[2008] EWHC 146 (Pat)
Ch D (Patents Ct) (Lewison
J) 6/2/2008
INTELLECTUAL PROPERTY -
INFORMATION TECHNOLOGY
COMPUTERS : INVENTIVE
STEP : PATENTABILITY : PATENTS : SOFTWARE : COMPUTER PROGRAMS AS SUCH NOT
PATENTABLE : COMPUTER PROGRAMS : INTERNET : LINKS : PRESENTATION OF INFORMATION
: EUROPEAN PATENT CONVENTION : Art.52 EUROPEAN PATENT CONVENTION
A claimed invention for a method of analysing a file or document in an open window of a
computer, searching the computer and other sources, such as the internet, for
files with similar or relevant content, creating links to those files and then
displaying the links on the user's computer was excluded from patentability
since the claim was for a computer program as such.
The
appellant company (C) appealed against the rejection of its patent application.
The
claimed invention was a method of analysing a file or
document in an open window of a computer, searching the computer and other
sources, such as the internet, for files with similar or relevant content,
creating links to those files and then displaying the links on the user's
computer.
The
examiner found that the invention was excluded from patentability both as a
computer program and as the presentation of information.
The
hearing officer upheld the examiner's objections based on the invention
consisting of a computer program.
C
appealed.
The
respondent comptroller by way of respondent's notice sought to uphold the
examiner's conclusion that the application was excluded from patentability on
the ground that it was simply the presentation of information.
HELD: (1) The contribution made by the claim
was solely of excluded matter under the European Patent Convention 1973 Art.52
since the claim was for a computer program as such, Aerotel Ltd v Telco Holdings Ltd (2006) EWCA Civ
1371, (2007) Bus LR 634 applied.
Automatic
text analysis, comparison and results generation were a paradigm example of a
case in which the contribution fell squarely within excluded matter as a
program for a computer.
The
claimed contribution so far as the first element, namely analysis and
generation of links, was concerned did not exist independently of whether it was
implemented on a computer, Gale's Patent Application (1991) RPC 305 CA (Civ Div) and Raytheon Co v Comptroller General of Patents, Designs and
Trade Marks (2007) EWHC 1230 (Pat), (2007) Bus LR D98 considered.
On the
contrary it depended on a computer processing or displaying information in an
active window and on a search program to analyse it
and to compare and generate results.
Nor did
it require new hardware or a new combination of hardware; nor did it result in
a better computer, Aerotel and Raytheon considered.
The
only effect produced by the invention was an effect caused merely by running
the program which consisted of the manipulation of data.
It was
in short a claim to a better search engine.
The
second element of the claimed contribution, providing an icon that displayed
the list of links, was also a computer program as such.
The
hearing officer had been right to conclude that the claimed invention was a
computer program as such and hence excluded from patentability.
(2) The
hearing officer ought also to have held that the second element of the
contribution was excluded because it related to the presentation of
information.
The
only effect was produced by running the program, which so far as that element
of the contribution was concerned consisted of the display of information.
Appeal dismissed
Counsel:
For the appellant: Anna
Edwards-Stuart
For the respondent: Michael Tappin
Solicitors:
For the appellant:
HGF Law
For the respondent: Treasury Solicitor
LTL 8/2/2008 (Unreported elsewhere)
Judgment: Approved - 17
pages
Document No. AC0116289
Source: Lawtel http://www.lawtel.co.uk
, copyright acknowledged.