Macrossan v Comptroller-General Of Patents, Designs And Trade Marks 2005

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 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:

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.

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.

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.

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 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.

That being the case, did Mrs Chalmers err in this respect in failing to acknowledge or apply the relevant onus? In my view she clearly did not. At paragraph 10 of the Decision she records the principles that she was taking into account, one of which was:

“Any doubt over the patentability of the invention should be resolved in favour of the applicant”

It is implicit in that that she acknowledged where the onus lay. There is nothing in the Decision to suggest that she lost sight of that. Mr Macrossan complains that on more than one occasion in the Decision the hearing officer expresses herself as considering whether she was persuaded by the submissions of Mr Butler (who represented Mr Macrossan at the hearing) on various points whereas she should have been considering whether the examiner had discharged his onus of proof, and that that indicated that she had not understood or applied the onus of proof correctly. I do not consider that that is correct. It is true that from time to time Mrs Chalmers did record that Mr Butler had sought to persuade her of various things in relation to the points in issue, but in doing so she is merely using a form of words to describe the submissions that Mr Butler made on the point. She is not revealing that she was applying the wrong principles as to onus. I do not think that Mr Macrossan’s criticism of the Decision is right or fair in this respect. Nor is it correct to rely, as Mr Macrossan does, on a statement made by Mrs Chalmers that:

“I have to say that Mr Butler’s arguments have caused me a great deal of difficulty”.

This is said at the beginning of the section of the Decision which reaches a conclusion on the “technical contribution” point. Mr Macrossan argues that since difficulty was caused, there must have been significant, or even great, doubt of which Mr Macrossan was entitled to the benefit, and she failed to give it to him. Again, I do not consider this to be a proper reading of the Decision. First, it is apparent that it relates to one aspect of the matter only, namely the technical contribution (if any) made by the invention. Second, when read properly in its context it does not betoken the fact that Mrs Chalmers was struggling with doubts about the point, but rather that she was struggling with difficulties in comprehending Mr Butler’s arguments or in seeing that there was anything in them at all. Nor is Mr Macrossan assisted by pointing out (correctly) that Mrs Chalmers observed in argument that “this is clearly a complex case … there are complex issues here”. However “complex” she regarded it at the time, at end of the day, she still had to consider the arguments and it was open to her to decide the questions involved and decide that there was insufficient doubt to give Mr Macrossan the benefit of. One cannot say that in a complex case the applicant must always win at the Patent Office stage. In any event, I am not convinced that she was acknowledging that the case was complex in the sense intended by Mr Macrossan. The context shows that the remark was intended to move Mr Butler on, and it might well have reflected the fact that Mrs Chalmers considered that there were a number of issues that had to be dealt with rather than a clear indication that the issues were themselves complex. In any event, so far as it is relevant, in my view the case is not actually all that complex.

Mr Macrossan’s attack under this head therefore fails.

Mr Macrossan next complains that the Decision fails to give adequate reasons and cites a passage from the 2003 White Book in support of an obligation to do so. The obligation is not challenged in Mr Birss’s submissions to me, but he says that reasons were given, even if they were sometimes brief – Mrs Chalmers was entitled to express herself briefly.

The detail of Mr Macrossan’s complaint under this head is a mixture of a large number of different complaints. There are complaints that Mrs Chalmers did not explain why she was identifying submissions or distinctions made by Mr Butler; that she did not record certain arguments; that she reached the wrong conclusion; that she misunderstood submissions; that she disregarded various arguments; and that she made legal and other errors in her exposition. The criticisms are very detailed, but I do not intend to set them out here because they are not aspects of a failure to give reasons. So far as they are valid criticisms at all they are reasons for saying that her conclusions were wrong, and that is not the same thing as a failure to provide reasons. So far as they are relevant to the appeal at all they can and should be dealt with in the context of submissions on the substantive points in question. None of them amount to a breach of the obligation to give reasons, or at least not to any significant extent. This head of criticism fails.

