Recently I came across the judgment of Floyd J in Kapur v Comptroller General of Patents, Designs and Trade Marks [2008] All ER (D) 142. Mr Kapur wanted to get a patent for a new way of recovering documents which had been deleted from or overwritten on a document management system. The application for the patent (which (if successful) establishes the scope of any patent protection that is ultimately granted) couched the new method in terms of a computer system only.
The issue arose because the law, as implemented in the UK by section 1(2) of the Patents Act 1977, says that certain things are to be excluded from the “patentable inventions” category. The list includes:
“(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; and (d) presentations of information".
For those of you who have been following these cases, you’ll remember that the Court of Appeal, in the Aerotel case in which it was trying to decide how to apply section 1(2), came up with a four step test of patentability:
1. Properly construe the scope of the patent applied for;
2. Identify the “new” contribution the invention makes to the field;
3. Ask whether the invention falls solely within the categories excluded by section 1(2); and
4. Check whether the invention meets the requirement for the invention to have some “technical effect”.
So, the court in Kapur duly attempted to apply this four-step test, and, in doing so, it had to look at whether the invention was excluded on the grounds that it was a “method for performing mental acts”.
In previous case law, this had been interpreted both widely and narrowly. Should the exclusion from patentability be narrowly restricted, to methods actually carried out by the human mind, or should it be widened so as to include methods of the kind carried out by the human mind even where in practice it is a computer which carries them out? The judge decided that the narrow interpretation was the correct one. Provided that any patent granted with this scope could not be infringed merely by a third party himself performing some sort of mental act, the exclusion would not apply.
The case is interesting in that it confirms that the courts are minded to construe the “mental act” exclusion narrowly, which is good news for patent holders as they, at least in respect of this exclusion, have a better chance of obtaining the patent if the exclusion is more narrow. Of course, the pragmatic conclusion is that it’s likely that many inventions of this kind are likely to be excluded under the “business method” exclusion in any event, but that is a whole new post in the making!
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