Cappellini & Bloomberg, Re

Patent claims must be assessed according to their substance and scope. The court applied the four-stage approach in Aerotel/Macrossan—construction, identification of the contribution, assessment whether it consists solely of excluded subject matter, and a check for a technical contribution.

A computer program does not become patentable merely because it runs on conventional hardware or produces a technical effect inherent in loading software. A relevant technical effect must go beyond that expected from the ordinary operation of a program. Pure data manipulation, presentation of information, mathematical algorithms and business methods remain excluded where the claimed contribution lies wholly in those matters.

Two appeals were heard together. Pablo Cappellini appealed against refusal of UK patent application GB 2381884A. Bloomberg LP appealed against refusal of UK patent application GB 2395941A. Both applications had been refused by deputy directors acting for the Comptroller-General under section 1(2) of the Patents Act 1977.

The Cappellini application concerned computer-implemented routing and coordination of transport carriers, including flexible routes and relay points. The Bloomberg application concerned filtering and mapping financial data on a server before transmission to users’ applications. The central issue was whether the claimed contributions were excluded subject matter or produced a relevant technical effect.

1. Applicable approach. The appeals were governed by the four-stage approach approved by the Court of Appeal in Aerotel/Macrossan [2006] EWCA Civ 1371: construe the claim, identify the contribution, ask whether the contribution consists solely of excluded subject matter as such, and check whether it is technical. Patentability is substantially a question of the scope and form of the claims.
2. Technical effect. A technical effect must be more than the ordinary technical effect of running a new program on a computer. The distinction drawn in Shopalotto.com’s Application [2005] EWHC 2416 (Pat) and RIM v Inpro [2006] EWHC 70 (Pat) was maintained. Reducing information density to permit faster transmission over restricted bandwidth could be relevant. Merely formatting or mapping data for particular software was not.
3. Bloomberg. The contribution was the filtration and mapping of financial data before transmission to users. The claims contained no relevant hardware limitation and did not improve interoperability between hardware items. Their substance was a computer program as such, with no relevant technical effect. The appeal was dismissed.
4. Cappellini. The broad claims involved manipulation of transport-path data by an algorithm and, at most, presentation of information. They were also mathematical methods as such. The more specific claims directed instructions to conventional vehicles and carriers to perform journeys according to the algorithm. The contribution was therefore a method of doing business, not a relevant technical effect. The appeal was dismissed.
5. The court declined to consider material supplied by Mr Cappellini after the hearing because it was inadmissible.

Both appeals were from decisions of deputy directors acting for the Comptroller-General dated 13 June 2006 and 15 June 2006. The High Court (Patents Court) dismissed both appeals.