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

For the purposes of the exclusions in Patents Act 1977, the substance of a claimed computerised process must be identified. A process which automates the application of criteria to produce legally required company-formation documents may remain a method of performing a mental act and a computer program. A business service or tool is not necessarily a method of doing business: that exclusion is directed to an underlying business method, such as a market-making technique or a way of conducting an entire business. The technical-contribution inquiry asks what the claimed invention contributes to the art outside excluded subject matter. Automation, convenience, efficiency and reduced cost or labour do not suffice where the contribution remains an excluded mental act implemented by a computer.

The appellant appealed under section 97 of the Patents Act 1977 from a decision of a Deputy Director acting for the Comptroller. The application concerned an automated computer-based method for obtaining information from a user, selecting the documents required to incorporate a company, and generating those documents from templates.

The hearing officer refused the application under section 1(2), finding that the claimed invention involved a mental act, a method of doing business and a program for a computer, without the necessary technical contribution. The appeal challenged the substantive reasoning and alleged errors concerning onus, reasons, procedural fairness, bias and reliance on earlier patents.

1. Appeal dismissed. The hearing officer had correctly understood the onus. The applicant receives the benefit of substantial doubt, but this does not impose a criminal standard or require an application to succeed whenever any doubt exists.
2. The application had to be assessed on its own merits. Earlier granted patents could provide assistance, but there was no obligation to compare the application with them or treat them as benchmarks for patentability.
3. The claimed process fell within the mental-act exclusion. Its substance was the application of criteria to information supplied by the user in order to reach the appropriately documented company-formation result. A skilled individual could perform the same operation without a computer.
4. The hearing officer had erred in treating the invention as a method of doing business merely because solicitors might perform the service for remuneration. The exclusion concerns an underlying business method, such as a market-making technique or a method of conducting an entire business. The claimed facility was a tool or business service, not such an underlying method.
5. The substance of the claim was nevertheless a computer program. References to hardware and to the production of documents did not alter that substance. The production of a physical or electronic end product did not distinguish the claim from earlier computer-program cases.
6. The applicable technical-contribution inquiry was what the correctly construed claim contributed to the art outside excluded subject matter. The inquiry was case-specific. The invention contributed automation, ease and efficiency, but what it automated was a mental act. That contribution remained within the excluded subject matter and was insufficient to avoid the exclusions as such.
7. The alleged procedural defects did not justify intervention. The hearing officer gave adequate reasons, and the examiner’s internal report did not create bias or procedural unfairness where the relevant points were available to the applicant and had been fully addressed.

Written submissions on consequential orders were directed to be exchanged within the stated periods.

The appeal was brought under section 97 of the Patents Act 1977 from the decision of Mrs S E Chalmers, Deputy Director acting for the Comptroller, dated 22 March 2005. The High Court dismissed the appeal.