Decision Nº O/272/06 from Intellectual Property Office - (Patent decisions), 28 September 2006
| Judge | Mr R C Kennell |
| Court | Intellectual Property Office (United Kingdom) |
| Administrative Decision Number | O/272/06 |
| Patent Number | GB0312402.1 |
| Date | 28 September 2006 |
| Parties | Yi Tang |
b
BL O/272/06
28 Septembe
r
2006
APPLICANT Yi Tang
ISSUE Whether patent application number GB
0312402.1 complies with section 1(2)
HEARING OFFICER
R C Kennell
DECISION
1 Patent application GB 0312402.1 was filed by Mrs. Yi Tang on 30 May 2003
claiming a priority date of 27 June 2002. The application was published as GB
2390191 A on 31 December 2003.
2 The examiner has reported that the application is excluded from grant under
Section 1(2) of the Patents Act 1977. The examiner objected that the claimed
subject matter related a method of doing business, mental act and/or a
computer program. Furthermore, the examiner has reported that the claims are
not limited to a single invention and thus fall foul of Section 14(5) of the Act;
and also that one of the inventions lacks inventive step in the light of two prior
US patent specifications.
3 Following several rounds of examination in which the examiner maintained his
excluded matter objection, a hearing was offered in order to resolve the issue,
with further consideration of the plurality of invention and inventive step
objections being deferred. Mrs. Tang, who is not professionally represented,
asked for the matter to be decided on the papers.
4 In a letter dated 9 September 2005, the examiner drew Mrs Tang’s attention to
a change in the Patent Office’s practice in regard to the section 1(2)
exclusions1 following the decision of Peter Prescott QC, sitting as a Deputy
Judge, in CFPH LLC’s Application [2005] EWHC 1589 (Pat), [2006] RPC 5,
and offered Mrs Tang an opportunity to make further submissions. Mrs Tang
believed that her previous correspondence had dealt adequately with the
matter.
5 Although Mrs Tang was willing to amend the specification to overcome
plurality, in fact no formal amendments have been submitted. I therefore
propose to consider the patentability of all the claims in the applications as
1 See http://www.patent.gov.uk/patent/notices/practice/examforpat.htm
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