This point was first raised in a fairly low key way in Mr Macrossan’s first skeleton argument. It arose in this way. During the course of the hearing Mrs Chalmers is recorded as having said:

“having heard your [ie Mr Butler’s] submission and having here the examiner’s opinion …”

Mr Macrossan invites an inference from this that Mrs Chalmers had received, or proposed to receive, private submissions from the Examiner, which offends against what he describes as the “rule against bias”. I am invited to draw this inference from

The point is developed further in Mr Macrossan’s reply submissions. On 13^th May (after this appeal was commenced) he wrote to the Comptroller pointing out that under paragraph 6.33 of the Patents Hearing Manual the examiner is to prepare a report for the hearing officer which reports on the facts leading to the hearing and expressing an opinion on the issues to be decided and requested a sight of the report. This was refused by the Patents Office as falling within certain exemptions in the Freedom of Information Act 2000. It did not deny that the report was prepared, and I am prepared to assume that it was. Mr Macrossan says that this demonstrates that “secret submissions” were made – he did not see this report. He also says that if he is wrong about this report then there is still apprehended bias because of the publication of a paper on the internet by the Patents Office which says

“The UK Patent Office has a strong tradition of rejecting patent applications for software … this tough approach has ensured that only patents with a ‘high presumption of validity’ are granted.”

This, he says, demonstrates that Mrs Chalmers did not bring an impartial and unprejudiced mind to her task.

Mr Macrossan relies on the rules against bias which are applicable to judicial tribunals. The extent to which those rules apply was not debated in the submissions before me. Mr Macrossan’s submissions presuppose that they do apply. Mr Birss’s submissions do not embark on a consideration of the topic, probably because the main submissions on bias appear in the reply submissions and not in the first round submissions to which he had responded. I do not think that this is the occasion for a full consideration of that topic. Suffice it to say for present purposes that I do not consider that the full bias rule, as such, applies to a hearing of this nature. It must be remembered that the hearing is not an inter partes hearing, and the examiner is not a party. The hearing takes place under section 110 of the Patents Act 1977 and is part of the application process. The examiner can assist the hearing officer, and does so in the form of the report whose content Mr Macrossan asked to see. The hearing officer does not adjudicate between two contesting parties. To that extent, therefore, one cannot simply transpose the bias rules.

Having said that, however, there must be procedural fairness, and indeed the Patents Hearing Manual effectively recognises as much (though not in that terminology) – see paragraph 6.04. It also recognises that what the hearing officer is doing is “adjudicat[ing] upon the differences between the officer who has been dealing with the case and the party being heard”, although it goes on to say that “It should though always be borne in mind that it is the party or his representative who is being heard.” This will require it to have been made clear to the applicant what points are taken against him or her in relation to the application. I do not, however, think that it precludes internal discussions. I do not, therefore, think it necessary that the paragraph 6.33 report should inevitably be disclosed, though if it contains points that the applicant should be made aware of in order to understand what the problems with his application are then again they should be made clear if they are not already apparent.

In the circumstances I do not think that the provision of the paragraph 6.33 report to the hearing officer, and a failure to disclose it, give rise to an inference of bias – those principles do not apply. Nor does that report qualify as some sort of “secret submissions” so as to be unacceptably unfair. First, they are not wholly secret – the fact that they are made is apparent from the Manual. Second, on the facts of this case Mr Butler, if not Mr Macrossan, knew or ought to have known that the report was submitted. Mr Butler must be taken to have known of it because of the reference to it in the Manual (he is an experienced patent agent) and while it is not wholly clear what Mrs Chalmers was referring to in the short passage cited above, it seems to me likely that she was referring to the report. If she was not then she must have been referring to the earlier disclosed report (of which there was one), and the paragraph 6.33 report cannot have contained anything relevant in addition to what appeared in the disclosed report. Third (and related to the second) Mr Butler did not ask for the report at the time. Fourth, there is nothing in the Decision which demonstrates that some illegitimate use was made of the report, or that something in it was not disclosed but ought to have been disclosed. The Decision deals with the whole case on its merits on the basis of arguments and points which Mr Butler and Mr Macrossan had a full chance to meet.

