Lord Justice Jacob has given permission for an appeal to be
heard over an online system of document assembly that was
previously ruled to be excluded from the patent provision. Jacob's
decision could clear up a till-now murky area of patent law.
"The issue of exclusions is of public interest, sufficiently
uncertain and thus worthy of consideration by the court," wrote
Jacob in his decision to grant the right of appeal.
The case rests on a series of exceptions to the patent law, and
two in particular. It will test the exclusion of anything that is a
"mental process" and anything that is a "computer program".
The case concerns Australian resident Neal Macrossan, who built
a web system that automatically gathers the documents needed to
incorporate a company in the UK (www.ukcorporator.co.uk). Using
a series of increasingly focused questions, the system
automatically generates and registers the complex series of
documents on behalf of a client.
His application to patent the process was denied by a Hearing
Officer of the Patent Office on the grounds that it fell foul of
the exclusions contained in both the European Patent Convention and
the UK Patents Act.
The Act states that something cannot be patented if it is: "a
scheme, rule or method for performing a mental act, playing a game
or doing business, or a program for a computer". It is this set of
exclusions which Jacob calls "sufficiently uncertain" to merit an
appeal.
The case will constitute a rare test of those exclusions as they
relate to computer programs. In 1997 Fujitsu was involved in a
similar case heard at the Appeal Court. Fujitsu wanted to patent a
computer-based process which modelled crystal structures, something
previously only possible through complex plastic modelling.
The court ruled that because the computer simply sped up an
existing process, the application must fail because the only change
in the process was that it was done by a computer program,
which excluded it from patent protection.
The Patent Office Hearing Officer's original ruling came to
similar conclusions. Hearing Officer Mrs S E Chalmers said that
some of her rulings "follow the decision of the Court of Appeal in
Fujitsu Limited’s Application," and that "this method [Macrossan's
product] is replicating a mental process and hence the invention
falls within the general ambit of the 'mental act' exclusion."
The Patent Office Hearing Officer's original ruling came to
similar conclusions. Hearing Officer Mrs S E Chalmers said that
some of her rulings "follow the decision of the Court of Appeal in
Fujitsu Limited’s Application," and that "this method [Macrossan's
product] is replicating a mental process and hence the invention
falls within the general ambit of the 'mental act' exclusion."
Macrossan took the Patent Office to the High Court over its
decision earlier this year, only to be rebuffed again. Though the
High Court pointed out that the Patent Office rules had changed in
the year since Macrossan's hearing, Justice Mann said that the
application should fail both on the grounds of being the automation
of a mental act and of it being a program for a computer.
Jacob's permission to appeal raises the possibility of a new
interpretation on one, or indeed both, of those crucial exclusions
in an area untested at this level in recent times. In his decision,
Jacobs wrote that "the arguments have a real prospect of
success".
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