

countries and there are many who would

like to create such an offence here. 19

Consequently, it is up to the patentee to

enforce his or her patent which, in

England and Wales, means bringing

proceedings in the Patents or Patents

County Courts.

In The Enforcement of Patent Rights20the

Intellectual Property Advisory Committee

(“IPAC”) 21 compared the cost of a

patent infringement action in the Patents

Court and Patents County Courts with

the costs in the USA, France, Germany

and the Netherlands. They found that

the average costs in the Patents Court

were £1 million, between £150,000 and

£250,000 in the Patents County Court

and between US$2 and 4 million and

upwards in the USA. By contrast the cost

in France, Germany and the Netherlands

was no higher than €50,000 and could

be as low as €10,000 in the Netherlands.

Litigation in the Patents Court is still

expensive but the costs in the Patents

County Court are now capped at

£50,000 for the trial on liability and

£25,000 for the inquiry as to damages

or account of profits. Also, there is a

maximum figure for the recoverable

costs at each stage of the litigation. 22

17

Agreement on Trade-Related Aspects of Intellectual Property Rights, http://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm 18

http://www.ipo.gov.uk/patentsact1977.pdf 19

Clause.13 of the Intellectual Property Bill would create an offence of deliberate copying a registered design. The concept of a registered design is very close to that of a patent and in the USA registered designs are actually called “design patents”. 20

http://webarchive.nationalarchives.gov.uk/+/http:/www.hm-treasury.gov.uk/d/contra_vision_ltd_336_p4_163kb.pdf 21

HMG’s high level advisory committee on IP 22

See Jane Lambert New Patents County Court Rules 31 Oct 2010 NIPClaw http://nipclaw.blogspot.co.uk/2010/10/new-patent-county-court-rules.html

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Even with the cap, these are quite

considerable sums and individual

inventors and small and medium

enterprises (“SME”) would do well to

consider IP insurance.23

How we can help you

First and foremost we are advocates. We

can represent you or your clients on IP

issues before any court, administrative

tribunal or arbitrator. That includes

the Patents Court, Patents County

Court and Intellectual Property list of

the Chancery Division in the Rolls

Building;

the Chancery Division and chancery

county courts in Birmingham, Bristol,

Caernarfon, Cardiff, Leeds, Liverpool,

Manchester, Mold, Newcastle upon

Tyne and Preston; and

IPO hearing officers and appointed

persons; and the

Court of Appeal and the Supreme Court.

Secondly, we are specialist advisors on

such matters as patentability of software

implemented inventions, validity of

patents and the construction of claims.

Working with our tax specialist

colleagues, we can advise on and draft

documents for licensing, joint venture

and other transaction.

Finally, we and our colleagues are often

consulted by entrepreneurs, inventors

and private equity, angel and other

investors under the public access

scheme. Such clients often need advice

from patent and trade mark attorneys,

solicitors, accountants and other

professionals and sometimes seek our

guidance. We tend to refer them to

practitioners with whom we have worked

well in the past. We can therefore be a

source of work as well suppliers of

services.

Should you wish to know more contact

John Lister or Steve Broom on 020 7404

5252.

23

See Jane Lambert “Intellectual Property Litigation: The Funding Options”10 Apr 2013 NIPClaw http://nipclaw.blogspot.co.uk/2013/04/intellectual-property-litigation.html and Jane Lambert “IP Insurance Five Years On” 23 Oct 2010 NIPC Inventors Club http://nipcinvention.blogspot.co.uk/2010/10/ip-insurance-five-years-on.html

Notes

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Appendix 1

13 May 2013

Software Patents: HTC Europe Co Ltd v Apple Inc In HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 (3 May 2013), the Court of Appeal (Lord Justices Richards, Lewison and Kitchin) ventured again into what Lord Justice Lewison described at paragraph [140] of the Court's judgment as "the minefield of the exclusion from patentability of computer programs 'as such'". The Appeal This was an appeal from the judgment of Mr Justice Floyd (as he then was) in HTC Europe Co Ltd v Apple Inc [2012] EWHC 1789 (Pat) (4 July 2012). The judge found that two of the claims of one of Apple's patents were

invalid because they related to computer programs as such and one of those claims was also invalid for obviousness. He also found that all the claims of another patent were invalid either for want of novelty or obviousness. The first of those patents, European patent number 2,098.948, related to computer devices with touch sensitive screens that are capable of responding to more than one touch at a time. The second, European patent number 1,964,022, to ways of unlocking computer devices with touch sensitive screens. After the trial Apple and HTC settled their dispute and HTC took no further part in these proceedings. However, Apple invited the Comptroller to appear on the appeal "to protect the public interest by intervening to the extent necessary to prevent invalid patents being restored to the register." Computer Programs "as such"

