The
invention was a simple means of converting text from SGML (Standard
Generalized Markup Language) to another mark-up language, such as
HTML.
Oracle, the world's largest enterprise software company, filed
for a patent in 2002 because, while such a conversion could be done
by others, a lot of human input was required.
Methods for performing mental acts and computer programs as such
are not patentable in the UK and a patent examiner decided that
Oracle's invention was one or both of these and therefore not
patentable.
So Oracle requested a hearing to argue its case. That took place
in August and Hearing Officer Stephen Probert published his
decision this month. He ruled against Oracle.
The little man test
Oracle tried to argue that its application was not about
computer programming at all, that it was only about better rules
for converting a document from one standard to another. It based
its argument on the "little man" test.
Established in another recent case, this endearingly-named test
asks whether an artefact or process is new and non-obvious merely
because there is a computer program; or would it still be new and
non-obvious even if the same decisions and commands could somehow
be taken and issued by a little man at a control panel, operating
under the same rules? If the little man can do the needful then the
computer program is merely a tool, and the invention is not about
computer programming at all.
Oracle's point was that a little man could convert SGML to HTML
by following the procedures described in its patent. Therefore,
this is not a patent for a computer program.
But the Hearing Officer had issues with the little man, deeming
him an inappropriate test for Oracle's application. Where there is
an artefact or an industrial process being operated under computer
control – such as an automatic pilot or a machine making canned
soup – the little man can help. But the whole point of Oracle's
application is a way of doing something by computer that would take
a long time manually.
Stephen Probert wrote, "a little man could never replace the
computer in this invention without defeating the main purpose(s) of
the invention." In short, little men are slower than computers.
The High Court ruling that introduced the little man was issued
in July. It involved applications from a company called CFPH LLC
for two patents for networked interactive betting systems, designed
to give users up-to-the-minute information before placing their
bets.
Stephen Probert drew on other guidance in CFPH's case, where the
judge had pointed out that the European Patent Convention of 1973
had excluded computer programs from the scope of patentability
because they would do more harm than good.
The policy behind the exclusion was that computer programs as
such "could not be foreclosed to the public under patent law." The
argument runs that to grant a patent for software would stifle the
market.
Mr Probert wrote of Oracle's application: “If computer programs
are not to be foreclosed to the public, then it is clear to me that
I cannot allow this application to proceed to grant. Not only would
the present claims (if granted) foreclose computer programs to the
public but, on my reading of the claims, there is little or nothing
else that would be foreclosed by them."
John Lambert, a barrister with Northern Intellectual Property
Chambers, was the first to report on the Oracle decision in his
blog. He speculates that the foreclosure element of Mr Probert's
ruling is weak. “This argument is attractive but it is hard to see
how this reasoning can be upheld,” he wrote. “If it is right, the
no computer program would ever be patented.”
Mr Probert also decided that Oracle's application related to a
mental act, another ground for rejecting it.
