Australian resident Neal Macrossan had been seeking to patent the invention, which uses a series of increasingly focused online questions to automatically generate and register the documents needed to set up a company in the UK. It is currently in use online at UKcorporator.co.uk.
But UK patents, like European patents, are only supposed to be granted for inventions which are capable of industrial application, which are new and which involve an inventive step. Schemes for performing mental acts, carrying out business methods and computer programs "as such" are among the exclusions from the scope of patentability.
So in March 2005, Hearing Officer Mrs S E Chalmers refused Macrossan’s application on the grounds that the invention was excluded on all three counts – being a computer program, a scheme for performing a mental act and a means of carrying out a business method.
Macrossan appealed, arguing that the Hearing Officer had failed to apply the exclusions properly. She had also “failed to take into account previous patents, failed to give reasons and demonstrated apparent bias,” he claimed.
Giving his ruling on Monday, Mr Justice Mann disagreed.
On the question of exclusions, the Judge explained that the approach taken by the Patents Office and the courts had changed in the time since Mrs Chalmers made her ruling.
Patents Office examiners now:
- “Identify what is the advance in the art that is said to be new and not obvious (and susceptible of industrial application),” and
- “Determine whether it is both new and not obvious (and susceptible of industrial application) under the description of an 'invention' in the sense of” the European Patent Convention, reflected in the UK by the Patents Act.
Previously, examiners had simply applied a “technical contribution” test to check whether each invention falls out with the exclusions laid down in the Patents Act.
Taking the earlier approach first, the Judge found that the invention did relate to a method of performing a mental act because:
“The point of the invention is to arrive at the appropriate company with the appropriate incorporation documents on the basis of information supplied by the user. This act of applying the criteria to arrive at the correctly documented conclusion seems to me to be clearly a mental act. Without a computer a skilled individual would do the same thing in much the same way.”
It was not, however, a method of doing business.
“The activity involved in the invention is a business service, or end product, for which the customer is prepared to pay and for which the customer contracts,” said Justice Mann. “That may entitle the invention to the title 'a method of providing business services', but that is not what the exclusion in the Act is aimed at, in my view. The exclusion is aimed more at the underlying abstraction of business method”.
However, he also found that the invention was excluded on the ground that it was a program for a computer.
Applying the technical contribution test, Justice Mann then found that there was little, if any, technical contribution made by the invention.
“The heart of its effect is an automation process, but what it automates is a mental act,” he wrote.
The Judge then turned to the new approach, but came to the same conclusions, finding firstly that the invention was, in substance, a computer program; and secondly, its contributions to the art amounted to “a degree of automation, ease and efficiency”.
This amounted to the automation of a method of performing a mental act, which was within the excluded subject matter and therefore not patentable. The fact that it resulted in the production of documents was irrelevant.
“The substance of the patent is a method of performing a mental act by a computer. The documents are produced as a result of the (notional) mental act,” said Justice Mann.
The Judge also considered a claim of apparent bias on the part of the Hearing Officer, which was largely based on an undisclosed report submitted to the Hearing Officer from the original patent examiner, and a Patents Office document published on the internet stating, according to the judgment:
"The UK Patent Office has a strong tradition of rejecting patent applications for software … this tough approach has ensured that only patents with a 'high presumption of validity' are granted."
This, said Macrossan, indicated that the Hearing Officer would not have an impartial approach to the case.
But Justice Mann rejected the claim, finding that the hearing held by the Hearing Officer was part of the application process and was not the type of hearing to which anti-bias rules, which apply in judicial tribunals, could be imported in full.
While procedural fairness was required, this did not preclude “internal discussions”, he said. Macrossan or his agent should have been aware that such reports were made – they are detailed in the Patents Hearing Manual – but did not ask to see it. Nor did they complain about unfairness or bias at the time, and it was now too late to do so.
The judge then considered whether Mrs Chalmers should have looked at previously granted patents, that, according to Macrossan, made as much of a technical contribution as his patent did.
In his opinion this was not necessary.
“To rely on previous patents as some sort of benchmark would be to give the earlier patent in time a primacy which the legislation does not warrant,” he ruled. “That is not to say that the Hearing Officer may not look at earlier patents. If he or she gains some assistance from them, then so be it, but that must be a matter for the Hearing Officer to decide on the particular case before him or her.”