Kapur v Comptroller General of Patents, Designs & Trade Marks

Rajesh Kapur is the applicant and inventor in respect of a group of United Kingdom Patent Applications. They are numbered 0515579.1; 0516374.6; 0516995.8; 0516997.4; 0518016.1; 0519238.0; 0519365.1 and 0519463.4. All the applications relate in one way or another to document management systems. He represented himself before the Patent Office and before me: he did so with great restraint and courtesy.

The Examiner took objection to the applications on a number of grounds, such as the conflict with each other, and other more detailed grounds. The common thread running through the objections was whether the applications complied with section 1(2) of the Act.

Following a hearing before the Deputy Director acting for the Comptroller, (Mr Bartlett) all the applications were rejected as being for computer programs as such, and to the extent the applications were not so limited, they were for methods of performing mental acts. From that decision dated 12 September 2007 Mr Kapur appeals to this court.

Since only one of these UK applications has been published, Mr Kapur was asked whether he objected to the publication of the decision, but he did not reply. At the commencement of the hearing before me, the question arose as to whether the hearing of the appeal should be in the public or in private, UKIPO taking a neutral position. Mr Kapur requested that the appeal take place in public. He explained that his applications have in the main been published elsewhere and that he was not concerned about these proceedings taking place in public. Accordingly I allowed the proceedings to take place in public once I had satisfied myself as far as I could that Mr Kapur was aware of the consequences of that decision.

Mr Bartlett annexed to his decision the claims of the various applications which were under consideration. However, in paragraph 2 of his decision, he explained that Mr Kapur and the Examiner had helpfully agreed that attention should be focused on a single application in an attempt to progress the applications efficiently. GB 0519365.1 (“365”) was identified as the most sensible candidate. That application has been the focus of the argument on this appeal, and I now turn to it.

Claim 1 of 365 is as follows:

“A method for recycling intentionally, and or unintentionally deleted or overwritten document data within a system, wherein the copies or versions of said document data exist and wherein said document data is stored in a system filestore associated with a system database containing reference data pointing to the document data in the filestore, the method comprising the steps of:

(a)

determining that a delete or overwrite command has been issued and recording the deleted or overwritten deleted reference data wherein the reference data comprises object, parent and version identification of the document data prior to and or after the deleting or updating of the reference document data; and

(b)

inserting and physically separating the recorded, deleted reference data from the overwritten reference data into a set of access-preservation tables with a date timestamp; and

(c)

inserting all other salient information connected with the before delete or overwritten delete reference data contained within the system tables including parent and object reference data into a set of access and preservation tables; and

(d)

providing a set of combination tables to combine data in the first and second sets of access preservation tables thereby pointing to the deleted/over written document data within the filestore before a clean task runs; and

(e)

identifying and storing the document data deleted and, or the document data overwritten deleted to a separate empty filestore the new location of the document data deleted and, or the documents data overwritten deleted stored in the set of combination tables; and

(f)

automatically re-cycling the deleted document data required by the user back to the system database and filestore, and, or to a secondary archive system database and filestore as necessary depending on user requirements manipulating the data, to provide the document in the required way and version requested by the user;

(g)

automatically recycling the overwritten deleted document data required by the user back to the system database and the filestore, and, or to a secondary archive system database and archive filestore as necessary depending on said user requesting a copy of the overwritten document data as a new copy or as a replacement of the current version of the document data.”

The application describes the invention only in terms of a computer system. The invention applies to data which has been deleted (or overwritten and therefore deleted) whether deliberately or unintentionally. The claim distinguishes between “reference data” and “document data”. A particular feature of the method is to separate the two kinds of reference data, that is to say reference data related to deleted documents from reference data related to documents which have been overwritten. Moreover the actual document data (which would otherwise be lost when the deletion or overwriting takes place) is stored into a “separate empty file store”, and combination tables keep a record of the new location. This enables data which was supposedly deleted or overwritten to be automatically recycled i.e. to make it available again.

In paragraph 23 of his decision, Mr Bartlett, having analysed the description and some submissions of Mr Kapur, said this

“From the above I take it that Mr Kapur sees the contribution made by his invention to be a document management system permitting the recovery both of documents that have been deleted and documents that had been overwritten and in which deleted and overwritten documents are stored separately. I accept that as the contribution made by the invention and in doing so I note that none of the prior art cited by the examiner shows a system that operates in that way.”

Section 1(2) of the Patents Act 1977 enacts Article 52(2) and (3) of the European Patent Convention. As the Act is intended to implement the Convention, it is generally regarded as wise to work from the Convention itself which provides, so far as material:

“(2)

The following in particular shall not be regarded as inventions within the meaning of paragraph 1: …

(c)

schemes rules and methods for performing mental acts, playing games or doing business, and programs for computers…

(3)

Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent which a [European] patent application relates to such subject matter or activities as such.”

