Kapur v Comptroller General of Patents

Where an earlier judgment has held patent claims excluded because they concern computer implementation, amended dependent claims remain caught by that decision if they still clearly cover computer implementation. A claimant cannot reopen the issue by adding dependent claims which were not previously proposed where those claims fall within the part of the earlier decision that remains undisturbed. The appeal was therefore dismissed.

Mr Rajesh Kapur appealed against a Patent Office decision concerning amended claims in patent application ’365, relating to document management systems. Earlier, Floyd J had upheld the exclusion of computer-implemented claims but had allowed the appeal concerning claims directed purely to non-computer-implemented systems, remitting that issue for further examination.

The amended claims were dependent claims concerning a document management system and a purpose-built disk. The hearing officer held that they still covered computer implementation and were caught by the earlier judgment and the resulting estoppel. The central issue was whether the amendments took the claims outside the effect of that earlier decision.

1. Appeal dismissed. The court agreed with the hearing officer’s reasoning. The respondent did not seek its costs.
2. The earlier judgment had upheld the exclusion of the computer-implementation claims, while allowing the appeal only insofar as it concerned potential claims relating purely to non-computer-implemented systems.
3. It was possible in principle for dependent claims to escape exclusion even where the claims on which they depended were excluded. That possibility did not assist the claimant here because the amended claims clearly covered computer implementation.
4. The claimant had accepted before the hearing officer that the amended claims still related to a computer implementation. The judge rejected the attempt to diminish the significance of that concession.
5. The amended claims were therefore caught by the earlier judgment and the estoppel arising from it. Other grounds advanced by the hearing officer did not need to be considered.

The appeal was dismissed. No order for costs was sought, and permission to appeal was not requested.

• Patent Office: The hearing officer rejected the amended claims, holding that they remained excluded and were caught by the earlier judgment and resulting estoppel.
• High Court (Patents Court): The appeal was dismissed.