Software Patents Under United Kingdom Patent Law - Case Law - Court of Appeal Judgments - Fujitsu's Application

Fujitsu's Application

Fujitsu's Application was considered by the Court of Appeal in 1997. The case in question had been refused by the UKIPO and by J Laddie on Appeal before the High Court. LJ Aldous heard the appeal before the Court of Appeal and his judgment is notable for several reasons:

- It stated that the UK courts should look to the decisions of the European Patent Office for guidance in interpreting the exclusions.

- It confirmed that a "technical contribution" is needed to make a potentially excluded thing patentable, proclaiming that this was a concept at the heart of patent law and referring to the European Patent Office's decision in T 208/84, VICOM.

- It recognised the difficulty inherent in determining what is and is not "technical", such that each case should be decided on its own facts.

- It stressed that the substance of an invention should be used to assess whether or not a thing is patentable, not the form in which it is claimed. Thus a non-patentable method cannot be patented under the guise of an apparatus.

Fujitsu's claimed invention was a new tool for modelling crystal structures on a computer. A scientist wishing to investigate what would result if he made a new material consisting of a combination of two existing compounds would enter data representing those compounds and how they should be joined into the computer. The computer then automatically generated and displayed the new structure using the data supplied. Previously, the same effect could only have been achieved by assembling plastic models by hand - a time consuming task. The claimed invention was therefore certainly new and useful, but the fact that the same task could be achieved manually in the past was the application's downfall. As claimed, the invention was nothing more than a conventional computer which automatically displayed a crystal structure shown pictorally in a form that would in the past have been produced as a model. The only advance expressed in the claims was the computer program which enabled the combined structure to be portrayed more quickly. The new tool therefore provided nothing that went beyond the normal advantages that are obtained by the use of a computer program. Thus, there was no technical contribution and the application was rejected as being a computer program as such.

It is interesting to theorise whether there would have been any way for Fujitsu to have obtained a granted patent. If the invention as claimed had recited the particular steps carried out by the computer program, and if these were different from the steps which would have been carried out manually in the past, then there is the possibility that this could have represented a technical contribution. The particular technical contribution could have been that the claimed invention would not then have been merely a conventional computer for automatically carrying out a previously manual process, but rather a computer programmed in a specific way to perform a useful task.

The question then arises as to whether that invention would have been obvious or, conversely, inventive. Unfortunately, the Fujitsu judgment says nothing on the topic of inventive step or how inventive step should be considered when assessing inventions involving computer programs. The EPO decision in VICOM also did not discuss inventive step. These omissions resulted in some major divergences between the practice of the UKIPO and the European Patent Office over the next seven years. The EPO modified the idea of a technical contribution to focus on inventive step and whether there was anything that provided a non-obvious technical solution to a technical problem (See Software patents under the European Patent Convention). The UKIPO, in the meantime, remained rooted in a regime where the question of inventive step of computer program inventions was largely ignored in favour of rejections that there was no technical contribution and therefore no invention.