The concluding words are important: the exclusion only bites if the invention is only a method for performing a mental act or a computer program or business method.

The law relating to the subject matter exclusions in section 1(2) has recently been reviewed by the Court of Appeal in Aerotel v. Telco and Macrossan’s Application [2007] RPC 7. The Court of Appeal in that case accepted the submission of counsel for the Comptroller that the correct approach to these issues was in four stages:

A particular problem with a novel computer program is that, in a sense, every contribution will be technical in nature. Pumfrey J explained this problem in shopalotto.com’s Application [2005] EWHC 2416 (Pat) when he said:

“Suppose a program written for a computer that enables an existing computer to process data in a new way and so to produce a beneficial effect, such as increased speed, or more rapid display of information. It is difficult to say these are not technical effects…… The real question is whether this 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 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 matter, it is not patentable.”

The cases at first instance since Aerotel include Capellini and Bloomberg’s Applications [2007] FSR 26; Oneida Indian Nation’s Application [2007] EWHC 954 (Pat); Raytheon’s Application [2008] RPC 3; and Astron Clinica’s Application [2008] EWHC 85. They are reviewed by Lewison J in Autonomy Corporation’s Application [2008] EWHC 146 (Pat) at [17] onwards. Commenting on Capellini & Bloomberg’s Application Lewison J said at [29 x]:

“The manipulation of data stored on a computer (whether on the computer in use or on a remote computer) is unlikely to give rise to contribution that exists independently of whether it is implemented on a computer”

Particularly instructive is Kitchin J’s analysis in Raytheon. The contribution there was analysed as having three aspects: firstly, a method of stock control having certain advantages; secondly, the synthesis of images from a database, so reducing the load on the computer; and finally navigability by the user. Kitchin J held that the first aspect of the contribution was more than a computer program as such, principally because it

“had a character which exists quite independently of whether it is implemented on a computer” (see paragraph 35)

However the second and third aspects were different. Kitchin J held that these were

“no more than a reflection of how the programmer has chosen to create the desired representation”.

He added:

“The fact he has chosen to do it by synthesising the representation from a number of smaller images is simply a matter of program design. The result is not a new combination of hardware as in Aerotel. Nor is it an improved computer or an improved display as in Vicom. The result is a computer of a known type operating according to a new program, albeit one which reduces the load on the processor and makes an economical use of the computer memory. I agree with the Hearing Officer that this aspect of the contribution relates to a computer program as such.” (see paragraph 37)

The other objection found relevant by Mr Bartlett was that relating to methods of performing mental acts as such. The Court of Appeal reviewed the authorities in Aerotel (supra) at [94] to [98]. These included Fujitsu [1997] RPC 608 at 618-619, where the decision as to whether the claimed invention was a method of performing a mental act as such was not necessary to the decision. Aldous LJ distinguished between a narrow view of the exclusion, which confined it only to claims which covered methods carried out by the human mind, and a broader view, where it would exclude claims limited to methods of the kind performed by the human mind even if carried out on a computer. He said:

“Methods of performing mental acts, which means methods of the type performed mentally, are unpatentable, unless some concept of technical contribution is present.” (my emphasis).

It is plain that the Court of Appeal in Aerotel took a much narrower view of the exclusion. They said

“There is no particular reason to think 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).”

In Capellini and Bloomberg [2007] EWHC 476 (Pat) Pumfrey J held that, as the reasoning about the mental act exclusion was not necessary for the decision in either Fujitsu or Aerotel, he was free to choose between them as authority, while acknowledging that Aerotel, the more recent, comes with a clearly expressed doubt as to the correctness of Fujitsu. He considered that the exclusion will apply if it is possible to infringe the claim simply by doing mental acts, such as calculations. Although Mr Capellini’s application had been rejected on this amongst other grounds, it is not clear to me that Pumfrey J in fact came to a conclusion on this exclusion in the appeal. Be that as it may, the weight of authority favours a rather narrow view of this exclusion, namely whether the claim actually covers a purely mental implementation of the claimed invention.

In my judgment the narrow view of the exclusion is the correct one. More specifically I think the correct view is that, provided the claim cannot be infringed by mental acts as such, its subject matter is not caught by the exclusion. It seems to me that if this were not so the scope of the exclusion would be unacceptably broad, as well as being uncertain in scope. It follows that the exclusion will not apply if there are appropriate non-mental limitations in the claim. In those circumstances it will not be possible to infringe the claim by mental acts alone, and the invention will not comprise a method for performing a mental act.

