Aerotel Ltd v Telco Holdings Ltd; Macrossan's Patent Application (No.0314464.9)
| Jurisdiction | England & Wales |
| Judge | MR JUSTICE MANN,Mr Justice Mann,Mr. Justice Lewison |
| Judgment Date | 03 May 2006 |
| Neutral Citation | [2006] EWHC 997 (Pat),[2006] EWHC 705 (Pat) |
| Court | Chancery Division (Patents Court) |
| Date | 03 May 2006 |
| Docket Number | Case No: CH 2005 APP 0248,Case No: HC06 C00360 |
[2006] EWHC 705 (Ch)
IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Justice Mann
Case No: CH 2005 APP 0248
In The Matter Of The Patents Act 1977 And In The Matter Of:
The Appellant Appeared In Person.
MR C. BIRSS (instructed by the Treasury Solicitor) appeared for the Respondent.The matter was considered on paper pursuant to an order of the Hon. Mr. Justice Lewison.
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Introduction
This is an appeal under section 97 of the Patents Act 1977 from a decision of Mrs S E Chalmers, Deputy Director acting for the Comptroller, given on 22 nd March 2005 ("the Decision") in which she refused an application for a patent made by Mr Neal Macrossan on the ground that the invention was excluded by section 1(2)(c) of the Act. Mr Macrossan resides in Australia, and on 27 th May 2005 Lewison J ordered that this appeal be dealt with on paper. Each party accordingly made written submissions, and I have considered them (and other material submitted by Mr Macrossan) in giving this judgment.
The patent application
The application claims a patent for an automated method of acquiring the documents necessary to incorporate a company. It involves a user sitting at a computer and communicating with a remote server, answering questions. Thereafter, in the words of the Decision:
"The essence of the invention is that by means of posing questions to a user in a number of stages, enough information is gleaned from the user's answers to produce the required documents. Questions posed in the second and subsequent stages are determined from previous answers provided and the user's answers are stored in a database structure. This process is repeated until the user has provided enough information to allow the documents legally required to create the corporate entity to be generated. A number of document templates are also stored and the data processor is configured to merge at least one of these templates with the user's answers to generate the required legal documents. The documents may then be sent in an electronic form to the user for the user to print out and submit, mailed to the user, or submitted to the appropriate registration authority on behalf of the user."
Claim 1 of the proposed patent, on which attention was focused at the hearing before Mrs Chalmers, reads as follows:
"A method for producing documents for use in the formation of a corporate entity using a data processing system, the system comprising a corporate entity creation service provider data processing apparatus including a data processor and data storage means associated with the processor; remote client data processing apparatus; and interactive communication means in communication with the data processor and the client data processing apparatus; wherein the system assists in the formation of a corporate entity in at least one answering session in which the interactive communication means is configured to allow the data processor, configured in accordance with an application program running on the data processor, to communicate sets of one or more questions to the client data processing apparatus for presentation to a user attempting to form a corporate entity, and allows the data processor to receive from the client data processing apparatus the user's answers to the questions and to store the answers in the data storage means; the data processor, configured in accordance with the application program and using the interactive communication means, is arranged to successively select and communicate a further set of one or more questions to the client data processing apparatus for presentation to the user, to receive the user's answers thereto and to store the answers in the data storage means, and to repeat said selection and communication of further sets of one or more questions until the data processor, configured in accordance with the application program has received and stored enough answers to allow the data processor to determine the documents that are legally required for the formation of the corporate entity; wherein the selection of at least some of said further sets of questions by the data processor is based on the received user's answers to one or more previous questions; wherein the data processor, configured in accordance with the application program, determines the documents that are legally required for the formation of the corporate entity and generates said legally required document in an electronic form using at least some of the user's answers that have been stored in the data storage means and wherein the data storage means includes a database structure having a plurality of user answer fields in which at least a selected one of the user's answers are stored; and wherein a store of document templates is accessible by the data processor, and the data processor is configured by the application program to merge at least one selected document template corresponding to said legally required documents, with at least a subset of the stored user's answers to generate said legally required documents."
The UK examiner issued a report in which he reported that the application was excluded from patentability under section 1(2)(c) of the Act because the claims related to a method of doing business and a program for a computer. He also raised novelty and lack of inventive step objections. Counter-arguments failed to satisfy the examiner and a hearing took place to deal with the excluded matter points raised by the examiner, and that took place before Mrs Chalmers. The novelty and lack of inventive step points were apparently resolved in some way and did not figure at the hearing or in the Decision. They therefore do not concern me (whatever they are). Mrs Chalmers then made the Decision.
The Decision
In the Decision Mrs Chalmers set out the background, identified the relevant statutory provision (section 1(2)) and then considered a proper approach to interpretation. Having done that she concluded first that the invention replicated a mental process and was therefore within the "mental act" exclusion, that it was a method for doing business and that it was a program for a computer, all within section 1(2). Then she applied the technical contribution test in order to determine whether the invention amounted to any of those things "as such", and found that it did not provide the necessary technical contribution. She therefore refused the application for registration. I shall need to set out some of her reasoning in due course when considering the appeal.
The appeal
Mr Macrossan challenges all aspects of Mrs Chalmers' reasoning, and also mounts procedural and evidential challenges. He says she did not give effect to the proper principles relating to onus, failed to apply the proper construction technique to section 1(2), failed to apply section 1(2) properly, failed to take into account previous patents, failed to give reasons and demonstrated apparent bias. I will take each of these matters in turn, though not quite in that order.
The onus
Mr Macrossan's point here was that the hearing officer did not apply the correct position as to the resolution of doubt in a hearing of the nature before her. This, he said, has its roots in a misconception of the Patent Office that it was justified in having a "tough" approach to patent applications for software and allowing only those with a "high presumption of validity". The quoted words come from a Patent Office web publication. The correct approach was to resolve doubts in favour of validity, and this Mrs Chalmers did not do, as can be seen (said Mr Macrossan) from the terms of the Decision.
In support of his application that the onus was on the person seeking to apply the exclusions in section 1(2), and that the benefit of the doubt should be given to the applicant, Mr Macrossan relied on what Laddie J said in Re Fujitsu's Application [1996] RPC 511 at 533:
"In coming to that conclusion [viz a conclusion against validity] I have borne in mind that, prima facie, a novel technical development should be patentable and that section 1(2) contains a list of exceptions to such patentability. Therefore the onus lies on the person contesting patentability to prove that the alleged invention falls foul of the statutory exclusions. Furthermore, at the patent office stage, the benefit of the doubt should be given to the applicant. Refusal of the grant on the basis of a faulty appreciation of what is involved cannot thereafter be remedied."
He also relied on Stafford-Miller Ltd's Applications [1984] FSR 258 at 261. That was another appeal from a rejection by the Patent Office, and Whitford J allowed the appeal. The question was whether or not the application fell within the "medical treatment" exclusion. At the end of his judgment he said:
"In my view, however, the case lies on the absolute frontier in so far as this field of the law is concerned … However, a line has to be drawn somewhere and I am not sufficiently satisfied that these claims fall on the wrong side of the line as to justify saying at this stage in
their life that these patents are incapable of providing a good basis for a sound claim."
Mr Birss, in his written submissions for the Comptroller, points out that Whitford J was not addressing a question of principle in what he said. I agree with that, but his statement nonetheless seems to reflect a principle or principles which are consistent with what Laddie J said in Fuji...
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