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Thursday, 15 March 2007

Cappellini's & Bloomberg's Applications: untethered from the real world

The Honourable Mr Justice Pumfrey has recently delivered a judgment at the Patents Court (available here from BAILII) which is the first regarding patentability under section 1(2) since the Court of Appeal decided the cases of Aerotel/Macrossan (of which much has already been said on this blog, for example here, here and here).

Both Mr Cappellini's and Bloomberg's applications* had been refused after respective hearings at the Patent Office in June last year (Cappellini's here, Bloomberg's here), from which they both appealed separately to the Patents Court.

Perhaps taking a lead from Jacob LJ's approach of killing two birds with one stone in Aerotel/Macrossan, Pumfrey J decided that, since the decisions raised similar questions, it would be convenient to deliver a single judgment in respect of the legal issues, dealing with the facts relating to each case after considering the law.

Pumfrey J put his own gloss on the now well-known four step test, expanding on the fourth step in particular by referring to his previous judgment in Shopalotto's Application,

"where I suggested that it is plain that not all "technical effects" are relevant, and, in particular, that where computer programs are under consideration, the fact that a computer with an ex hypothesi new program will be a new machine and so a technical effect. I suggested that the technical effect to be identified had to be a technical effect over and above that to be expected from the mere loading of a program into a computer, and I do not understand the Court of Appeal, who considered this judgment, to have disapproved of that statement" (para 5)
He also chose to mention his previous musings from Halliburton on the subject of whether an excluded claim could be rescued by "tethering" it to a real article, stating:

"I would respectfully suggest that an algorithm capable of being performed by a human being mentally, and complete (so far as the claim is concerned) when the algorithm terminates, is, as a matter of literal meaning, a scheme … for performing a mental act. If the physical article resulting from this design process becomes a feature of the claim, it cannot, in my judgment, be objectionable. But it is objectionable, in my view, unless "tethered" to that result. I do not, of course, say that every result must be a physical article before the claim is allowable. But if I revert for a moment to the four-stage test, there is no contribution lying outside excluded matter until the claim also covers the physical result of performing the claimed algorithm" (para 8).
Bloomberg's contribution was found to lie in the idea of appropriately treating data to match the requirements of a particular end user, and was seen to be no more than an advance in a computer program. The Hearing Officer's decision under the pre-Aerotel test (under that proposed by Peter Prescott QC in CFPH's Application) was confirmed as valid under the new approach. On the fourth step, Pumfrey J found there to be no technical effect in the contribution, and rejected arguments about reducing "network burden" because there was nothing in the claim that would provide such a limitation.

Mr Cappellini's application, which was described as being "a remarkable piece of work" (consisting of 341 pages in total), was also considered to be claiming an excluded invention. In relation to this, Pumfrey J had some interesting words on the subject in general:

"I think it is important to remember that questions of patentable subject matter are essentially questions relating to the form of claims. It is possible, on the basis of a single disclosure, to draft claims which are supported by the descriptive matter, but which either do or do not relate to excluded subject matter. Like the objections to width of claim (particularly novelty and obviousness) I think objections under Article 52 are primarily objections to width of claim, although it must be remembered that it may be impossible to draft a claim to patentable subject matter that is properly supported by the disclosure. Here, I think it is perfectly plain that claim 1, which is, as Mr Cappellini says, the broadest and most abstract claim, does not relate to patentable subject matter". (para 17)
He further described the invention as being "pure maniputation of data without the production of any physical or real-world effect". No physical effect that was not in essence a method of doing business could be found in any of the dependent claims.

While the Aerotel/Macrossan judgment takes precedence, Pumfrey J seems to have offered the prospective patentee, in line with his decision in Halliburton, a possible way of rescuing a non-patentable invention by "tethering" the claimed invention to a real-world effect. As in Halliburton, where a design method for a drill bit (a mental act) could have been made patentable (barring other failures) by adding the step of making the drill bit in question, otherwise excluded inventions could be "made" patentable by narrowing the claimed invention to one encompassing only a physical or real world effect.

*note the typographical error in the judgment; Bloomberg's application should be GB2395041, not GB2395941 as stated.

4 comments:

Gerontius said...

It's interesting that Pumfrey considered it essential to consider the fourth step of the Aerotel test even when both applications failed the third step (cf recent UKPO decision).

Shame he didn't explain why he thought this: wanting to give the applicants a full and proper hearing or just because he was unsure of his application of the new test?

David said...

Personally, I think it was a fudge to avoid any possible conflict with the Court of Appeal decision that suggested the fourth step may be redundant. In this case it didn't matter whether the fourth step was considered or not, since the applications failed it. What would be more interesting is if the applications had been sufficiently tethered to provide Pumfrey J with enough of a real world application to allow there to be a technical effect, even though any contrubution was still solely within s1(2). I think there would then have been pressure for the Patent Office to reconsider its approach.

Anonymous said...

The fourth step had to be considered in case the issue were to go to appeal, no? The fourth step is indeed the check digit: if it cannot be dismissed, then something has gone wrong. One has to go back to the start of the analysis, and find out where one went wrong, in working through the first three steps.

David said...

That is a novel way of looking at it, but is not consistent with the way the Patent Office have applied the fourth step. Jacob LJ specifically said that the fourth step was there to ensure consistency with Merrill Lynch. However, the only way it can be used is to reject an application, and not to find a "technical effect" where the invention would be otherwise excluded under step 3. This is therefore clearly not consistent with Merrill Lynch, and is also not consistent, I would argue, with Pumfrey J's "tethering" arguments, which could easily result in an invention that would fail the third step being nevertheless allowed by the addition of an extra step merely to apply the invention to the physical world.

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