Summertime reading - Lord Hoffmann's Two Principles

• Today's post is not about a particular case but a collection of some quotes about the issue of "no inventive step for non-technical features" from the IPKat weblog that I find useful.
• At the end of this post, I add a brief remark about a possible connection with the Comvik approach.
• I categorize this post under summertime reading though it is spring at the time of publication.
  

Lord Hoffmann's Two Principles (I)

David Pierce, Patentable subject matter - Where are we now?, IPKat weblog, 28 January 2010

As an aside, Lord Hoffmann (who was, until recently, the most senior IP judge in the UK) has come up with two reasons that could be used to at least explain these exclusions. Exclusions 1-6 [listed below] fall within what he considers to be the 'practical application principle', that these things cannot be the subject of a patent in themselves, but this would not necessarily stop practical applications being patentable (for example, the practical application of the discovery of the electrical nature of lightning to the invention of a lightning rod).

The last exclusion falls within the 'human behaviour principle', since mental acts, playing games and doing business are all aspects of human behaviour that should not [] be patented [(presumably for practical as well as ethical reasons)], even though they may be new, useful and inventive. [...]

The exclusions, being things that are not considered to be inventions [Article 52(2) EPC] are:

1. discoveries;
2. scientific theories;
3. mathematical methods;
4. aesthetic creations;
5. programs for computers;
6. presentations of information; and
   
   
7. schemes, rules and methods for performing mental acts, playing games or doing business.

Source: https://ipkitten.blogspot.com/2010/01/patentable-subject-matter-where-are-we.html

Lord Hoffmann's Two Principles (II)

IPKat ("Tufty the Cat"), Lord Hoffmann on Patentability of Software and Business Methods, IPKat weblog, 13 November 2009

"[…] Lord Hoffmann's main point was to demonstrate that there are two over-arching principles that can be applied to the exclusions of Article 52 EPC that make some sense of the EPO 'technical character/effect' test that confuses so many people (and cats), including at least one English Court of Appeal judge and the current EPO President. These principles can be described as the practical application principle and the human behaviour principle. The former principle applies to some of the non-inventions listed in A52(2) EPC, while the latter applies to the others. If I remember right, Lord Hoffmann divided them up as follows:

Practical Application Principle: discoveries, scientific theories and mathematical methods, aesthetic creations, presentations of information, and programs for computers;

Human Behaviour Principle: schemes, rules and methods for performing mental acts, playing games or doing business.

The reasoning goes something like this: Non-inventions in the first category do not in themselves have practical application, so should not be patentable in themselves, but they might in some cases have the capability to support a patentable invention, for example in the way that a new computer program can support an invention if there is a practical application (or 'further technical effect', if you prefer). 

Non-inventions in the latter category are aspects that cover human behaviour, so should not be patentable for this reason alone, even though they may very well have practical application (such as new tactics in football or new ways of investing money). An example that was given is a new method for a pilot to use when performing take-off in an aeroplane that minimises noise.

I am not yet sure if this new way of describing the bounds of what should and should not be patentable is workable or consistent, but it certainly seemed to make sense at the time, and definitely makes a lot more sense than the confusion that is going on with the situation in the US with the Bilski case. […]" 

Source: https://ipkitten.blogspot.com/2009/11/lord-hoffman-on-patentability-of.html

Lord Hoffmann's Two Principles (III)

The original source:
Lord Hoffman, Hume Lecture 2010, The David Hume Institute 2010, ISBN 9781870482875

" Nevertheless, over time, two important principles have emerged. One [the Practical Application Principle] is that you cannot patent the discovery of new information, or a system for producing new information. The reason is that a patent must be for doing something practical. Of course, the information may enable you to invent something practical. You cannot patent a genetic code which you have discovered, but knowing the gene code may enable you to make an artificial molecule which expresses the protein for which that gene coded. You can certainly get a patent for that.

There are two possible justifications for this principle, both deeply embedded in the nature of patents. One is the nature of a patent as a monopoly. It is a right to stop people from doing something. But you can’t stop people from thinking and therefore you can’t have a monopoly of some particular piece of information. The other explanation is that the patent specification must enable the skilled person to perform the invention. So you cannot simply claim a monopoly on anything which uses the information you have discovered, like making the molecule which expresses the protein. The specification does not tell you every way in which the information may be used.   

The second principle [Human Behaviour Principle] which evolved in England was that you cannot patent methods of human behaviour. That was probably based on public policy: that one should not be able to monopolise the way people may behave. It means that you cannot get a patent for novel methods of doing business, like the idea of issuing credit cards, although you can get a patent for a new and inventive form of electronics in the card or the machine that reads it. You cannot get a patent for a new method of avoiding tax, or keeping your assets out of the hands of your creditors. These may be new practical applications of inventive discoveries about psychology, economics, law and so forth, but they are not patentable. Not at any rate in Europe. " 

Source: https://static1.squarespace.com/static/59b82ed532601e01a494df34/t/59de2fbd51a584fb1ea14361/1507733437917/HOP-86.-Intellectual-Property-Hoffmann.pdf

Note: Out of an abundance of caution, I note that Lord Hoffmann is not describing EPO case law in the cited paragraphs. There are clearly a few differences.

Connection with the Comvik Approach

• For the current Comvik-approach generally, see G1/19.
• It seems that features falling under the Human Behaviour Principle are deemed to make no technical contribution for the purposes of assessing inventive step under the Comvik approach.
• On the other hand, features falling under the Practical Application Principle may very well make a technical contribution; if that is the case, inventive step can accordingly be based on such a feature under the Comvik approach.
•