US defence giant Raytheon wanted to patent an inventory
management system which used images as well as text to help someone
identify what machinery was contained in a factory or facility. It
applied for a patent for the system but was refused by the
Comptroller.
It appealed the case to the High Court, which also denied the
patent but for slightly different reasons. Controversially, the
High Court also allowed the Comptroller to introduce arguments that
had not been made in the initial case.
The whole case was postponed until after the Court of Appeal
ruled in the Aerotel and Macrossan cases. In these cases, new steps
were identified as the best way to determine whether or not an
invention was patentable under one section of patent law.
An invention cannot be patented, according to the Patents Act,
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
… as such".
The Aerotel and Macrossan judgment laid out how patentability
should be assessed, and it is still in its early days as a
precedent, having only been set in October 2006.
It said that a four-stage test should be applied which should
identify what the invention is; identify what the invention has
added to human knowledge; ask whether all of the invention's parts
are identified by the Act as unpatentable; and determine if the
invention makes a technical contribution.
Vivien Gray, a lawyer in the intellectual property group of
Pinsent Masons, the law firm behind OUT-LAW.COM, said the decision
was purposely postponed until after the Court of Appeal had
considered the Aerotel case. "It is interesting because it
confirmed the application of the four stage test," she said.
"Although Mr Justice Kitchin had no difficulty in applying the
first two stages of the test to the invention, the patent
application fell at the third stage [exclusion]."
"This was because the contributions made by the invention were
found to fall solely within the excluded subject matter set out in
the Patents Act and the European Patent Convention," said Gray.
Justice Kitchin said that patent law did not exclude inventions
that could only be operated via a computer. It was inventions which
were simply a computer program and involved no other innovation
that could not be patented.
"The objection does not apply just because the only practical
way to implement the invention is to use a computer," wrote Kitchin
in his ruling. "For these reasons I do not believe that this aspect
of the invention can be said to be a computer program as such … the
hearing officer did not address this part of the contribution in
his decision and in my judgment he fell into error in failing to do
so."
"Not all computer programs are automatically excluded just
because they are computer programs," said Gray. "That is only the
case if the patent application relates to the computer program as
such. If the computer program makes a technical contribution then
it is potentially still patentable."
Kitchin also allowed the Comptroller to make arguments that had
not been made initially. While this is unusual in an appeal, which
is usually decided on the basis that a trial judge made a legal
mistake, Kitchin said that it should be permitted because of the
unusual position of the Comptroller.
"[On appeal], the Comptroller is essentially seeking the
guidance of the court rather than defending the decision of the
hearing officer. His job is to reject patents which should not be
granted and to grant patents which should. For this reason counsel
acting for the Comptroller seeks to present matters in an objective
and non partisan manner," said Kitchin.
"If it appears to the Comptroller that he has failed to take a
proper objection then I believe he has an obligation to seek to
raise it on appeal consistent with his statutory duty to refuse
applications which do not comply with the requirements of the Act,"
he said. "Similarly, the court must take into account the public
interest in not allowing a defective application to proceed to
grant."
Kitchin also said that the new arguments had been made on paper
last summer, so that Raytheon had had plenty time to prepare a case
against them.
"Kitchin found that the important thing here was to ensure that
defective applications do not proceed to grant, even if objections
are not raised in the most efficient way," said Gray.
