IN THE MATTER OF APPLICATION NO. 9204959.2 BY FUJITSU LIMITED

Patentability under section 1(2) of the Patents Act 1977 depends on the substance of the claimed invention, not the form in which it is claimed. A computer program is excluded as such unless the invention makes a technical contribution to the known art. Producing a useful image, relieving labour or reducing error does not itself provide that contribution where the computer and display are conventional and the program merely produces a representation of information specified by the operator. The court also expressed the view that a method of the type performed mentally remains excluded when implemented by a computer, unless a technical contribution is present. The appeal was dismissed.

Fujitsu applied for a patent for a computer-assisted method and apparatus for modelling the combination of two crystal structures. The Examiner treated the invention as a computer program and a method for performing a mental act under section 1(2)(c) of the Patents Act 1977. Laddie J dismissed Fujitsu’s appeal from the Examiner. Fujitsu appealed to the Court of Appeal.

The central issue was whether the claims, although expressed as methods, a manufacturing method and computer apparatus, made a technical contribution sufficient to avoid the exclusions in section 1(2)(c), and whether the invention was in substance a method for performing a mental act.

1. Appeal dismissed. The claims had to be examined in substance. Their formulation as a method, manufacturing method or apparatus did not alter the single invention, which centred on a computer program.
2. The computer program exclusion in section 1(2)(c) was avoided only if the invention made a technical contribution. Vicom did not establish that processing real images was, by itself, patentable. Its technical contribution lay in the way an enhanced image was produced. The present application used a conventional computer and display to combine operator-selected data and display the resulting crystal structure. Its only advance was enabling the structure to be portrayed more quickly. That was not a technical contribution, so the invention was a computer program as such.
3. The advantages of reduced labour and error, and the provision of a new modelling tool, were ordinary advantages of using a computer program. They did not answer the technical-contribution question.
4. The court expressed the view, without needing to decide the point, that a method of the type performed mentally could remain a method for performing a mental act when implemented by a computer. The phrase was not confined to acts actually carried out by the human mind. The construction avoided dependence on evidence about how the mind works and avoided introducing novelty into the exclusion. A computer implementation did not change the substance of a method of calculation or problem-solving unless a technical contribution was present.
5. Roch LJ and Leggatt LJ agreed with Aldous LJ’s reasons. The order was appeal dismissed with costs; a section 20 extension was ordered and leave to appeal to the House of Lords was refused.

• Court of Appeal (Civil Division): appeal from Laddie J dismissed, with costs.
• High Court of Justice: Laddie J dismissed Fujitsu’s appeal from the Principal Examiner’s decision.
• Principal Examiner acting for the Comptroller: the application was objected to under section 1(2)(c) of the Patents Act 1977 as relating to a computer program and a method for performing a mental act.