Introduction
Business method patents (BMPs) is a contentious subject as it is recognised that the processes that are the subject matter of these patents do improve the operation of business. However, the lack of tangibility means that it is difficult for traditional patentability tests to be applied to business method patents. The crux of the problem is that section 1 (2) of the Patents Act 1977 (PA 1977) excludes certain subject matters, which does not recognise the reality of the cyber age. Business method patents have been accepted in certain instances within the United States of America and the European Union, although there remains limitations and debate over the full patentability of these methods. Canada has accepted the business method patents, which may be that these processes should have legal recognition. This paper will examine the nature of patentability under English law to show why business method patents are rejected.
The Nature of Patents
There are three elements to patentability under section 1 (1) Patent Act 1977. The invention must be: (i) new; (ii) have been developed with skill; and (iii) has a commercial application. Aldous J in Chiron Corporation v Organon Teknika Ltd (No 10) held that a patent application is “the interposition of law to secure to an inventor the benefit of his invention”. The securing of this benefit is linked to a provision of a monopoly, which means that it is paramount that a patent is only given when there is a bona fide invention. The interesting fact of this test of patentability is that it does not expressly require tangibility within section 1 (1) Patent Act 1977, which means that business method patents should be patentable. Nonetheless, tangibility is an important element of what may amount to an invention under English law, which links to the concept of property ownership. Property in English law is some kind of physical entity, which means that an invention would have to have a similar characteristic because intellectual property law is essentially dealing with property ownership. Thus, this has resulted in business methods, ideas and “mental” processes being incapable of being patentable because they are not tangible. Consequently, business method patents may never be patentable if traditional notions of property are applied.
Business Method Patents and Tangibility
The Merill Lynch patent brought to the forefront the clash between new technology and the nature of patentability. This case reinforces the traditionalist approach to property, which means that a mere thought or process that has not been synthesised into physical form cannot be treated as an invention. The approach may have been valid in the tangible era but the nature of technology has significantly changed. This change means that a process could radically change the nature of an industry, which arguably should validate business method patents in the modern era. However, the operation of the traditional definition of property and the retention of the broad exclusions in section 1 (2) Patent Act 1977 has resulted in continued rejection of business method patents in English law.
The Operation of Section 1 (2) Patent Act 1977
Section 1 (2) Patent Act 1977 provides four exclusions of patentability. These exclusions are:
“(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”.
Exclusions (b) and (d) are rational because they have the potential to be copyrighted if in an appropriate format. The same application could be linked to (a) and (c); however, there is a closer link between these processes and an invention. In fact, in the twenty first century a change in process could result in a new invention. Nonetheless, traditionalist approaches have failed to recognise the evolution of technology in the twenty first century. This is illustrated in Aldous J’s judgment in Re Wang Laboraties Inc Application, which held that:
“The fact that the scheme, rule or method is part of a computer program and is therefore converted into steps which are suitable for use by a person operating the computer does not matter… The method remains a method for performing a mental act, whether a computer is used or not”
The case reaffirmed that for a computer program to be patentable there has to be an autonomous physical element, which does not require a human controller. The physical element is becoming very difficult to understand in the twenty first century because much of everyday life operates in cyberspace, which means that tangibility is not applicable to modern technology. The European Patent Office (EPO) has expanded the patentability of processes and computer programs as long as the key elements of an invention are present. The English courts have not followed this approach even though there should be harmonsation between the European Union patent laws. Therefore, the inference is that there is a very limited approach to business method patent s in English law which is not reflective of modern trends.
Accepting Business Method Patents – An Inevitability
Modern technology has resulted in the broadening of patentability. An important case that may support business method patents is Biogen Inc v Medeve Plc. Biogen identified that techniques that are implemented into an existing invention could be treated as a new invention. Lord Hoffman identified that a new invention will be developed if this new technique means that the existing invention: (i) achieves a specific goal’; (ii) implements methods for achieving a specific goal; and (iii) provides a solution or possible solution for a specific problem with an existing invention. This development indicates that it is plausible for a new process or method to be patentable, as long as it has a physical output that fulfils one of the above grounds, in relation to an existing invention. This is confirmed in the more recent case of Dr Reddy’s Laboratory (the United Kingdom) Limted v Eli Lilly and Co Ltd which held that the chemical class disclosure and its manipulation could be patentable. Thus, the implication is that the development of technology has forced patent law to evolve, which indicates that there is a move towards the potential for business method patents (although recent case law continues to reject this).
Conclusion
The traditionalist approach within English case law illustrates that patent law is not capable of dealing with the growing intangible nature of technology. The traditional definition of technology that is focused upon the tangible is problematic, because the distinction in an existing invention from a new invention may be a method. Biogen has recognised this; however, the law does not allow a method or process to be a standalone patent. This is potentially the fundamental flaw in English patent law and may be forced to change in the future due to international trends.
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