A preliminary question is whether the claim is limited on its proper construction to performing the method on a computer. If the claim is wider, then exclusions other than the computer program exclusion may be engaged.

Mr Bartlett took the view that there was a strong case that the skilled person would understand the claims as limited to a computer implementation. However, he did not so decide and approached the matter on the basis that the claims were wide enough to include a manual implementation such as document handling in a physical library. As Mr Bartlett pointed out, there are certainly very strong indications in the specification that a computer implementation was what Mr Kapur had in mind. But, in the absence of a Respondent’s Notice, I do not think it right to decide the point against Mr Kapur for the first time on appeal. So, like Mr Bartlett, I will treat the claim as extending to manual implementations as well.

Of course the mere fact, on this assumption, that the claim is wide enough to encompass a manual implementation as well as a computer implementation does not mean that the claimed invention is not a computer program as such. The subject matter of the invention may be capable of being implemented in two ways, but the computer program exclusion will still bite to the extent that excluded subject matter is claimed.

I have already set out Mr Bartlett’s characterisation of the contribution in paragraph 23 of his decision. In my judgment he correctly identified the contribution made by the invention.

First of all, it is convenient to consider the claim insofar as it covers the management of computer documents. On this appeal Mr Kapur stressed very strongly two matters:

By these means Mr Kapur sought to show that his invention contributed a relevant technical effect.

Mr Bartlett found that, insofar as the invention was to be implemented by means of a computer, there was no indication in the specification that, so implemented, it required anything other than purely conventional hardware: see paragraph [33]. He also found that, when so implemented, the computer did not control any technical process outside the computer. These findings are obviously correct, but do not of themselves dispose of the question of whether the claims extend to a computer program as such.

The storage and manipulation of data of all kinds is the essence of what computers are capable of. They perform these tasks under the control of the compilation of commands in a computer program. If a new computer program is written, for example to store a copy of a document at regular intervals in order to avoid losing the document, the computer will for some purposes perform in a better way: but the contribution in that case is the computer program as such. It has no existence independently of the fact that it is implemented on a computer. It would remain the case if the computer is programmed to distinguish between different types of document or data that it saves.

When a computer saves a document it must keep a record of the location at which it is stored, called its address, so that it can be retrieved. Computers by their very nature make it possible to write software which will allow different types of data to be stored in different ways, and to retain address data so as to retrieve it. Once one has decided on how the data is to be stored, handled and manipulated within the computer, a program can be written to give effect to it. It is likely that in the course of programming a computer in this way there may be improvements in the way data is handled compared with other ways of doing the same thing. But it is improbable that in so doing one would produce a relevant technical effect recognisable over and above the fact that the program is running on the computer.

Mr Bartlett’s analysis of the invention here was

“It is a program for enabling the storage and retrieval of documents in a computer database in a particular way. Whilst it may result in the documents being handled differently, that is entirely a feature of the program. The contribution made by such an invention must to my mind reside in the program itself and must fall solely within the computer program exception.”

I am wholly unable to fault that analysis. The claimed method is not an improved computer, but an entirely standard computer programmed to handle document storage in a particular way. The fact that different types of deleted documents are handled in different ways and stored separately is purely an aspect of the design of the computer program.

In so far as the claim covers a computer implementation of the method, the contribution is correctly characterised as a computer program as such. There is no relevant technical effect.

Earlier in his decision Mr Bartlett had also considered the contribution on the basis that the claims were not limited to computer implemented methods: they could cover physical ones as well.

The relevant part of Mr Bartlett’s decision reads as follows:

“[28] … [Mr Kapur] said that in practical terms it simply would not be possible for the system to be operated manually because of the amount of data that might be involved for example in batch processing data. He also argued that the end result of the invention is the separation, storage and retrieval of documents which he sees as a physical process. He argued that a process that culminated in a physical process could not be a mental act and was patentable.

[29] I do not agree. ….whilst in practical terms it may well be impossible for a human operator to batch process the data in the sort of database Mr Kapur envisages using his invention with, the claims contain no limitation as to the quantity of data being processed. Thus the mental act exclusion is not avoided on the ground of quantity of data or complexity.

Thus far I agree. The claims are not restricted to the amount of data handled. Mr Bartlett went on to deal with a further ingenious argument of Mr Kapur, that because his invention was novel and not obvious, it could not be a mental act. How could something which by definition the skilled person would not think of fall within the description “mental act”? He rejected that submission, and in my view rightly. The exclusion covers clever mental acts as well as obvious ones.

