Patent Exclusions Case

brings tidings of a patent decision of Isle of Mann J delivered today inward Macrossan v Comptroller-General of Patents, Designs as well as Trade Marks [2006] EWHC 705 (Ch).

Neil Macrossan applied for a patent for an automated method of acquiring the documents necessary to contain a company. The Patent Office hearing officeholder described the would-be project design every bit

"The essence of the project design is that past times way of posing questions to a user inward a number of stages, plenty information is gleaned from the user's answers to make the required documents. Questions posed inward the 2nd as well as subsequent stages are determined from previous answers provided as well as the user's answers are stored inward a database structure. This procedure is repeated until the user has provided plenty information to permit the documents legally required to create the corporate entity to live on generated. H5N1 number of document templates are also stored as well as the electronic computer is configured to merge at to the lowest degree 1 of these templates amongst the user's answers to generate the required legal documents. The documents may hence live on sent inward an electronic bird to the user for the user to impress out as well as submit, mailed to the user, or submitted to the appropriate registration authorisation on behalf of the user."

The examiner rejected the application as well as the hearing officeholder concurred amongst him, finding that the application was for a estimator programme, a describe of piece of job concern method as well as a mental act. Macrossan appealed.

has uncovered prior fine art fatal to Macrossan's application - a robotic lawyer

The appeal was dismissed:

* The hearing officeholder had correctly recognised that whatever incertitude every bit to patentability had to live on resolved inward favour of the applicant as well as had applied this regulation to her decision.

* The hearing officeholder had non failed to give her reasons;

* Patent hearings are non inter partes proceedings as well as hence the sum bias rules make non apply. However, the hearing officeholder must employ principles of procedural fairness. The applicant has the right to know the points taken against him, but this does non forestall in that place from beingness internal Patent Office decisions on the number of validity. There had been no breach of procedural fairness hither as well as opposite to Macrossan’s submissions, the hearing officer’s conclusion did non advise that she had received ‘secret submissions’ from the examiner. Moreover, he had non objected at the fourth dimension of the hearing as well as fifty-fifty if he had had a right to object of fairness grounds at the time, whatever such right was straightaway exhausted;

* The hearing officeholder was non obliged to hold back at the handling of previous similar patents. The right benchmark for the validity of patents is the statutory position. While it is desirable for similar patents to live on treated inward a similar fashion, this is a outcome of their beingness treated the same way nether the law, rather than of their beingness compared amongst each other;

* The project design was excluded from patentability every bit a mental act. This deed of applying the criteria to brand it at the correctly documented conclusion was clearly a mental deed as well as if the estimator had non done the act, a human could create got done hence simply every bit well;

* The claim was non excluded from protection every bit a way of doing describe of piece of job concern since it did non create got the requisite bird of abstraction. It was a tool that could live on used every bit component division of a business, rather than a way of conducting the entire business;

* The alleged project design was a estimator programme every bit such. It was immaterial that the halt outcome would live on a physical thing i.e. a corporate document;

* The would-be project design did non brand a technical contribution. It involved a technical process, but that procedure was a estimator programme. It involved an automation, but what was automated was a mental act;

* Since the hearing officeholder had reached her decision, the constabulary had moved on. Under the ‘new approach’ to the exclusions, the right approach was to hold back at what barbarous inside the exclusions as well as discount it, as well as hence hold back at what barbarous exterior the exclusions as well as to inquire what these ‘leftovers’ contributed to the fine art as well as whether they had a technical effect. Here what was left contributed automation as well as efficiency, but what was automated as well as made to a greater extent than efficient was a mental act. All that the supposed project design contributed was excluded from patentability as well as hence could non salve the application.

reckons that this is all pretty sensible. At the halt of the day, the ‘invention’ was simply doing what a soul could create got done. He notes the similarity of approach betwixt the judge’s findings on procedural affair as well as the approach taken to such questions inward other IP rights registries.