It also follows that the remark made by Mrs Chalmers is not sinister and does not connote any form of bias or procedural unfairness. It was a reference to a state of affairs that is established in the procedure and which is consonant with fairness. It certainly does not begin to suggest (contrary to Mr Macrossan’s first round of submissions) that the hearing officer had received or would receive “secret submissions”. It is also worthy of note that the remark passed without objection from Mr Butler. The position was apparent to him at the time – it was apparent what was said, it was apparent that a paragraph 6.33 report had been submitted (if that is what Mrs Chalmers was referring to), and it is apparent from the opening remarks made by Mrs Chalmers at the beginning of the hearing that the examiner was assisting her. All this passed without objection. I therefore find that it is now too late for Mr Macrossan to complain about unfairness (or bias) even if he could once have done so.

I therefore rule against Mr Macrossan on this point and move on to consider the substantive appeal.

In paragraph 13 of the Decision Mrs Chalmers considered a submission by Mr Butler that a comparison between the patent applied for and three recently granted UK and EP patents demonstrated that the former made as much of a technical contribution as the invention disclosed in the patent applied for. She ruled that previously granted patents had little bearing on her decision, and what was important was the technical contribution disclosed on the facts of the application before her. Mr Macrossan says that she was wrong not to make an attempt to see the basis on which the previous patents might be distinguished, and that a failure to do so gave the impression that applications were dealt with “on pure whimsy”. Like patent applications should be dealt with in like manner. A study of those earlier patents demonstrated that his points on them were good.

I do not consider that this is a valid criticism. The hearing officer is plainly right in saying that each patent application must be measured against the requirements of the law and on the basis of its own facts. The application of the law ought to produce consistency overall in like cases, but consistency is a result, not something which must be achieved. If inconsistencies can be identified then one decision is right and the other is wrong. It does not help to identify which is right. To rely on previous patents as some sort of benchmark would be to give the earlier patent in time a primacy which the legislation does not warrant. That is not to say that the hearing officer may not look at earlier patents. If he or she gains some assistance from them, then so be it, but that must be a matter for the hearing officer to decide on the particular case before him or her. It does not follow that he/she must compare the application with earlier grants and the decision is flawed if it does not do so. At the end of the day any particular application stands or falls on its own merits.

There was no dispute as to the law to be applied. It is contained in section 1(2) of the 1977 Act:

“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 …

(c)

a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer

… 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.”

This was the law that Mrs Chalmers applied. She considered the exclusions one by one, and said (as appears below) that the invention fell within three of them – mental act, business method and computer program. Having done so she went on to consider whether the invention amounted to any of them as such, and for that purpose considered whether the invention provided a technical contribution. That was the law as it appeared at the time, and that was the basis on which the parties made submissions at the earlier hearing. Since then there have been decisions indicating a different approach should be applied. I have considered both bases for deciding this case. Each side has had the opportunity of making submissions on the principles involved in the new cases. The two approaches come to the same result. For the sake of completeness I take them in turn, taking the hearing officer’s approach first.

At paragraphs 16 and 17 of the Decision Mrs Chalmers considered whether the application failed as describing a method of performing a mental act. She referred to Mr Butler’s submissions distinguishing other earlier cases (Wang Laboratories Inc’s Application [1991] RPC 463 and Fujitsu Ltd’s Application [1997] RPC 608), pointing out that the invention claimed to provide a solution to the errors that might arise in conventional ways of incorporating a body by automating that process. Then she rebuts the notion that that is not a mental process because it is done by a computer, citing Aldous J in Wang as authority in support of her approach.

It does seem to me that there is a lacuna in her reasoning. While identifying Mr Butler’s answers to suggestions that the exclusion applies, and dealing with the effect of the involvement of a computer, her text does not identify why it is that the process falls to be considered as a method of performing a mental act. This is not satisfactory reasoning and should not be allowed to stand. I therefore have to consider whether the exclusion applies.

