CFPH LLC, Patent Applications by

Patentability must be assessed under the European Patent Convention’s purposive scheme. The exclusions in Article 52 are not a single logical class and may reflect different policy choices. A claimed advance must be identified and then assessed for novelty and inventive step under the description of an invention, rather than by treating excluded matter as a source of patentability.

A business method cannot supply the required novelty or inventive step merely because it is implemented by a computer. Commercial context may nevertheless be relevant to obviousness. A computer program is not necessarily the invention merely because it operates an artefact or process; the question is whether the artefact or process would remain new and non-obvious if the same decisions could be made by a person at a control panel.

CFPH LLC appealed against the decision of a Deputy Director acting for the Comptroller-General, dated 14 December 2004, rejecting two patent applications concerning networked interactive wagering. The applications addressed real-time credit filtering, transmission delays, data feeds and synchronisation.

The appeal raised the proper approach to excluded subject-matter under the Patents Act 1977 and Article 52 of the European Patent Convention, including whether the UK Patent Office should use the European Patent Office’s then-current approach rather than the domestic “technical contribution” approach. The central issue was whether the claimed advances were patentable technology or merely business methods implemented using computer systems.

1. Appeal dismissed. The Deputy Judge upheld the hearing officer’s rejection of both applications.
2. The exclusions in Article 52 of the European Patent Convention are not a logical genus. They reflect differing policy considerations, and reasoning applicable to one exclusion must not automatically be transferred to another. The Convention requires a purposive interpretation, rather than the application of traditional domestic canons alone. The UK legislation must be read consistently with the Convention through section 130(7) of the Patents Act 1977.
3. The proper analysis is first to identify the advance in the art said to be new, non-obvious and industrially applicable. The court must then ask whether that advance satisfies those requirements under the description of an invention, rather than merely under the description of excluded matter. A new and non-obvious business method cannot itself supply the necessary patentability.
4. The European Patent Office’s “technical features” approach and the UK Patent Office’s “technical contribution” approach were different in form. The EPO had persuasive, not prescriptive, authority. The former domestic approach was not a complete answer because it treated the question of technicality as ending the inquiry before novelty and inventive step had been assessed.
5. Commercial circumstances may be relevant background when assessing obviousness, because technical innovation does not occur in a vacuum. But a business solution to a technical limitation remains excluded where the advance is only a method of doing business.
6. The computer-program exclusion does not prevent every computer-controlled artefact or industrial process from being patentable. The relevant question is whether the claimed artefact or process would remain new and non-obvious if the same decisions and commands could be made by a person operating a control panel. If so, the computer program is merely a tool.
7. The divisional application merely filtered available wagers according to the customer’s credit. It altered the business scheme to reduce bandwidth requirements, rather than solving the technical problem by technical means. The parent application likewise claimed corroboration and synchronisation of market data, with possible amendment of prices or refusal to transact. Those advances were business methods and nothing else, even allowing for the description when construing the claim.
8. The court noted that the reasoning raised issues of public importance and indicated that permission to appeal might be appropriate. Costs and the form of order were left for submissions.

The appeal was from the decision of Mr H Jones, Deputy Director acting for the Comptroller-General, dated 14 December 2004. The High Court (Patents Court) dismissed the appeal and upheld the rejection of both applications.