Australian resident Neal Macrossan invented a system for filling
in company formation forms online. He requested a patent for his
system but was refused by the UK Patents Office.
The European Patent Convention (EPC) does not allow patents to
be awarded for inventions which are nothing more than "schemes,
rules and methods for performing mental acts, playing games or
doing business, and programs for computers". That was brought into
UK law by the Patents Act of 1977.
Macrossan appealed to the Patent Office and lost, then to the
High Court, where he also lost. He has now also lost his appeal to
the Court of Appeal where the case was heard by Lords Justice
Chadwick, Jacob and Neuberger.
"We hold that Mr Macrossan's idea is excluded from
patentability," wrote the judges in their decision. The judges
found that the technology failed under the exclusions for "computer
program[s] as such", as had the Patent Office and the High Court.
"The exclusion applies," they wrote.
In their ruling the Court of Appeal judges disagreed with some
of the conclusions reached by the High Court's Justice Mann in the
earlier hearing of the case. Mann had ruled that the invention was
not a method of doing business because it was not abstract enough
and was therefore a "method of providing business services", and
"that is not what the exclusion in the Act is aimed at, in my
view".
"We do not agree," wrote the Court of Appeal judges. "Implicit
in this reasoning are two things, first that there must be
something abstract about a method before the exclusion can apply
and second that the exclusion only applies where what is claimed
involves the completion of a business transaction – the cash
register must ring or at least a debt become due."
"As to the first point, we have already observed that there is
no overarching principle that the exclusions are limited to
abstract matters. There is no reason so to limit the business
method exclusion."
"Nor do we see any requirement that the exclusion be limited to
a completed transaction. Double entry bookkeeping was a good idea,
but it was just a method of doing business, even though there was
no completed transaction involved. So also the idea of having three
trays: 'in, 'out' and 'too difficult'. They are all ways of
conducting a business and no more."
The court, then, ruled that Macrossan's invention was both a
business method and a computer program and therefore not
patentable.
The decision will clear up uncertainty in the area, said the UK
Patents Office. "This judgment is important because previous case
law had left many users unclear as to the correct test for
patentability," said a Patent Office statement. "The approach now
laid down by the Court of Appeal should remove much of the
confusion that had developed. It will be binding on both the High
Court and The Patent Office."
The Patent Office said it would shortly issue a practice note
outlining how its examiners will assess future patent
applications.
