Citibank Na v The Comptroller General of Patents

For patent-exclusion purposes, an invention used in business is not necessarily a method of doing business. The business-method exclusion requires the claimed contribution to operate at the requisite level of abstraction, rather than merely provide information which may assist a business. A method which calculates information content and statistically compares data may nevertheless be a mathematical method, even where it applies conventional mathematical techniques at a relatively practical level. Adding a computer does not alter the substance of the contribution where the computer merely performs the same mathematical process.

Citibank appealed against the refusal by the Comptroller’s Hearing Officer of patent application 0019522.2. The application concerned detecting abnormalities in input data used in financial-risk management by analysing the information content of successive data sets and statistically comparing the results.

The Hearing Officer held that the invention was excluded under section 1(2) of the Patents Act 1977 as a business method and mathematical method, and also found no technical contribution. During the appeal, the parties accepted that the newer contribution-based approach should be applied. The central issues were whether claims 1 and 9 fell within the business-method or mathematical-method exclusions.

1. Appeal dismissed. The Hearing Officer had erred in treating claim 1 as a method of doing business, but the mathematical-method exclusion independently applied and was sufficient to dispose of the appeal.
2. Under section 1(2) of the Patents Act 1977, the correct approach is to ask what the claims, properly construed, contribute to the art outside excluded subject matter. The same approach was stated in Research in Motion UK Limited v Inpro Licensing SARL [2006] EWHC 70, Crawford’s Application 2006 RPC 11 and Macrossan v Comptroller General of Patents, Designs & Trade Marks [2006] EWHC 705.
3. Although claim 1 was plainly intended for use in business, it did not describe how the business was to be conducted. It merely generated information which might be used in business. That was qualitatively different from an underlying business method and lacked the necessary level of abstraction.
4. Claim 1 nevertheless amounted to a mathematical method. Its substance was the calculation of the informational content of two data sets, followed by statistical analysis and comparison to detect possible errors. The exclusion was not confined to highly abstract systems such as calculus. Gale’s Application [1991] RPC 305 showed that applying conventional mathematical techniques to numbers could fall within the exclusion.
5. Claim 9 added a computer, but the computer merely received the data and performed the same statistical process. Looking to substance, it added nothing material and the mathematical-method exclusion covered the whole alleged contribution.
6. The court noted that claim 1 might arguably have fallen within the mental-act exclusion, but that issue had not been properly argued or raised by respondent’s notice. The decision was therefore not based on that alternative.

High Court (Chancery Division): The appeal from the Comptroller’s Hearing Officer was dismissed. The Hearing Officer’s business-method reasoning was rejected, but the refusal was upheld because the claims related to a mathematical method.