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TRANSMISSION OF INFORMATION IN EUROPE - PATENTABLE SUBJECT MATTER?

By Paul Cole, Lucas & Co., UK

The UK counterpart of In re Ngai is Bayer’s (Meyer’s) Application [1984] R.P.C. 11. In that case a claim to a package containing a known drug together with instructions for a new use were not allowed because the inventive step set out in the claims resided in the information given in the instructions, which was mere presentation of information and accordingly not an invention under Section 1(2)(d) of the UK Patents Act, 1977. That decision was followed closely in time by the EPO Enlarged Appeal Board decision in G 0005/83 EISAI/Second Medical Indication which approved Swiss form use claims, and which has since been followed by the UK courts, see John Wyeth and Schering’s Application [1985] R.P.C. 545. After that time it was no longer necessary to pursue claims to a substance plus instructions for use.

Sir Isaac Newton is reputed to have lost some £20,000 in the South Sea Bubble which was a financial crisis of 1720 and said: “I can calculate the movement of stars, but not the madness of men.” One of the infamous companies launched in that year was ‘for carrying out an undertaking of great advantage, but nobody to know what it is.” The examples put forward by the Supreme Court in Bilski approach that level: a process for maximising wealth by buying low and selling high, a method of resisting a corporate takeover and a method of avoiding tax.

When asked about the patentability of a method of teaching antitrust law that keeps 80% of students awake, Mr. Michael Jakes for the petitioners averred that there have been a number of patents for teaching methods, and that such a method is indeed patentable if defined as a process. Justice Breyer responded: “Now, suppose I reject that view, hypothetically, and suppose I were to take the view that this is way too far, that that is not the purpose of the statute… Have you any suggestion for me?” Justice Sotomayor asked: “How about if we say something as simple as patent law doesn’t cover business matters …” Malcolm Stewart on behalf of the respondent found himself in difficulty in even defending State Street in the face of observations e.g. from Mr Justice Stevens: “I don’t understand why that isn’t just the application of a process, which is not itself patentable subject matter, to a particular machine that can use [that] process.”

As is well known, the EPC contains a prohibition on the patenting of business methods. The EPO Appeal Board has held in T 0931/95 that a computer programmed to carry out a business method is not caught by the prohibition, but that was a Pyrrhic victory because it went on to hold that claimed features of a non-technical nature should not be taken into account when evaluating inventive step, and the application was refused on that ground. It remains almost impossible in Europe to obtain grant of patents for inventions where novelty is confined to matters of business administration. It would appear that the position in the US may move at least partway towards that in Europe.

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