LENOVO (SINGAPORE) PTE LTD vs COMPTROLLER GENERAL OF PATENTS
This Decision is a must-read if you are into patents for computer-implemented inventions (CII) in the UK: https://www.bailii.org/ew/cases/EWHC/Patents/2020/1706.html
But not only that.
This decision is something like a landmark decision from the perspective of a DE patent attorney that is representing applicants before the UKIPO. And in one way I perceive it as a Schweiger & Partners (my firm) vs. UKIPO decision.
Why Not Filing An Appeal Against a UKIPO Decision
We Germans were always told by our UK peers that an appeal to the Comptroller General of Patents “does not make sense”. Firstly were we told that an appeal is going to be “very expensive”, and secondly were we told: “why would the patent court overturn the comptroller`s decision”?
And it is true. There are not many appeals to the Comptroller General of Patents, at least as compared with the number of appeals to the German Patent and Trademark Office (GPTO).
Such an “appeal culture” does not seem to exist in the UK, and also not in Singapore, my other home jurisdiction.
This Cannot Be
From a German patent attorney`s perspective, the two mantras above are unbelievable. Why would one not use the tools that the principle of separation of powers provides to those who are subjects of a jurisdiction? And even one level up, the big picture is wrong: why would we believe in what seems to be only an unconscious belief? And by not going for an appeal in practice, even not for clear-cut cases, these dogmas would remain hairy monsters forever. And we patent attorneys would be like toothless dogs, barking loudly but without power to bite. That cannot be.
The first alleged point – high legal costs – did not seem right to me. Why would a country bar their population from accessing the legal system by making it financially difficult to seek a court`s help for clarifying administrative decisions? That cannot be.
And why would a court not set aside the most often wrong decision of a bureaucrat? The UK cannot be much different from Germany. German patent attorneys get special training for appeals to the German Patent And Trademark Office (GPTO), and we all spend six (6) months as auxiliary clerks with the German Federal Patents Court, being involved to a multitude of such appeal proceedings as a part of our official professional training as Patent Attorneys. That was also when my personal level of insight into the rules of German bureaucracy has been cranked up to “a bureaucrat inherently can never be right”.
And Here Comes Our Case
The current case is about whether or not the patent application GB 1603975.2 “Selecting a contactless payment card”) was to be excluded from patentability by s1(2) of the Patents Act in the ground that it relates to “a computer program and a business method as such”.
We patent attorneys who deal with CII`s hear that argument often, and I don`t want to repeat all the arguments that we bring up against this regular allegation. It most often remains an allegation as bureaucrats regularly fail to provide evidence for their point of view.
And so did the UKIPO in the present case.
Justice Birss highlighted this in para 36 of his decision:
The key question in this case is whether the invention involves a different physical interaction with the world outside the computer, as compared to what had gone before. … As a result of this automatic feature, the card clash problem experienced with contactless payment cards is solved without the user having to take any extra physical step at the point they use their contactless cards. In my judgment that difference is an effect of the invention which is neither a computer program as such nor a method of doing business as such nor a combination of the two. That difference is technical in character and, in the context of the invention as a whole, it is not just one of the normal incidents of a conventional computer system.
And that was why our client`s patent application has been allowed “to continue its passage through the office”, which is a nice way to say that what is probably to follow is a battle about inventiveness over the prior art.
Or again about “technical character” if more relevant prior art will be surfaced. But that is another problem that comes with the UK approach to CII`s, namely to first define the “contribution” of an invention before the other tests for patentability are applied.
Just as the terminal screens in contemporary cinema movies of my youth said: “See you again for another movie in the future”.
The costs in this case were the same as the costs for an appeal to the GPTO or to EPO. Not more. And the most important point is that we won. This time. Not the entire case, but we prevailed for the time being in a reasonably clear-cut case.
Thanks to UK patent litigator Aaron Wood and to our Partner Benjamin Echterhoff for having driven home this case for our client!
May our case abolish all mantras and unconscious beliefs: yes, an appeal against a UKIPO decision does make sense in practice.