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The long awaited decision from the UK Court of Appeal on the question of patentability of software, business methods and mental acts was published on 27 October 2006.
In this brief note, we consider whether the decision will materially
effect how patent applications should now be prepared and prosecuted.
In finding that the third test step was not met, the judge commented (emphasis added):
“Mr Macrossan does not suggest he has invented any new kind of hardware.
What he has thought of is an interactive system which will do the
job which otherwise would have been done by a solicitor or company
formation agent. Questions are asked, the answers incorporated in the
draft, and depending on some particular answers, further questions are
asked and the answers incorporated. That is his contribution.
...Mr Macrossan’s method is for the very business itself, the
business of advising upon and creating appropriate company formation
documents.”
Comment
The Court of Appeal has attempted to provide a single four stage test
to bring together the various diverging decisions of the EPO and UK
courts. As always, the Court attempted to look at the substance of the
invention claimed.
It is very telling to note, though, that the Aerotel patent was
successful on the basis that the judge found the system as a whole to
be new, not merely because it was used for the business of selling
‘phone calls. It is equally telling to note that the system could be
implemented using conventional computers. The implication is that the
invention was deemed patentable because it could also be implemented by
separate hardware units as shown in the diagram above.
In contrast, the judge found that the Macrossan invention related only
to a general purpose computer running software carrying out business
steps.
Whilst the Court attempts to look at the substance of the invention,
our view remains that much depends upon the form of how a case is
presented. If the inventive concept can be presented as a “system” with
some communication between the units in the “system”, then there is a
better chance that the concept will be held patentable than if the
concept is only described in terms of software operating on a single
general purpose computer. The separate units could, of course, simply
be different functional processes and could even be implemented on
conventional computers as noted by the judge.
We continue to recommend including descriptions of inventions with
diagrams showing separate functional units in patent applications and
argument with the patent office even though, in reality, most computer
implemented inventions could be implemented either as a program on a
“conventional computer” or on new dedicated hardware units. Such an
approach may appear trivial, but it could make all the difference in
obtaining and defending a patent.
For further information contact
Ian Loveless or Patrick Lloyd
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