Raytheon loses patentability appeal

Recently decided by Mr Justice Kitchin at the Patents Court for England and Wales (and reported on BAILII here), Raytheon's appeal against a decision by the Comptroller General of Patents, Designs and Trade Marks (to give him his full title), refusing their patent application (GB2381614A) under section 1(2), has been unsuccessful.

The decision at the Office in February 2006 (published as BL O/047/06) had been made based on the law at the time, being a collection of recently decided High Court cases and older Court of Appeal decisions. The parties agreed in June 2006 that the appeal should not be heard until the Court of Appeal had considered the then pending Aerotel case, which then arrived at the end of October 2006.

For the appeal, the Comptroller maintained his objection that the invention related to excluded subject matter, in particular that of being a computer program as such, under section 1(2)(c), which was the basis for the Office decision. The Comptroller submitted that the appeal could also be dismissed on other grounds including a method for doing business or the presentation of information. Raytheon argued that the Comptroller was wrong in his decision, and that objections not maintained at the hearing were not open to be raised on appeal.

Kitchin J therefore had to decide whether the Comptroller was to be allowed to raise further objections, as well as whether the previous decision was correct. Objections relating to methods of doing business or presentation of information, although raised by the examiner, were not pursued during prosection of the application. Raytheon argued that the Comptroller could and should have raised all his grounds of objection at the first hearing, since they were entitled to know where they stood. In relation to this point, Kitchin J stated (at paragraphs 25-31):
"[I]f it appears to the Comptroller that he has failed to take a proper objection then I believe he has an obligation to seek to raise it on appeal consistent with his statutory duty to refuse applications which do not comply with the requirements of the Act. Similarly, the court must take into account the public interest in not allowing a defective application to proceed to grant.
I believe the statutory obligation on the Comptroller, the public interest in ensuring that defective applications do not proceed to grant, the nature of the proceedings, the nature of the new objections and the fact that Raytheon has now had ample notice of them do constitute special circumstances which justify allowing them to be taken at this stage."
He then went on to find that the application was not patentable, following the four-step test from Aerotel, and further commented (at para 34):
"In considering step iii) I would make the following preliminary observations. First, a convenient way of approaching the step is to ask whether there is any aspect of the contribution which does not fall within any of the exclusions. If there is then the invention does not relate to any excluded subject matter as such and is potentially patentable. Second, it is possible that the technical contribution does not fall wholly within any one of the exclusions but does fall wholly within two or more. [...] In such a case the contribution would still fall wholly within excluded subject matter. It would not be an invention within the meaning of Art. 52 of the EPC or s.l of the Act."
The IPKat thinks that this decision is a sensible one, and must be correct (barring an apparent slip in the paragraph above: if the contribution is technical in nature, it would presumably not be excluded). An applicant who has already had their application refused should not be allowed to get away on appeal just because a different ground for exclusion was not raised. Also, if an invention is excluded from patentability for falling within one category under section 1(2), it will still be excluded if it falls within more than one category.
Raytheon loses patentability appeal Raytheon loses patentability appeal Reviewed by David Pearce on Wednesday, May 30, 2007 Rating: 5


  1. The decision on the points of law on grounds of appeal and on multiple exclusions are sensible (though I'm not convinced by the approach of treating three synergistic contributions independently and rejecting each in turn). However the application of the 4 step test is very poor and worryingly imports the IPO's warped interpretation of it into the High Court for the first time. They at least used to pretend that they should come to the same conclusion as the EPO-now its clear they are a million miles apart.

    Like the IPO Kitchin concentrates on where the contribution comes from instead of what difference it makes to the end effect. Following this logic ALL computer implemented inventions can be rejected including those that have always been assumed to be fine and held patentable by the Courts.

    The hearing officer said
    “there is undoubtedly an advance in that the load on the processor is reduced” which surely must be a technical contribution like the substantial increase in processing speed referred to in Fujitsu. But then he says “this advance arises simply because a program has been devised which tells the processor to do less work”

    Kitchin follows along the same lines “the contribution is no more than a reflection of how the programmer has chosen to create..” and “..simply a matter of program design “.

    Well if we take an example the IPO used to give as patentable like conventional X ray equipment programmed to work in a more efficient manner the same arguments say that “the advance arises simply because a program has been devised which tells the X ray to do less work..” and is “..simply a matter of program design “

    This appears to reduce the test to – is there any new hardware or combination of hardware?

    Looking at the main figure it looks like the combination of hardware is as new as Aerotel. Maybe they should have chucked in more hadrware components in the claim or maybe just called the identification database a “special database”.

    On a side note Kitchin joins the list of English judges who refer to EPO case law without seemingly understanding them -Vicom provided “an improved computer or an improved display “ apparently.

  2. Wasn't the Aerotel 4-step test an invention of the Patent Office (see para 39 of the decision)?

  3. While the IPO invented the 4-step test, that doesn't give them the right to interpret it how they want in contradiction to the courts of appeal.

    eg: Merrill Lynch: A data processing system operating to produce a novel technical result would normally be patentable (note the importance of the result, as stressed by the anonymous poster above, not how the result was achieved).

    This stuff about an effect only arising as a result of the way the computer has been programmed is, to my mind, incorporating questions about what the contribution is into the third step of the test. If the contribution is merely just the way a computer has been programmed, then this should have been said at the third step, not incorporated into the reasoning of whether the contribution is excluded.

    This is the way the CoA applied the test in Aerotel - see around para 73 where they discuss the computer program exclusion. For that exclusion, the contribution was said to be merely the computer programming up and running to perform the desired method. Importantly, the method itself had already been said to be a business method providing no technical contribution. If the method had itself provided a technical contribution then, in light of Merrill Lynch quoted above, I think it would have been found patentable. However, once the contribution had been determined to be nothing more than a computer program, the third step was easy.

    To me, the third step is one of the most straightforward, so it is suprising that so many decisions of the IPO hinge on it and, in particular, hinge on making it as complicated as possible.

    Having said all that, I agree with the ipKat that the final decision was correct, but it was correct because the only technical idea of having a store of single images and pulling them together is an ancient, standard and mindbogglingly obvious one. As an example for the gamers out there, this was the way the first Doom games worked, with a limited selection of bitmaps that could be placed at different places on a map. This part of the invention was therefore not inventive.

    Shame there's no corresponding EP to compare it to, but I have no doubt that the EPO would have refused this application as well.


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