Written by Michael Coyle on 27 February 2007« Return to Reading Room
(1) properly construe the claim
(2) identify the actual contribution;
(3) ask whether it falls solely within the excluded subject matter;
(4) check whether the actual or alleged contribution is actually technical in nature".
A structured approach needs to be workable across the whole field of Section 1(2) of the test.
1. Construction. You first have to decide what the monopoly is before going on the question of whether it is excluded. Any test must involve this first step.
2. Identify the contribution - is said to be more problematical. How do you assess the contribution? It is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended.
3. Is the contribution solely of excluded matter? – is merely an expression of the "as such" qualification of Art.52(3). Ask whether the contribution thus identified consists of excluded subject matter as such? We think either formulation will do – they mean the same thing.
4. Check whether the contribution is "technical" – may not be necessary because the third step should have covered that.
The 4 stage approach is a re-formulation of the approach adopted in Fujitsu: it asks the same questions but in a different order. Fujitsu asks first whether there is a technical contribution (which involves two questions: what is the contribution? is it technical?) and then added the rider that a contribution which consists solely of excluded matter will not count as a technical contribution.
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