The IPKat was puzzled and intrigued by a recent decision from the UK IPO (O/021/10). The decision relates to UK patent application GB0716959.2 (published as GB2453318), filed in the names of Marc and Idan Zuta, who together run an Israeli company known as Patent4U Limited. The company claims to be able to "personally assist and participate in the various aspects to promoting your business. From defining your invention, R&D to participating in business meetings and asisting [sic] in raising investments", which all sounds very helpful. Part of Patent4U's services involve something they call 'Patentics', a system that apparently applies a "scientific basis and methodology" to the process of applying for patents. Patent4U appear to have viewed this process as being sufficiently important to justify an attempt at patenting it, at least in the UK and the US.
(right: part of the Patentics system)
Part of the problem with trying to get a patent in the UK is to claim an invention that passes the requirements of patentability, including passing the test of what you claim not being excluded under section 1(2). When the application was filed, this meant passing the now well-known four step Aerotel/Macrossan test. One of the independent claims of the application was aimed at exactly this problem, and claimed the following:
"45. A method for communicating inventions and drafting a patent application addressing the UK IPO requirements, comprising:
a. The invention is disclosed in dialog between inventor and agent, using communications over the internet;
b. Prepare a description of the invention using a mathematical equation with Standard terms;
c. search the prior art, convert possibly relevant prior art to mathematical equations, and translate the terms therein are into Standard terms;
d. compare the invention with prior art using a computer and software which can read and process the mathematical formulas for the above inventions, detecting differences from each of the prior art references;
e. If the actual contribution versus one or more of the prior art is not significant, repeat steps (a)-(d) to re-define or narrow the scope of the invention so as to address the identified most relevant prior art;
f. The above steps (a)-(e) are repeated until an invention crystallizes which convincingly differs from the prior art in some precisely defined aspects, then continue; or no such invention is found, then Exit;
g. the results of the computer comparison of the invention with prior art in (d) above are reviewed to check whether the differences from prior art fall solely within the excluded subject matter;
h. The above steps are repeated, the results of the computer comparison of the invention with prior art in (d) above are reviewed to check whether at least one of the differences from prior art is technical in nature;
i. Take Corrective steps if possible and repeat steps (a)-(h), else stop the procedure, Exit."Given that the applicants had apparently found such a sure-fire way of defining an invention in such a way that it would pass the Aerotel/Macrossan test, the IPKat was somewhat surprised to see that the claimed invention did not itself pass the same test. The hearing officer in this case stated:
"Claim 45 is essentially about trying to ensure that a patent claim describes an invention that defines a contribution over the prior art, and that that contribution is one which is not solely within excluded matter. The method relies upon describing the invention in a particular form which in turn allows the analysis of the contribution to be performed by a suitably programmed but otherwise conventional computer, but the underlying steps in the method are those followed as a matter of course during the processing of any patent application on the borderline of patentability. In short, the contribution is a means of automating part of the patenting process with the end result being, hopefully, a description of an invention which is patentable. This contribution falls solely within the field of computer programming." (paragraph 18)Unfortunately (and rather strangely), the applicants refused to even acknowledge that the hearing officer had the authority to decide the fate of either application, so refused to attend the hearing. They did, however, argue on paper that the invention was technical because it related to the technical details of an invention, and made a technical contribution because filing a patent application was an essential step in manufacturing a product. Unsurprisingly, this line of argument did not work, and the hearing officer refused the application.
The IPKat wonders whether this decision is a particularly good advertisement for Patent4U's services.