Re Cappellini & Bloomberg
| Jurisdiction | England & Wales |
| Judge | THE HONOURABLE MR JUSTICE PUMFREY,Mr Justice Pumfrey |
| Judgment Date | 13 March 2007 |
| Neutral Citation | [2007] EWHC 476 (Pat) |
| Docket Number | Case Nos: (1) CH/2006/APP/0487 |
| Court | Chancery Division (Patents Court) |
| Date | 13 March 2007 |
[2007] EWHC 476 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr Justice Pumfrey
Case Nos: (1) CH/2006/APP/0487
(2) CH/2006/APP/0481
Mr Cappellini in person
Richard Davis (instructed by Marks & Clerk Patent Attorneys) for Bloomberg LP
Michael Tappin (instructed by Treasury Solicitor) for the Comptroller-General
Hearing dates: (1) 11 December 2006 (2) 12 December 2006
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.
Mr Justice Pumfrey:
Introduction
On 11 th and 12 th December 2006, I heard two appeals, respectively by Mr Cappellini and by Bloomberg LP, against the refusal by the Comptroller-General of their applications, serial numbers GB 2381884A and GB 2395941A. Mr Cappellini's application was refused on the basis that it comprised “methods for performing mental acts, doing business or programs for computers as such” and was accordingly excluded from patentability by section 1(2) of the Patents Act 1977 by the Hearing Officer, who was Mr Stephen Probert, a deputy director acting for the Comptroller. Bloomberg LP's application was rejected by Mr H Jones, also a deputy director acting for the Comptroller, on the footing that the “advance made by the applicant lies wholly within the meaning of a computer program set out in [section] 1(2)(c) and is, therefore, not patentable”. These decisions raise similar legal questions, and it is convenient to deliver this single judgment in respect of those legal issues. I shall deal with the facts of the individual cases after I have considered the law.
Section 1(2) – the Law
When Mr Jones decided Bloomberg's case, the Court of Appeal had not given judgment in Aerotel/Macrossan [2006] EWCA Civ 1371. Mr Probert's decision was equally delivered before that discussion of the relevant principles in the Court of Appeal. Both hearing officers based themselves upon the approach set out by Mr Peter Prescott QC in CFPH LLC's Applications [2005] EWHC 1589 (Pat). The Aerotel/Macrossan case is now the starting point for any discussion of this area of the law.
Section 1(2), which is intended to have the same effect as the corresponding provisions of Article 52(2) and 52(3) of the European Patent Convention (“EPC”), excludes from patentability a heterogeneous selection of potential subject matter. It is convenient to work from the provisions of the EPC directly, for the reasons set out in [6] of the Aerotel judgment. In that case, it is apparent from the analysis of the English cases in the Court of Appeal ( Genentech's Patent [1989] RPC 147, Merrill Lynch's Application [1989] RPC 561, Gale's Application [1991] RPC 191 and Fujitsu's Application [1997] RPC 608) that the Court of Appeal had both difficulty and doubts about two questions in particular: the first was the adequacy of the so-called “technical contribution” test and the correctness or otherwise of the decision in Merrill Lynch, by which, of course, they were bound. It is not necessary, for the purpose of this decision, to go back over the reasoning of the Court of Appeal in Aerotel, bound as I am by their statement as to the correct approach to the statutory exclusions. Nor am I concerned about the obvious disparity between the more recent decisions of the Technical Boards of Appeal of the European Patent Office on this question and the older ones such as T208–84 Vicom/Computer-related Invention [1987] OJEPO 14. The approach approved by the Court of Appeal in [42] to [46] of Aerotel has four stages:
“42. No-one could quarrel with the first step – construction. You first have to decide what the monopoly is before going on to the question of whether it is excluded. Any test must involve this first step.
43. The second step – identify the contribution – is said to be more problematical. How do you assess the contribution? [Counsel] submits the test is workable – it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended.
