PATENT EXCLUSIONS CASE

The IPKat brings news of a patent decision of Mann J delivered today in Macrossan v Comptroller-General of Patents, Designs and Trade Marks [2006] EWHC 705 (Ch).

Neil Macrossan applied for a patent for an automated method of acquiring the documents necessary to incorporate a company. The Patent Office hearing officer described the would-be invention as

"The essence of the invention is that by means of posing questions to a user in a number of stages, enough information is gleaned from the user's answers to produce the required documents. Questions posed in the second and subsequent stages are determined from previous answers provided and the user's answers are stored in a database structure. This process is repeated until the user has provided enough information to allow the documents legally required to create the corporate entity to be generated. A number of document templates are also stored and the data processor is configured to merge at least one of these templates with the user's answers to generate the required legal documents. The documents may then be sent in an electronic form to the user for the user to print out and submit, mailed to the user, or submitted to the appropriate registration authority on behalf of the user."

The examiner rejected the application and the hearing officer concurred with him, finding that the application was for a computer programme, a business method and a mental act. Macrossan appealed.

The IPKat has uncovered prior art fatal to Macrossan's application - a robotic lawyer

The appeal was dismissed:

* The hearing officer had correctly recognised that any doubt as to patentability had to be resolved in favour of the applicant and had applied this principle to her decision.

* The hearing officer had not failed to give her reasons;

* Patent hearings are not inter partes proceedings and so the full bias rules do not apply. However, the hearing officer must employ principles of procedural fairness. The applicant has the right to know the points taken against him, but this does not prevent there from being internal Patent Office decisions on the issue of validity. There had been no breach of procedural fairness here and contrary to Macrossan’s submissions, the hearing officer’s decision did not suggest that she had received ‘secret submissions’ from the examiner. Moreover, he had not objected at the time of the hearing and even if he had had a right to object of fairness grounds at the time, any such right was now exhausted;

* The hearing officer was not obliged to look at the treatment of previous similar patents. The correct benchmark for the validity of patents is the statutory position. While it is desirable for like patents to be treated in a similar fashion, this is a result of their being treated the same way under the law, rather than of their being compared with each other;

* The invention was excluded from patentability as a mental act. This act of applying the criteria to arrive at the correctly documented conclusion was clearly a mental act and if the computer had not done the act, a human could have done so just as well;

* The claim was not excluded from protection as a way of doing business since it did not have the requisite level of abstraction. It was a tool that could be used as part of a business, rather than a way of conducting the entire business;

* The alleged invention was a computer programme as such. It was immaterial that the end result would be a physical thing i.e. a corporate document;

* The would-be invention did not make a technical contribution. It involved a technical process, but that process was a computer programme. It involved an automation, but what was automated was a mental act;

* Since the hearing officer had reached her decision, the law had moved on. Under the ‘new approach’ to the exclusions, the correct approach was to look at what fell within the exclusions and discount it, and then look at what fell outside the exclusions and to ask what these ‘leftovers’ contributed to the art and whether they had a technical effect. Here what was left contributed automation and efficiency, but what was automated and made more efficient was a mental act. All that the supposed invention contributed was excluded from patentability and so could not save the application.

The IPKat reckons that this is all pretty sensible. At the end of the day, the ‘invention’ was just doing what a person could have done. He notes the similarity of approach between the judge’s findings on procedural matter and the approach taken to such questions in other IP rights registries.