[Patents] Technical effect

[Steve Probert steve.probert@patent.gov.uk]

>Every program from Hello World onwards produces a technical effect
>when run on a computer.
>Or could you give the UK Patent Office's definition of techincal effect?

The answer was given by the European Patent Office Appeal Board in IBM/ 
Homophone checker T65/86 1990 EPOR 181.  In this case, the Board rejected an 
application that checked whether homophones (eg there and their) had been 
correctly used in a text because it was essentially an intellectual rather 
than a technical matter and said : 

[Quote] Since the only conceivable use for a computer program is the running 
of it on a computer, the exclusion from patentability of programs for 
computers would be effectively undermined if it could be circumvented by 
including in the claim a reference to conventional hardware features, such as 
a processor, memory, keyboard and display, which, in practice, are 
indispensable if the program is to be used at all. [Unquote]

Thus because putting a program in a computer is the only conceivable thing 
that you can do with a program, it does not qualify as a patentable practical 
application.
A similar conclusion was reached in the UK in a number of applications by 
Sharp.  Reviewing the EPO decisions, the Office found:

[Quote] .. that in the Board's opinion the technical content of a claim for 
an invention based upon a novel program cannot be enhanced merely by 
expressing the steps of an underlying method or algorithm in terms of 
functionally defined means of the type that would be found in a conventional 
general purpose computer.  In other words, if an invention is argued to be 
patentable because it achieves a technical effect, then that effect must be 
over and above any technical effect present as a consequence of the use of 
functionally defined means of the type that are to be found in a conventional 
computer. [Unquote]

The EPO Appeal board reinforced this approach in the two IBM cases when they 
referred to the concept of a further technical effect.

>Do you mean to say that Amazon's one-click patent would not have been
>granted by the UK Patent Office?

It would be absolutely wrong for me to speculate as to the fate of a patent 
application that we have not received in this Office, and which might yet be 
granted by the EPO (having effect in the UK).

Steve Probert
                                                                              
                                                                              
                                                                              
                                                                              
                                                                              
                                                                              
                                                                              
                                                                              
                                                                              
                                                                              
                                                                              
                                                                              
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