Art 52 (2) (c) of the European Patent Convention provides that programs for computers shall not be regarded as inventions. However, art 52 (3) adds that art 52 (2) shall "exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such." In Aerotel Ltd. v Telco Holdings Ltd and Others [2007] Bus LR 634, [2006] EWCA Civ 1371, [2007] RPC 7, [2006] Info TLR 215, [2007] BusLR 634, [2007] 1 All ER 225 the Court of Appeal propounded the following four step approach to determining whether a software implemented invention was a computer program as such:

"i) properly construe the claim; ii) identify the actual contribution; iii) ask whether it falls solely within the excluded subject matter; iv) check whether the actual or alleged contribution is actually technical in nature."

(Simon Hart, who was involved in Macrossan which has heard at the same time contributed this article "Patents: Re Macrossan's Application" 5 Apr 2006). The Court of Appeal's approach was criticized by the Technical Board of Appeal in Duns Licensing Associates LP, T 0154/04 - 3.5.01 though the Court of Appeal concluded in Symbian v Comptroller-General of Patents [2008] EWCA Civ 1066, [2009] RPC 1, [2009] Bus LR 607 that most of the decisions of the Board and the English Courts were reconcilable (see my article "Software Patents: Here we go again" 9 Oct 2009). The first of those steps is straightforward but the second and third tend to elide and the fourth acts as a check on the previous two. It follows that in practice the question whether a software implemented invention is patentable boils down to the question: "has the invention made a technical contribution to the known art?" Between paragraphs [45] and [49] Lord Justice Kitchin identified the following pointers:

"First, it is not possible to define a clear rule to determine whether or not a program is excluded, and each case must be determined on its own facts bearing in mind the guidance given by the Court of Appeal in Merrill Lynch and Gale and by the Boards of Appeal in Case T 0208/84 Vicom Systems Inc [1987] OJ EPO 14, [1987] 2 EPOR 74, Case T 06/83 IBM Corporation/Data processing network [1990] OJ EPO 5, [1990] EPOR 91 and Case T 115/85 IBM Corporation/Computer-related invention [1990] EPOR 107.

[46] Second, the fact that improvements are made to the software programmed into the computer rather than hardware forming part of the computer does not make a difference. As I have said, the analysis must be carried out as a matter of substance not form. [47] Third, the exclusions operate cumulatively. So, for example, the invention inGale related to a new way of calculating a square root of a number with the aid of a computer and Mr Gale sought to claim it as a ROM in which his program was stored. This was not permissible. The incorporation of the program in a ROM did not alter its nature: it was still a computer program (excluded matter) incorporating a mathematical method (also excluded matter). So also the invention in Macrossanrelated to a way of making company formation documents and Mr Macrossan sought

to claim it as a method using a data processing system. This was not permissible either: it was a

10

computer program (excluded matter) for carrying out a method for doing business (also excluded matter). [48] Fourth, it follows that it is helpful to ask: what does the invention contribute to the art as a matter of practical reality over and above the fact that it relates to a program for a computer? If the only contribution lies in excluded matter then it is not patentable. [49] Fifth, and conversely, it is also helpful to consider whether the invention may be regarded as solving a problem which is essentially technical, and that is so whether that problem lies inside or outside the computer. An invention which solves a technical problem within the computer will have a relevant technical effect in that it will make the computer, as a computer, an improved device, for example by increasing its speed. An invention which solves a technical problem outside the computer will also have a relevant technical effect, for example by controlling an improved technical process. In either case it will not be excluded by Art 52 as relating to a computer program as such."

At paragraph [143] of his judgment, Lord Justice Lewison regretted that because the apparently simple words of art 52 (2) and (3)

"both our courts and the Technical Boards of Appeal at the EPO have stopped even trying to understand them. However we are so far down that road that "returning were as tedious as go o'er". Instead we are now engaged on a search for a "technical contribution" or a "technical effect". Instead of arguing about what the legislation means, we argue about what the gloss means."