Mr Macrossan says it does not, because the invention does not involve just an abstract process; something is produced at the end of the process which is not determined by the skill of the operator, and the process is not wholly abstract. He seeks to distinguish cases like Wang on that basis. In the invention in Wang a computer was programmed to produce expert advice. Aldous J held that the production of expert advice was performing a mental act, and it did not matter that the advice was produced by a computer – the invention was still one which was the method of performing a mental act. Mr Macrossan invites this Court to distinguish his invention because it does not just produce advice. It produces the material which can then be used to form the company in question.

I think that the hearing officer arrived at the correct conclusion on this point. The point of the invention is to arrive at the appropriate company with the appropriate incorporation documents on the basis of information supplied by the user. This act of applying the criteria to arrive at the correctly documented conclusion seems to me to be clearly a mental act. Without a computer a skilled individual would do the same thing in much the same way. It seems to me to be very like an expert system where the computer is programmed to provide expert advice. Although it has been suggested in some of the authorities that analogies or parallels with other cases are to be eschewed, I gain assistance from Westinghouse Electric’s Application (0/105/95 – computer programmed to identify targets) and Raytheon’s Application [1993] RPC 427 – a method of pattern recognition and matching of silhouettes. Accordingly I am satisfied that the hearing officer arrived at the right decision on this point.

At paragraphs 20 to 22 the hearing officer considered whether the invention fell under this head. Relying on a paragraph in the application which stated that the preferred embodiment enabled laymen to produce documents (and “related legal information”) without the assistance of lawyers, and would enable legal practitioners to produce the end product with lesser qualified personnel than would otherwise be the case, she found that:

“To my mind, the production of legally compliant documents is just the sort of activity that falls within the business method exclusion. It is something that solicitors are paid to do. Thus, I find the present invention to fall potentially within the “business method” exclusion”

Mr Macrossan says that the hearing officer erred in this respect. He says that what the legislature had in mind was something abstract in nature, and the invention did not fall within that category. In addition, even if the invention could fall within the words, the bar did not apply to partial methods of doing business, and that is the most that could be said of the invention under this head if the head applied at all. He sought to draw a parallel with using a telephone in business. The fact that a telephone might be used in business ought not to exclude it from patentability on the “method of business” ground.

The difficulties involved in deciding this question have been commented on more than once; see, for example, Mr Peter Prescott QC, sitting as a deputy judge of this Division, in In the matter of Patent Applications by CFPH LLC. It is indeed not a straightforward decision in this matter. However, I consider that in this case the hearing officer has erred in her reasoning and her answer. She seems to have relied heavily on the fact that the activity in question is carried out for remuneration by solicitors. That is true, but it does not mean that the invention embodies a “ scheme or .. method ... of doing business” within the Act. The activity involved in the invention is a business service, or end product, for which the customer is prepared to pay and for which the customer contracts. That may entitle the invention to the title “a method of providing business services”, but that is not what the exclusion in the Act is aimed at, in my view. The exclusion is aimed more at the underlying abstraction of business method – the market making technique in Merrill Lynch’s Application [1989] RPC 561; or the way of doing the auction in Hitachi T258/03 (EPO Board of Appeal, 21^st April 2004). In CFPH Mr Prescott identified joint-stock companies themselves as being methods of carrying out business – see paragraph 41 of his judgment. That has the necessary level of abstraction or method (business method). The invention in the current application does not. It is merely a facility which might be used in a business; or, to put it another way, a tool. That cannot be said of the inventions in Merrill Lynch and Hitachi. In those cases the inventions were more than a tool – they were ways of conducting the entire business in question. Again, in Pensions Benefit Business Partnership (T931/95) the Technical Board of Appeal held that the operation of a pensions scheme on a computer amounted to a method of doing business. In doing so it said that:

“All the features of this claim are steps of processing and producing information having purely administrative, actuarial and/or financial character. Processing and producing such information are typical steps of business and economic methods.”

