There are slight differences in the wording of EPC Art. 52 of the EPC and the UK provisions implementing it at s. 1 of the Patents Act 1977. It is accepted that the UK provision has the same meaning as the EPC, or at least it is intended to have the same meaning as the EPC. Therefore, in case the difference in wording leads to an erroneous interpretation, it has been said that it is best to use the EPC wording.
The court must approach the categories without bias in favour or against exclusion. All that is clear is that there is a positive intention and policy to exclude the categories concerned from being regarded as patentable inventions. One must try to make sense of them using the language of the EPC.
The current practice in dealing with excluded matter is derived from the judgment of the Court of Appeal in Aerotel / Macrossan, which set out the following structured approach in order to address whether the invention makes a technical contribution to the art:
- Step 1: Properly construe the claim.
- Step 2: Identify the actual contribution: what is the problem said to be solved, how the invention works and what its advantages are. In a nutshell, what has the inventor really added to human knowledge? Here, this step necessarily entails the questioner having some notion of the state of the art.
- Step 3: Ask whether the contribution identified in step 2 falls solely within the excluded subject matter – this is merely an expression of the “as such” qualification. A possible clarification of this approach is to add the rider that novel or inventive purely excluded matter does not count as a technical contribution. A technical effect that lies solely in excluded matter is irrelevant.
- Step 4: Check whether the actual or alleged contribution is actually technical in nature. This may not be necessary in practice because the third step will have covered it.
The Court explained that this approach was in line with the precedents, and can be applied across most cases where excluded subject matter is called into question.
Where a claim involves the use of a computer program, it does not naturally follow that the claim must be excluded. For example, as stated by Neuberger LJ in his judgment in Symbian Ltd’s Application  RPC 1 at paragraph 48:
“The mere fact that what is sought to be registered is a computer program is plainly not determinative. Given that the Application seeks to register a computer program, the issue has to be resolved by answering the question whether it reveals a “technical” contribution to the state of the Art.”
Instead, the contribution of a claim to a computer program must be assessed by reference to the process the program will cause a computer to perform, because the assessment is based on the substance of the invention.
However, there is no reference to any “technical” requirement in Article 52, and the meaning or the effect of the term has never been explained by the Board. This is compounded by the fact that the concept of a “technical” contribution is imprecise and could mean different things to different people. Indeed it has been suggested that the use of the description “technical” was a “useful servant but a dangerous master.” The stipulation of a requirement for a technical contribution can lead to a potentially dangerous exercise of asking whether an application satisfies that stipulation rather than whether it satisfies the statutory requirement itself.
Usefully, Lewison J (as he then was) considered previous decisions thought to form the “most reliable guidance” and distilled the essence of what they revealed, and set out five signposts that he considered to be helpful when considering whether a computer program makes a relevant technical contribution, as follows:
- whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
- 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;
- whether the claimed technical effect results in the computer being made to operate in a new way;
- whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer; and
- whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
These signposts are to be used as mere guidelines, but is extremely helpful in determining whether a patent is likely to embody a relevant technical contribution. Indeed, determining whether a CII provides a technical effect such that it does not fall within the exclusion often involves assessing the contribution against the above signposts.