He concluded at [147]: "So the upshot is that we now ignore the words "computer program … as such" and instead concentrate on whether there is a technical contribution. It is, if I may say so, a singularly unhelpful test because the interaction between hardware and software in a computer is inherently "technical" in the ordinary sense of the word. If I buy a software package that malfunctions the software house will often offer me "technical support". But that is clearly not enough for the software to qualify as making a "technical contribution". In Symbian this court declined to provide a definition of the right kind of technical effect; but instead provided a recommended reading list."

From that "reading list" Lord Justice Lewison had distilled the following signposts as to what constituted a "technical effect" in AT&T Knowledge Ventures LP, [2009] EWHC 343 (Pat), [2009] Bus LR D51, [2009] FSR 19:

"i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run; iii) whether the claimed technical effect results in the computer being made to operate in a new way; iv) whether there is an increase in the speed or reliability of the computer; v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented."

In this appeal, he substituted "It would be a relevant technical effect if the program made the computer a better computer in the sense of running more efficiently and effectively as a computer."

which had been suggested by Mr Justice Mann in Gemstar-Tv Guide International Inc and Others v Virgin Media Ltd and Another [2009] EWHC 3068 (Ch), [2010] RPC 10 for his own formulation in paragraph (iv), Lord Justice

Kitchin adopted Lord Justice Lewison's revised signposts at paragraph [51] of his judgment. The Lords Justices applied that analysis to European patent number 2,098.948 did make a technical contribution to the art and that its contribution did not lie in excluded matter. Obviousness Lord Justice Kitchin referred to the Court of Appeal's previous decision in Pozzoli Spa v BDMO SA and another [2007] BusLR D117, [2007] EWCA Civ 588, [2007] FSR 37:

"(1)(a) Identify the notional 'person skilled in the art'. (b) Identify the relevant common general knowledge of that person. (2) Identify the inventive concept of the claim in question or, if that cannot readily be done, construe it. (3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed. (4) Ask whether, when viewed without any knowledge of the alleged invention as claimed: do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"

The Court considered whether the trial judge had followed that approach and found that he had. Thus, the appeal against obviousness failed in respect of both patents.

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Further Information

The computer program exclusion is one of my special interests and has been for nearly 30 years, If anyone wants to discuss this case or any of the issues please call me on +44 (0)20 7404 5252 or contact me through Facebook, Linkedin, twitter, Xing, or my contact page.

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Appendix 2

17 June 2013

Construction of Patents - Lizzanno Partitions (UK) Ltd v Interiors Manufacturing Ltd

You might think that this

would be quite different from that

but if you did you'd be wrong. The decision of Mr Justice Birss (as he now is) in Lizzanno Partitions (UK) Ltd v Interiors Manufacturing Ltd [2013] EWPCC 12 (11 April 2013) is an object lesson in claim construction. It is also a text book example of the application of the law on novelty, obviousness, insufficiency, added value and infringement which is why I am going to dissect it at some length now and perhaps use it as a case study in my "Introduction to Intellectual Property" talk on the 26 June 2013. The Issues This was a claim by Lizzanno Partitions (UK) Ltd. ("Lizzanno") for a declaration that the product identified in the first diagram did not infringe British patent number GB 2 432 617 for a gasket ("the patent") and revocation of the patent. The patentee (whom the judge referred to as"Komfort") counterclaimed for injunctive and other

relief from infringement. The claim for revocation was based on anticipation, obviousness, insufficiency and added matter

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His Honour, as he then was, had to decide whether the patent was valid and, if so, whether it had been infringed. Anticipation

As every schoolgirl knows, a patent can be granted for an invention only if it is a new (see s.1 (1) (a) of the Patents Act 1977). "New" for this purpose means that it does not form part of the "state of the art" according to s.2 (1) of the Act and s.2 (2) helpfully defines the "state of the art" as

"all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way."

Actually there is quite a bit more to s. 2 than that but we don't want to complicate the picture, do we. If it is found that someone has already made the invention for which a patent has been sought or in many cases granted them the invention is said to have been "anticipated." In deciding whether an invention has been anticipated it is necessary to consider whether the patent would have been infringed had the earlier patent been made after the patent in suit. In General Tire & Rubber Company v Firestone Tyre & Rubber Company Limited, [1972] RPC 457, the Court of Appeal said:

"If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated"

Lack of Inventive Step

The "state of the art" is also important when it comes to defining "an inventive step". S.3 (1) provides: "An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2 (2) above ..............."

