In Rajesh Kapur v The Comptroller General of Patents, Designs and Trade Marks, a judgment issued at the end of last week, the issue of another of the exclusions from patentability under section 1(2) came to be decided. The judgment is, at the time of writing, not yet available from BAILII, but IPKat readers can download it for free via the IPKat's Google Groups file server.
[18 April update: it is now on BAILII here (thanks G)]
Mr Justice Floyd had the task of deciding whether the Patent Office had been correct in refusing Mr Kapur's applications on the grounds of being mental acts and computer programs as such. The eight similar inventions all related to document management systems, and a representative one of them was chosen for the argument, relating to a computer system for recovering deleted and overwritten files. The applicant had, in an (apparently misguided) attempt to overcome an objection relating to the computer program exclusion, drafted the claims to not explicitly state that the invention was to be carried out on a computer. In refusing the applications, the Patent Office hearing officer argued that, since the claims were not specifically directed to being implemented on a computer, the claimed method was nothing more than a mental act. Bearing in mind that the claimed invention related to a method for recycling document data in a system filestore, requiring various procedural steps including creating tables and separate filestores, Floyd J considered that the mental act exclusion was in this case being used in far too broad a way, and commented:
"In my judgment the narrow view of the [mental act] exclusion is the correct one. More specifically I think the correct view is that, provided the claim cannot be infringed by mental acts as such, its subject matter is not caught by the exclusion. It seems to me that if this were not so the scope of the exclusion would be unacceptably broad, as well as being uncertain in scope. It follows that the exclusion will not apply if there are appropriate non-mental limitations in the claim. In those circumstances it will not be possible to infringe the claim by mental acts alone, and the invention will not comprise a method for performing a mental act" (paragraph 26).
The judge considered that the inventions were simply applications of a computer's ability once programmed to manipulate and store data, and the hearing officer was therefore correct in deciding that the claims lay solely within the computer program exclusion. He did not, however, think that the hearing officer was right to rely on the mental act exclusion, and therefore ordered the Patent Office to "go on to examine them to see whether anything remains". The appeal was therefore allowed, but only to the extent that it related to the mental act exclusion.
The IPKat thinks this is a very odd decision, and not just because apparently irredeemable applications are being sent back to the Patent Office to be reconsidered. He certainly wishes Mr Kapur good luck in being able to persuade the Office that anything patentable does indeed remain. Given Mr Kapur's tenacity (he represented himself in this case, although "with great restraint and courtesy" according to the judge), the IPKat thinks it is not beyond the realms of possibility that we may be seeing a further judgment with his name on.
What makes the decision odder though is the reasoning behind overturning the Office's decision on the mental act exclusion. Applied to any of the other exclusions, this same reasoning would not seem to work at all. If a claimed invention can be infringed by an actual mental act, this seems like a good reason to consider it as being excluded. However, saying that the exclusion would not apply if appropriate "non-mental limitations" were included sounds dangerously close to the "any hardware" test that Jacob LJ derided in Aerotel/Macrossan, and not the sort of reasoning that would (normally) work for any of the other exclusions. This would not, of course, help Mr Kapur who will in any case have to argue that his inventions are something more than mere computer programs, but it does yet again illustrate how courts are forced into considering the different exclusions in different ways, even though they are all found under the same heading. Can there really be a valid overarching test to cover them all?