Kapur v Comptroller General of Patents, Designs & Trade Marks

For computer-implemented inventions, the contribution must be assessed in substance. A conventional computer programmed to store, manipulate and retrieve data in a particular way ordinarily contributes only a computer program as such, even if it handles different categories of data or improves data management. The relevant technical-effect question is whether the contribution exists independently of computer implementation.

The mental-act exclusion has a narrow scope. It applies only where the claim can be infringed by mental acts as such. A claim containing appropriate non-mental limitations, including physical handling, separation or storage of documents, is not caught by that exclusion. The matter may nevertheless require further examination under other exclusions, including the business-method exclusion.

Rajesh Kapur appealed against the rejection of a group of United Kingdom patent applications concerning document-management, testing and disaster-recovery systems. The applications had been rejected by the Deputy Director acting for the Comptroller on the basis that their contributions lay solely in computer programs as such and, where the claims were not limited to computer implementation, in methods of performing mental acts.

The appeal focused principally on application GB 0519365.1, concerning recovery and recycling of deleted or overwritten document data. The central issues were the proper characterisation of the contribution, the scope of the computer-program exclusion, and the scope of the mental-act exclusion.

1. Appeal allowed in part. The computer-program objection was upheld, but the appeal succeeded insofar as it concerned the mental-act exclusion. The applications were remitted to the Office for further examination.
2. Following Aerotel v Telco and Macrossan’s Application [2007] RPC 7, the proper approach was to construe the claim, identify the actual contribution, ask whether it fell solely within excluded subject matter, and check whether it was technical in nature. The contribution must be assessed in substance rather than form.
3. For the principal application, the contribution was a document-management system enabling deleted and overwritten documents to be stored, separated and retrieved in particular ways. The computer implementation used conventional hardware and did not control a technical process outside the computer. Its contribution therefore lay solely in a computer program as such. Improvements in data handling, accuracy or memory usage did not create a relevant technical effect independent of computer implementation.
4. The mental-act exclusion was narrower than the Office had held. It applied only where the claim could be infringed by mental acts as such. The physical creation, separation and storage of documents in a manual implementation were not merely mental acts. The claims were therefore not rejected on that ground.
5. The same analysis applied to the other delete/overwrite applications and the test-bed and disaster-recovery applications insofar as they were computer-implemented. The Office had to examine whether anything remained after exclusion of computer implementation, including the possible application of the business-method exclusion.

• High Court (Patents Court): The appeal from the Deputy Director’s decision dated 12 September 2007 was allowed only insofar as it concerned the mental-act exclusion. The matter was remitted to the Office for further examination.