This provision introduces the "person skilled in the art", No, not Katherine Jenkins though she is indeed very skilful, very arty and wears lovely dresses (see my rave about her in"Once in Preston Guild" 8 Sep 2012 IP North West). More typically the "person skilled in the art" is some old buffer in the relevant industry who doesn't have an inventive bone in his body.. In this case the person skilled in the art was someone specializing in glass partitions with experience of glass partition installations and the products used to secure glass sheets. Now it is one thing to get a patent but quite another thing to keep it, The first thing that happens when a patentee complains of patent infringement is to look for reasons why the patent may not be valid. Lack of an inventive step (obviousness) and lack of novelty (anticipation) usually come to mind. That leads to a trawl of the world's patent offices and technical literature to find something like the invention that preceded the application for the patent. It is usually conducted with considerably more zeal and resources than the examiner who granted the application in the first place. Insufficiency

In the Inventor's Bargain 21 Dec 2008 JD Supra I described the bargain that the public makes with inventors: If an inventor or other owner of an invention teaches the public how to make or use a product or process that did

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not exist before then that owner will be entitled to a monopoly of the invention for up to 20 years. The document in which the invention is described is known as "the specification" and s.14 (2) (b) requires it to contain "a description of the invention, a claim or claims and any drawing referred to in the description or any claim". S.14 (3) of the Patents Act 1977 requires the specification to disclose the invention " in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.". If the specification does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art. then the patent may be revoked under s.72 (1) (c). Failure to disclose the invention in such a manner is known as "insufficiency". Added Matter

S.14 (2) (b) is important when it comes to understanding the concept of "added matter" because s.72 (1) (d) provides that an invention may be revoked if the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent. In Bonzel v Intervention Ltd [1991] R.P.C. 553 Mr. Justice

Aldous said at page 574: "The decision as to whether there was an extension of disclosure must be made on a comparison of the two documents read through the eyes of a skilled addressee. The task of the Court is threefold: (a) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application. (b) To do the same in respect of the patent as granted. (c) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly."

The difficulty arises because the specification of the invention in a patent application is not usually the same as the specification of the invention in the granted patent. In the process in which the Intellectual Property Office decides whether an application for an invention meets the conditions for the grant of a patent known as "prosecution", the applicant or his or her patent attorney may change the wording of the specification to meet the objections of the Intellectual Property Office or some other difficulty. The applicant can claim less than he or she had originally applied for or express his or her claim in different words but he or she cannot claim more. If he or she does ask for more then, as they were for Oliver Twist, the consequences can be nasty. Maybe not as nasty as the ire of Mr. Bumble but still pretty bad. . Judgment

The judge held that the patent was valid and that it had been infringed. Isaac Lizzanmo claimed that US patent application number US20040200167 A1 by Eric Isaac and others ("Isaac") had

anticipated the patent. This was an application for a patent for an extruded connecting profile the abstract of which was as follows:

"An extruded connecting profile for two panels having peripheral edges includes a first frame element having a front side and an opposite rear side, the front side being shaped for engaging a peripheral edge of a first panel of the two panels. A second frame element is also provided having a front side and an opposite rear side the front side being shaped for engaging a peripheral edge of a second panel of the two panels. An elastic structure extending between the first and second

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frame elements is co-extruded with the first and second frame elements and is comprised of a material having a higher elasticity than the material of the first and second frame elements."

Fig 1 showed the panel when not in use:

Fig 2 when engaged between two panes of glass: :

Construction of the Patent In order to decide whether Isaac had anticipated the patent in accordance with the General Tire & Rubber test and also whether the patent had been infringed for the purposes of the claim for the declaration of non-infringement and the counterclaim, the judge had to construe the patent. S.125 (1) of the Patents Act 1977 provides that:

"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."

It is therefore necessary to construe the claims by reference to the specifications and drawings. S.125 (3) gives the following further guidance:

"The Protocol on the Interpretation of Article 69 of the European Patent Convention(which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article."

Thus, patent claims have to be interpreted in accordance with the following Protocol:

"Article 1 General principles

Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.

