Townsend, Re Patents Act 1977

This is an appeal from the decision of the Deputy Director, Mrs Jackie Wilson, dated 1 September, 2003 by which she upheld the view of the examiner in the Patent Office that all the claims in Patent Application No GB0301172.3 were excluded from protection pursuant to s 1(2)(d) of the Patents Act 1977. Accordingly she refused the application under s 18(3).

The appellant applicant is Mr Stephen Townsend who is a qualified patent agent. Very sensibly, Mr Townsend suggested, and the Comptroller-General agreed, that this appeal should be dealt with in writing and without an oral hearing so as to save costs. I acceded to that suggestion. Mr Townsend’s arguments are, in large part, recorded in the Deputy Director’s decision but they have also been set out in his Appellant’s Notice. The Comptroller-General has supplied me with a skeleton argument prepared by its Counsel, Mr Colin Birss. In my view the Deputy Director’s thorough and careful decision is clearly correct. At one stage I did consider simply dismissing this appeal on the basis that nothing could be usefully added to that decision. However, out of deference to the arguments advanced before me, I will explain shortly why, in my view, this appeal should be dismissed.

The Application is for an advent calendar of the familiar sort. It has a front surface in which there are a number of flaps or doors. Behind each door is a reward, such as a picture, sweet or toy. Each door is marked in such a way as to indicate to users when it should be opened. According to the specification, the invention is designed to solve a problem which is said to exist when it is intended to allow more than one person to use the calendar. The family crises which the invention avoids is described with commendable restraint as follows:

“In households possessing an advent calendar and more than one person, it is desirable that the treats are shared equally. However, this is an ideal which in practice is difficult to obtain, especially when the treats comprise chocolate. The problem often arises in a situation where occupants of such a household rise from bed at different times each morning. A person with a propensity to rise early has the opportunity to open the next door on the advent calendar and indulge in the treat before any other person in the household – this being possible because the new day “permits” the next door in the advent calendar to be opened. As a result, an inequitable distribution of the threats arises and, occasionally, this can lead to disharmony. This situation can arise if a person consistently goes to bed in the early hours, i.e. the next day.”

The solution proposed by Mr Townsend is to put further markings on the doors which markings can be used to indicate which of multiple users is intended to open each door. If the calendar is intended for, say, two users, the doors will be arranged in pairs, one with a marking showing it is to be opened by one user, the other with a marking showing it is to be opened by the other. The breadth and flexibility of this proposal is described in relation to the specific embodiment as follows:

“[In the advent calendar illustrated and described in the specification] each pair of doors is further identified as associated with either female 4 or male 5 although the associations need not be limited to ‘his and hers’; for gay and lesbian couples, ‘his (a) and his (b)’ and ‘hers (a) and hers (b)’ respectively would be appropriate. For family members, one might use ‘brother and sister’ or ‘mother and daughter’ etc.”

Although there are six claims it was conceded by Mr Townsend that only Claim 1 need be considered. It reads as follows:

“An advent calendar for counting the days from a first date to a second date comprising a plurality of mutually spaced doors, each door being identified as associated with a particular day and adapted to reveal, upon opening, a respective treat characterised in that at least one door is further identified by an additional indicium.”

There is no limit on what the additional indicium may be. It could be a word, a picture, a colour, texture or anything else. All that is required is that at least one door has such an additional indicium.

S 1(2(d) provides:

“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

… (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.”

Mr Townsend’s central submission is that the words “presentation of information” in the legislation can mean either “the expression of information” or “the provision of information”. He accepts that the subject matter of Claim 1 is excluded from patentability if “presentation of information” in s 1(2)(d) includes “provision of information”. This is because the function of the “additional indicium” is to provide information. On the other hand, if, as he submits, the words in the section are designed to exclude only expressions of information – in other words how information is provided, the claim survives.

The difference may be illustrated as follows. To mark an advent calendar door with the words “only three more shopping days to Christmas” is the provision of information. To require those words to be printed in Times Roman font is to stipulate the expression of the information carried by the words. Mr Townsend argues that the latter, but not the former, is excluded from protection by s 1(2).

In my view, this is a simple point with a simple answer. “Presentation of information” in the section does encompass providing information. It is the natural and primary meaning of those words. As Mr Birss argues, the provision consists of ordinary English words. They are not ambiguous. If the indicium on the advent calendar door consists of the words “this is for Paul” or “don’t be greedy, it’s your sister’s turn”, it is conveying or presenting information.

Were Mr Townsend correct, it is difficult to see what the function of s 1(2)(d) would be. It seems to me that the provision should be construed in context with all the other exclusions in s 1(2). For example, as explained by the Court of Appeal in Fujitsu’s Application [1997] RPC 219, the exclusion of computer programs from protection is based on the premise that giving instructions or conveying information per se is not patentable.

Mr Townsend also relies on Pepper v. Hart [1993] AC 593, the Vienna Convention on the Law of Treaties and the French and German texts of the European Patent Convention. These are all secondary arguments which could only have relevance (assuming for the moment that they were correct) if there was some ambiguity in the meaning of s 1(2)(d). Since there is not, no purpose would be served by considering them further.

In the result this appeal fails.

At the beginning of this judgement it was noted that the suggestion that this appeal should be determined without an oral hearing came from Mr Townsend. Very properly the Comptroller-General has recognised this attempt to minimise costs and has indicated that no order for costs is being sought against Mr Townsend.

For the above reasons the appeal is dismissed with no order as to costs.