Mr Bartlett then said:

“[31] Furthermore, I do not consider the mental act exclusion avoided merely because the invention results in what Mr Kapur saw as the practical, physical process of separation, storage and retrieval of documents. To explain why, I think it would be helpful to refer to a scenario discussed at the hearing in which a librarian decides that rather than file the books on the basis of the first letter of the author’s surname, the last letter is used instead. To implement such a system, all the indexing records would need to be updated and all the books would need to be refiled. In my view the contribution made by such a system would be in the indexing scheme rather than in any new arrangement of the books and shelves. That in my view is a mental act and such a system would not be patentable. In my view the contribution made by the present invention similarly falls solely within excluded matter as a mental act insofar as it encompasses implementing the invention manually. That it might result in deleted and overwritten versions of documents being separated and stored in different places and enables their retrieval from those places does not make it patentable.”

I think that here Mr Bartlett fell into error. Firstly, in excluding the physical aspects of the method claimed he gave the mental act exclusion too broad a scope: see the discussion of the law above. A book management system in a library which implemented Mr Kapur’s invention would involve the creation of physical records, and the physical separation of documents. I cannot accept that this system is nothing more than a method of performing a mental act as such. Secondly, taking the library implementation, I am not convinced that the indexing scheme is a mental act at all. Certainly what underlies the scheme is a novel concept: but that is true of all inventions, and is another matter. The physical handling of documents is not a mental act.

I confess to a feeling of some unreality in dealing with this aspect of the exclusions however. I entertain considerable doubts as to whether Mr Kapur is really concerned to obtain protection for implementations of his inventions which do not use a computer. I suspect that the reason these arguments were raised at all was because Mr Kapur argued before the Office that, because the invention did not necessarily rely on a computer for its implementation, it could not be a “computer program as such”: see [28] of Mr Bartlett’s decision. Before me, Mr Kapur did not make any attempt to explain how his invention might apply outside the context of a computer. It seems unlikely, although the matter is not before me, that any claim which excluded computer implementation could be properly based on the application.

Nevertheless I would allow Mr Kapur’s appeal insofar as it relates to the mental act exclusion and remit the case to the Office to consider whether, after the exclusion of the computer implementation, the application could survive further examination under the other provisions of the Act. That further examination should include consideration of the impact of the business method exclusion on any amended claim, a matter which Mr Bartlett rightly left to one side as unnecessary when dealing with the claims before him.

Mr Bartlett divided the remaining applications into three categories. The first he called “the other delete/overwrite applications”. These were those ending with the digits ‘374, ‘995, ‘238. He considered that these fell to be treated on the issues before me on the same basis as 365. Mr Kapur did not suggest that he fell into error in so treating them. Accordingly they fall to be treated on this appeal in the same way as 365.

The other two categories were those he called the “Test Bed Application” and the “Disaster recovery applications”. The former was the application ending ‘997; the latter was the group of applications ending ‘016, ‘463 and ‘579.

The Test Bed Application is concerned with replicating data on two separate, connected servers. The two servers are synchronised so that any change made to the data on the first system is replicated on the second system. If the servers become disconnected, transaction tables similar to those used in 365 are used to re-synchronize the two upon re-connection. This allows system changes to be tested on a replica system without interruption of the operation of the primary system.

Mr Bartlett dealt with the Test Bed Application in this way. He concluded that the claim was limited to a computer implementation. However he concluded that the contribution which I have paraphrased above lay solely in excluded matter. He said:

“[53] On the face of it the concept of providing a replicated system testbed sounds patentable. However, on closer scrutiny of the present application I do not think that is borne out. The hardware through which the invention is implemented is, once again, conventional. Thus the contribution must reside in what the hardware is programmed to do. …

[54] In 997 the changes to be tested are changes to a database. More specifically they are changes to the program in which the database is embodied. Thus the contribution made by this invention is a program through which changes to another program (the database) are tested and implemented. That contribution must in my view fall solely within excluded matter as a program for a computer as such.”

The Disaster Recovery applications all share the common concept of providing a replica of the primary system filestore and primary system database, so that if any element of the system should fail, data can be recovered. Mr Bartlett carefully considered all these applications, properly applying the Aerotel principles. I am entirely satisfied that he did not make any error in doing so.

It seems to me that all these applications are simply applications of the computer’s ability once programmed to manipulate and store data. The contributions made by each of them were correctly analysed by Mr Bartlett as lying solely within excluded matter insofar as they were computer implemented. Insofar as the claims are wider I do not think he was right to rely on the mental act exclusions. So the Office must go on to examine them to see whether anything remains.

The result is that the appeal is allowed, but only to the extent that it relates to the mental act exclusion.