While that does not claim to be, and should not be treated as, a definition of a “method of doing business” it still, to my mind, captures something of the essence of the point. It does not get particularly close to describing the invention in this case. I therefore think that the hearing officer erred in finding that the invention was a method of doing business.

As to this the hearing officer said:

“... the form of the claim is of no importance when determining whether the substance of the invention is such that it falls into one of the excluded categories. Claim 1 is drafted in terms of a method involving various pieces of hardware and at first glance does not look like a program for a computer. However, in the absence of any indication to the contrary in the specification, I am in no doubt that the means of implementing the invention is via a piece of computer software. I conclude therefore that claim 1 falls within the ambit of the “computer programs” exclusion”.

In reaching that conclusion she rejected a submission made by Mr Butler for Mr Macrossan that the invention was a process for producing documents and was not abstract in nature.

Mr Macrossan complains that this analysis ignores his submissions distinguishing earlier authorities on the point, which he says were distinguishable because none of them involved the production of a physical product, whereas in the present application the process ended up with the production of a physical product, namely documents. While one of the integers of the claim was (he accepts) a computer program, it was more than that and was not a computer program as such.

On this point I agree with the hearing officer. If one looks at the substance of the invention it is basically a computer program. The claim contains a reference to other elements, but it is the substance that matters, rather than a technical dissection of the claim – see Fujitsu Ltd’s Application [1997] RPC 608 at 618. That substance is a computer program. Claim 1 describes its operation. Mr Macrossan’s submissions seek to say that it is more than a computer program because the process involved ends up with the production of something – appropriate corporate documents. Other cases in which inventions have been held to be computer programs do not have such an end product, it is submitted. Mr Macrossan cited them in his submissions to the hearing officer and incorporates them into his submissions on this appeal. He cites Raytheon, Fujitsu (supra), Hutchins [2002] RPC 264 and others and says that none of them produced a physical end product. I do not regard that as being a distinguishing feature for present purposes. For example, while in Fujitsu the end product was apparently the display of a crystal, there is nothing to indicate that the result would have been any different if it had been a physical printout rather than a computer display. That is not, in my view, a basis for distinguishing those earlier cases.

I therefore consider that the hearing officer was right in her decision and that the alleged invention in this case is a computer program.

Having considered whether the invention fell within any of the excluded categories taken separately, the hearing officer then went on to consider whether the invention provided a technical contribution so as to have the effect that it did not fall within the excluded categories “as such”. She held that the shortcomings in conventional procedures which the invention was said to overcome did not amount to technical problems, so the invention did not make a technical contribution. It provided a solution to a business or administrative problem by providing a stand-in for a legal expert. It merely reduced cost, labour and error, but did not go further and make the necessary technical contribution. She also rejected submissions that configuring the data processor to determine which document templates were required, accessing user data stored in a database and merging those templates with the user’s answers provided a technical contribution. They were carried out by technical means within the computer but they were programming steps and the inter-relationships between them followed on naturally from the automation process. She further rejected submissions based on Sohei [1996] EPOR 253 that setting out to provide a program to produce end documents involved technical considerations as to how to go about it, which provided the necessary technical contribution; she rejected them on the footing that any computer program required thought and analysis before it was written and if Mr Macrossan were right that this provided a technical contribution then it would do so for every computer program, which could not be right.

Mr Macrossan’s response to this part of the Decision is to submit it to close textual analysis, to seek to illustrate that the hearing officer has not addressed all the arguments that were advanced to her, and that various parts of her decision relying on authority misunderstand or misapply that authority. When Mr Birss responded to those submissions in writing, his submissions were submitted to another closely argued, and long, textual and legal analysis. The result of this amply justifies what was said about the difficulties involved in deploying the concept by Mr Peter Prescott QC in CFPH LLC’s Application [2005] EWHC 1589 Pat at paragraphs 13-14. Since the law seems to have moved on I shall not take time diving into the analytical depths into which Mr Macrossan’s submissions invite me to go. Suffice it to say for these purposes that I agree with the hearing officer. It is hard to see what technical contribution is provided by the invention. It is, or it involves, a technical process, but that process is itself a computer program. All the attempts to break into that argument seem to me to involve describing aspects of the computer program or pre-cursors of the program. The heart of its effect is an automation process, but what it automates is a mental act – see above. Accordingly I agree with the hearing officer.

