Decision Nº O/112/18 from Intellectual Property Office - (Patent decisions), 20 February 2018
| Judge | Mr H Jones |
| Court | Intellectual Property Office (United Kingdom) |
| Date | 20 February 2018 |
| Administrative Decision Number | O/112/18 |
| Patent Number | GB1600694.2, GB1600696.7, GB1600702.3, GB1600703.1, GB1600704.9, GB1600705.6, GB1600706.4 |
| Parties | Landmark Graphics Corporation |
BL O/112/18
20th February 2018
APPLICANT
Landmark Graphics Corporation
ISSUE
Whether patent applications GB1600694.2,
GB1600696.7, GB1600703.1,
GB1600704.9, GB1600705.6, GB1600706.4
and GB1600702.3 comply with section 1(2)
HEARING OFFICER
H Jones
DECISION
Introduction
1 This decision relates to a first group of seven applications out of a total of sixteen
from the same applicant. All seven applications relate in general to computer-
implemented methods of working with models of subterranean geology and for
modifying or improving various aspects of the visual representation of subsurface
formations. The sixteen applications have been examined by different examiners and
all have concluded that the subject-matter of each of the applications is excluded
from patentability under section 1(2) of the Patents Act 1977 (“the Act”), as either a
computer program in all cases and also as a mathematical method for some. For the
seven applications considered in this decision, the applications were examined by
the same examiner. Despite several rounds of correspondence, in each case the
applicant and the examiner have been unable to resolve matters and the issues
came before me on 8 and 9 January 2018.
2 At the hearing the applicant was represented by Mr Alistair Russell and Dr Mark
Jones of Hoffmann Eitle who argued that the Office approach in dealing with
methods relating to geophysical modelling in these particular applications and similar
applications refused previously is inconsistent with guidance from the Courts. I am
extremely grateful to Mr Russell and Dr Jones for the skeleton arguments provided
before the hearing and for their structured presentations on all sixteen of the
applications over the course of the two days.
3 I shall deal first with the general approach to assessing patentability under section
1(2) before turning to the seven individual applications.
The Law
4 Section 1(2) of the Act lists certain categories of subject-matter which are not
considered to be inventions. These categories of subject-matter are conventionally
known as excluded subject-matter:
1(2). It is hereby declared that the following (among other things) are not inventions for
the purposes of this Act, that is to say, anything which consists of –
(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation
whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing
business, or a program for a computer;
(d) the presentation of information;
but the foregoing provision shall prevent anything from being treated as an invention for
the purposes of this Act only to the extent that a patent or application for a patent relates
to that thing as such.
5 The Court of Appeal in Symbian1 stated that the question of whether a computer-
implemented invention is patentable has to be resolved by answering the question
whether it reveals a technical contribution to the state of the art. It proceeded to
answer the question with the aid of the four-step test set out in its earlier judgment in
Aerotel2, the fourth step of this test being to check whether the contribution is
technical in nature. In paragraph 46 of Aerotel it is stated that applying this fourth
step may not be necessary because the third step should have covered the question.
This is because a contribution which consists solely of excluded matter will not count
as being a "technical contribution" and thus will not, as the fourth step puts it, be
"technical in nature".
6 Mr Russell and Dr Jones sought to persuade me how each of the seven applications
before me provide the necessary technical contribution. In discussing the general
approach to assessing patentability, Mr Russell and Dr Jones in essence had two
points to make. The first concerned the appropriate standard of proof that an
applicant should meet and the second point concerned the proper application of tests
for patentability and especially the consideration of technical contribution. I shall deal
with each point in turn.
Standard of proof
7 According to Mr Russell and Dr Jones, once an examiner has raised an objection to
an application and the applicant has responded with argument and/or amendment
then the examiner should give the applicant the benefit of the doubt and consider the
objection overcome, unless there can be no doubt on the matter. While this is offered
as a general proposition, in this decision I am particularly considering objections
raised under section 1(2). In this regard Mr Russell and Dr Jones took me to a
passage in Macrossan v Comptroller-General of Patents (“Macrossan”)3 (at
paragraphs 7 and 8) in which Fujitsu Ltd's Application4 is quoted by the Appellant
before Mann J; the passage from Fujitsu is as follows (paragraph 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 invention falls foul of the statutory exclusions.
Furthermore, at the patent office stage, 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."
1 Symbian Ltd. v Comptroller-General of Patents [2008] EWCA Civ 1066
2 Aerotel Ltd v Telco Holdings Ltd and Macrossan’s Application [2006] EWCA Civ 1371
3 Macrossan v Comptroller-General of Patents [2006] EWHC 705 (Ch)
4 Fujitsu Ltd's Application [1996] RPC 511
8 Mann J goes on to say at paragraph 9 of Macrossan:
"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 Fujitsu. That principle seems to involve the onus being on the person
alleging that the alleged invention is within the exclusion. The reference to the benefit of
the doubt is probably intended to signify that if there is substantial doubt then the burden
has not been fulfilled. I do not consider that it means that if there is any doubt (legal or
factual) then the application should succeed. It is not intended to import something like
the criminal burden of proof into the proceedings. The tribunal still has to consider
whether the exception applies, and it can come to the conclusion that it does without
having to find that there is no doubt at all about it."
9 The current practice of the Office in this regard is set out in paragraph 1.10 of the
Manual of Patent Practice, as follows:
"The Court of Appeal, in paragraph 5 of Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1
[2007] RPC 7 (Aerotel/Macrossan), made it clear that assessing excluded matter involves
a question of law which should be decided during prosecution of the patent application.
The position is therefore assessed fully by patent examiners before grant, and objections
are not to be dropped simply because the applicant asserts that the invention relates to
non-excluded subject matter. The question of excluded matter is decided on the balance
of probabilities, taking into account all of the evidence available. However, as it is a
question of law, it is not something on which applicants are entitled to the benefit of the
doubt, in the way they would be in relation to questions of pure fact (such as the date of a
particular disclosure, or the scope of the common general knowledge)."
10 The original passage in question from the Court of Appeal is this:
"In that connection we should record also that we accept Mr Birss' submission that any
pure question of law involved should be decided during prosecution. It is not enough to
get a patent past the application stage to show that as a matter of law it merely arguably
covers patentable subject-matter. The position is different from that under the old law.
Then the rule was that patents should be refused only where on no reasonable view
could the subject-matter be patentable, see Swift's & Co Application [1962] R.P.C. 37 at
46. Despite that being the rule, in the years that followed Swift, in practice a decision of
the Office or on appeal to the Appeal Tribunal was taken to decide the matter once-and-
for all. That itself shows there is no point doing other than deciding the question.
Moreover that is what the European Patent Office (EPO) does and there is no warrant in
the EPC for the "arguable" approach. Of course if a debatable question of pure fact is or
may be involved at the application stage, things are different-one cannot then say that the
decision at that point must be the last word on the subject. Then the applicant must be
given the benefit of any reasonable doubt."
11 From the references to prosecution and application stage I take it that the quote from
the Court of Appeal is relevant to the practice of the Office.
12 It seems therefore that there is a burden upon an examiner to demonstrate that an
invention falls foul of the exclusions and that to overcome such an objection an
applicant must do more than "show that … it merely arguably covers patentable
subject-matter". In other words, both the examiner and the applicant must do much
more than simply assert that their view is correct.
13 Mr Russell and Dr Jones say in their skeleton arguments that they are not seeking to
create false or spurious doubt about whether the inventions in each of the
applications are excluded, since it is clear from the case law cited above that this
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