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Article 2 Equivalents

For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims."

Guidance on the application of s.125 (1) as interpreted in accordance with the Protocol has been provided by the House of Lords in Kirin-Amgen Inc and others v Hoechst Marion Roussel Ltd and others [2005] RPC 9, [2004] UKHL 46, [2005] 1 All ER 667, (2005) 28(7) IPD 28049, [2005] RPC 169 and the Court of Appeal in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd[2009] EWCA Civ 1062, [2010] RPC 8. "The key point" that His Honour identified at paragraph [38] of his judgment "is that construction is concerned with what a skilled person would understand the author to be using the words to mean." Applying those principles the judge construed each of the claims of the patent. His findings are to be found between paragraphs [38] and [61] of his judgment. Novelty

The judge found two differences between Isaac and the invention as construed above::

the materials from which the frame was made; and

the shape.

His reasoning appears between paragraphs [97] and [99]. These were enough to put Isaac outside any of the claims. As none of the claims would have been infringed by Isaac it followed that the invention had not been anticipated by that application and that the patented invention was thus "new". Infringement

On the other hand he found that those claims were broad enough to cover Lizzano's product. Lizzanno had argued that there were differences between its product and the patent in suit. He rejected that argument between paragraphs [66] and [78]. Obviousness In Pozzoli Spa v BDMO SA and another [2007] BusLR D117, [2007] EWCA Civ 588, [2007] FSR 37 had provided the following guidance for determining whether an invention lacked an inventive step: (1) (a) Identify the notional person skilled in the art; (b) Identify the relevant common general knowledge of that person; (2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it; (3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed; (4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

As I mentioned above, the person skilled in the art in this case was "someone specializing in glass partitions with experience of glass partition installations and the products used to secure glass sheets" rather than Katherine Jenkins. The common general knowledge of such a person included sealing partition joints with silicon and dry joints summarized in paragraphs [4] to [10]. There was also a joint for metal surfaces called Unilock MS3000 which is shown in the following photo:

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The judge held that that also formed part of the common general knowledge of persons skilled in the art and that it worked very similarly to the patent. Lizzanno argued that if was part of the common general knowledge of persons skilled in the art and that the use of a similar joint to bind panes of glass would have been obvious. Indeed, Lizzanno's expert said that he would have done just that. Judge Birss QC dealt with that point as follows at paragraph [111]::

"Sometimes when one asks the question – if it was obvious why was it not done before – the answer is because the relevant item of prior art, although part of the state of the art, was not well known to the skilled people working in the relevant field at the time. However in this case that answer cannot be given in relation to Unilock because it was part of the common general knowledge. I am not satisfied that there is a good answer to this question in this case. Glass to glass partitions with silicone joints or H joints had been in use for a good number of years before 2005. Since the Unilock gasket was part of the skilled person's common general knowledge, if the invention had been obvious over Unilock then it would have been made years beforehand. The fact that similar gaskets were well known in draught excluders and other contexts does not help. When Mr Clasby explained in answer to Ms Jamal's question that as a designer he looked at everything I am sure he was correctly and fairly explaining what he, as a creative and dare I say it inventive, designer of partitioning systems actually does. But I do not believe it is the activity of the notional, uninventive person skilled in the art. I find that claim 1 is not obvious over the Unilock gasket."

So there you have it. It is not enough for a clever chap like Lizzanno's expert to have thought of this invention. It was whether it would have been obvious to the uninventive geezer known as "the person skilled in the art". In this case, His Honour held that the use of something like the Unilock MS3000 would not have occurred to the person skilled in the art. Thus the invention was not obvious and involved an inventive step. Other Points

The judge rejected the arguments on insufficiency between paragraphs [112] and [134] and added matter between [82] and [89]. As the arguments on invalidity failed the patent was upheld. Comment

This case shows the operation of the Patents County Court at its best. The case was argued on 12 Feb 2013 and one day was enough for complex arguments on validity and infringement and cross examination of two witnesses. The judge and the two advocates are to be congratulated. As I said above, I will be using this case to introduce patent law in my talk on 26 June 213 for which there are still some tickets which you can book here, If you don't want to go to my talk you are still welcome to give me a ring on 020 7404 5252 or fill out my contact form to discuss the case or patent law generally. You can also follow me on .Facebook, Linkedin, twitter or Xing.