Technical Contribution Workshop, UK Patent Office, London, 7 April 2005

by Rowan Wilson on 20 April 2005 , last updated

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Introduction

Peter Back of the UK Patent Office greeted us and explained the aims of the workshop. We were to work through an exercise set by the Patent Office. A report was to be prepared by Patent Office staff based on the results of this workshop (and the others in the series that had been held through the previous month). Lord Sainsbury, the Parliamentary Under-Secretary of State for Science and Innovation, would read this report, and it would inform his thinking on the subject of what constitutes a technical contribution in the context of software patent granting (see OSS Watch’s Software Patents briefing note for more information on why this is an important issue).

The workshop

We were soon set to work in what seemed very like exam conditions. One hour to take four definitions of technical contribution and apply them to five inventions. Twenty yes/no answers to derive which definitions allowed which inventions to be patented, in our lay-opinions. We were to assume that all the claims were novel, although in general they were well-worn and familiar concepts. We had to keep reminding ourselves that we were not to question their novelty in reaching our decisions. The case studies and the definitions are both available from the Patents Office’s website.

I had been swatting up on all this on the train, as I have only a layman’s knowledge of the issues. Many of my co-attendees seemed to be in the same position. My table consisted of myself, a prospective parliamentary candidate, an IT lawyer and four members of the software industry. Many of the attendees seemed to have also read the accounts of previous workshops that had been posted on the internet. The UKPO staff had too, and hastened to assure us that there were no undercover Patent Office staff in the workshop, as had been reported online.

The definitions we were asked to apply were

  • the current directive definition
  • the FFII definition and examples (i) and (j) from the definitions web page.

As we deliberated, our three UKPO hosts stood over us listening in. We could tell if we were saying things that piqued their interest as they would rock forward on their toes and smile slightly. This, along with the insanely tight schedule (3 minutes per definition/claim combo) lent a slight air of panic to proceedings.

Almost immediately one of our number declared the entire exercise to be pointless. Problems of definition rose up again and again. Some felt that technical meant computer-implemented, others felt that it meant associated with the techniques of the field of endeavour. The FFII definition refers to controllable forces of nature, and there was much discussion as to whether this extended to presentation of data in such a way as to influence human-mediated events. Was a traffic light controlling nature, or merely presenting information? We didn’t know, or at least couldn’t agree.

With an extra ten minutes added for the stragglers (us) the exercise finished. The results were tallied and it emerged that the current directive definition of technical contribution allowed many more claims to be patented than the FFII definition. The two hand-rolled definitions came out with (i) allowing almost anything to be patented and (j) allowing almost nothing. This according, of course, to a group of people who were mainly not lawyers. Each table gave their views on the definitions. The main observation, echoed by all, was that the current Directive definition was circular and therefore had some severe meaninglessness problems. An attendee put the view forward that there ought to be very few exclusions to what could be patented, in the interests of allowing business to flourish. The member of our table who had opted out of applying the definitions explained his conviction that the entire workshop was pointless because we had insufficient information to judge the exercises: what was meant by technical and what was meant by contribution in this context?

Final discussions centred on some of the more general issues surrounding computer-implemented inventions/software patents. We were asked if we thought the inventions we had seen described ought to be patentable. We were not sure how to make this judgement, and said so. Peter Back replied that the UKPO was only asking for this information because previous workshop audiences had been upset that the question had not been raised. If we did not want to answer, or did not know how to answer, we could skip the vote entirely. No, the consensus was that we wanted to vote, and we did so, with fairly evenly dispersed results. Finally we were asked how many of us were fundamentally opposed to any form of software patenting. As might be expected, in a self-selected group such as this, many were.

Conclusion

Some might question the validity of asking a group of mainly non-lawyers to perform these tasks. If the intention was to communicate what a brain-bending and pressurised job being a patent examiner is, then it was certainly successful.

This was just one of a series of workshops organised by the Patents Office. Their report on these workshops was published on 26th May 2005. It states: it should be noted that this is simply a straw poll and the results may simply reflect the mix between software developers and those who work in the patent profession.

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