It follows that if I were approaching the matter in the same way as the hearing officer I would arrive at the same result. However, at about the same time as submissions were being made in this appeal there was a series of cases which indicated that the approach of the English courts was changing. At the time judgments were pending – that of Mr Prescott in CFPH, and one of Pumfrey J in Halliburton v Smith [2005] EWHC 1623 Pat. The parties each made submissions on those cases when their respective judgments were available. Nor has the matter stopped there. These issues have been addressed in other cases since then, both of which affirm the new approach. Those other cases are Shoppalotto’s Application [2005] EWHC 2416 Pat, and Research in Motion (UK) Ltd v Inpro Licensing SARL [2006] EWHC 70 Pat.

In the last of those cases Pumfrey J observed that there had been a flurry of cases involving the exclusions, and he listed them (including his own decision in Halliburton). At paragraph 186 he said:

“186.

It is now settled, at least at this level, that the right approach to the exclusions can be stated as follows. Taking the claims correctly construed, what does the claimed invention contribute to the art outside excluded subject matter? The test is a case-by-case test, and little or no benefit is to be gained by drawing analogies with other cases decided on different facts in relation to different inventions.”

He had expressed this a little more fully in his earlier decision in Shoppalotto where he said:

“9.

There has been a tendency, especially in the earlier decisions of the Technical Boards of Appeal, to consider that the exclusions have in common a lack of “technical effect” … The real question is whether there is a relevant technical effect, or, more crudely, whether there is enough technical effect: is there a technical effect over and above that to be expected from the mere loading of a program into a computer? From this sort of consideration there has developed an approach that I consider to be well established on the authorities, which is to take the claimed programmed computer, and ask what it contributes to the art over and above the fact that it covers a programmed computer. If there is a contribution outside the list of excluded matter, then the invention is patentable, but if the only contribution to the art lies in excluded subject matter, it is not patentable.

…

11.

An invention may be viewed as a solution to a concrete technical problem. Merely to program a computer so that it operates in a new way is not a solution to any technical problem, although the result may be considered to be a new machine. It follows that an inventive contribution cannot reside in excluded subject matter.”

I respectfully find this of great assistance. The position is expressed a little more clearly than it was in Halliburton and CFPH, though the point is the same. It provides a clear answer to the present case. The invention in the present case is, in substance, a computer program, as appears above. The inquiry does not stop there, however. Under the approach of Pumfrey J I have to ask what it contributes to the art. It contributes a degree of automation, ease and efficiency, but when one goes on to consider that further one finds that it automates a method of performing a mental act – see above. That is all that it contributes to the art. It therefore contributes something which is within the excluded subject matter, which is not enough to make it patentable.

Mr Macrossan’s submissions relied on the fact that in Halliburton Pumfrey J said that the patent would be saved by adding at the end of the process description the step of generating the designed product. That, it is said, can be applied to the present case. In the present case the invention is said to cover the production of the final documents, which is said to be analogous to Pumfrey J’s addition of the making of the designed product. Leaving aside the question of whether claim 1 actually involves the production of the thing (which the Comptroller disputes), and assuming that in the inventor’s favour, it still, in my view, does not save the patent. The substance of the patent is a method of performing a mental act by a computer. The documents are produced as a result of the (notional) mental act.

In reaching this conclusion I have in mind the warnings of Pumfrey J against giving the exclusions too wide a scope – see Research in Motion at paragraph 187. However, even bearing in mind those warnings, and bearing in mind the need to give the inventor the benefit of the doubt at this stage, it is still clear to me that on this new approach the alleged invention falls within the computer program and mental act exclusions.

I therefore dismiss this appeal. The consequential orders to be made should be the subject of written submissions made and exchanged within 7 days of the handing down of this judgment; and submissions in response should be served and exchanged within 3 working days of that.