44. [Counsel] added the words “or alleged contribution” in his formulation of the second step. That will do at the application stage – where the Office must generally perforce accept what the inventor says is his contribution. It cannot actually be conclusive, however. If an inventor claims a computer when programmed with his new program, it will not assist him if he alleges wrongly that he has invented the computer itself, even if he specifies all the detailed elements of a computer in his claim. In the end the test must be what contribution has actually been made, not what the inventor says he has made.
45. The third step – is the contribution solely of excluded matter? – is merely an expression of the “as such” qualification of Art.52(3). During the course of argument [Counsel] accepted a re-formulation of the third step: Ask whether the contribution thus identified consists of excluded subject matter as such? We think either formulation will do – they mean the same thing.
46. The fourth step – check whether the contribution is “technical”– may not be necessary because the third step should have covered that. It is a necessary check however if one is to follow Merrill Lynch as we must.”
[47] provides an important gloss on the decision of the Court of Appeal in Fujitsu, which is equally binding upon me:
“[The four steps ask] the same questions but in a different order. Fujitsu asks first whether there is a technical contribution (which involves two questions: what is the contribution? is it technical?) and then added the rider that a contribution which consists solely of excluded matter will not count as a technical contribution.”
Mr Davis, who argued the case on behalf of Bloomberg, submitted that generally Step Three is easier to answer than the Merrill Lynch-mandated test of Step Four. I agree with this, largely for the reasons which I endeavoured to explain in Shopalotto.com's Application [2005] EWHC 2416 (Pat), [2006] RPC 293, where I suggested that it is plain that not all “technical effects” are relevant, and, in particular, that where computer programs are under consideration, the fact that a computer with an ex hypothesi new program will be a new machine and so a technical effect. I suggested that the technical effect to be identified had to be a technical effect over and above that to be expected from the mere loading of a program into a computer, and I do not understand the Court of Appeal, who considered this judgment, to have disapproved of that statement.
My brief quotation above from the reasons for rejection of Mr Cappellini's application shows that it is necessary to venture into two of the other classes of subject matter expressly excluded by Article 52 from patentability: methods for performing mental acts and methods of doing business.
It is plain that the Court of Appeal in Aerotel thought that the “mental act” exclusion was a narrow one. The rival views are summarised in the appendix to the judgment at [94] to [98]. In summary, the rival contentions are that of Aldous LJ in Fujitsu (“Methods of performing mental acts, which means methods of the type performed mentally, are unpatentable, unless some concept of technical contribution is present”) and that of the Court of Appeal in Aerotel: “There is no particular reason to suppose that “mental act” was intended to exclude things wider than, for example, methods of doing mental arithmetic (every now and then someone comes up with a trick for this, for instance Trachtenberg's system) or remembering things (e.g., in its day, Pelmanism).”
As a matter of precedent, I am free to choose between these alternatives, while acknowledging that the second comes with a clearly expressed doubt as to the correctness of the first. As a practical matter, I doubt whether the difference will normally be of concern. The views of the Court of Appeal in Aerotel make it quite clear that, like most other problems that arise with a patent, the question of patentable subject matter is essentially a question of the scope of the claim. If the claim covers a method of arriving at a particular result by the exercise of rational processes alone, then it is, in my view, a claim to a “scheme, rule or method for performing a mental act”. I adhere to the view that I expressed in Halliburton v. Smith [2005] EWHC 1623 (Pat). That case was a case of a claim to a method of design, in which certain calculations were to be carried out recursively, modifying the results each time until a particular criterion was satisfied. Obviously, such a method was particularly susceptible to performance by a computer, but as a matter of principle the claim was not so limited. Nor was the claim limited to the employment of such a method in the production of a physical article. It would have been infringed had the person employing the method stopped at the end of the necessary calculations. Such a case, in my view, can be saved by limiting it to a method of manufacture of the resulting article. I do not...
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