Patent news Macrossan Appeal. Time to call it a day?

Mr Macrossan was the owner of a patent for an automated method of acquiring the documents necessary to incorporate a company. It involves a user sitting at a computer and communicating with a remote server, answering questions.

The judge described Mr Macrossan’s idea as “a tool”, the notion being that it was akin to any other tool used in a business such as telephone or a machine which makes nails.

The Appeal court rejected Macrossan and based its decision on Merrill Lynch’s Appn. (1989) [1989]Â RPC 561, Falconer J held the subject-matter unpatentable. His reason was, p.12:

” In my judgment, where an invention for which a patent is sought involves any of the matters specified in paragraphs (a) (b), (c) and (d) (“an excluded matter”), on its proper construction the qualification in section 1(2) does require of the Patent Office an initial  enquiry and assessment as to whether the inventive step resides in the contribution of that excluded matter alone – if only that contribution of the excluded matter is the inventive step, the invention is not patentable by virtue of section 1(2). I endorse, therefore, the view of the principal examiner that in the determination of whether or not an application relates to an excluded thing it is necessary to take into account whether the non-excluded features are already known or obvious.”

Generally speaking, an invention which would be patentable in accordance with conventional patentability criteria should not be excluded from protection by the mere fact that, for its implementation, modern technical means in the form of a computer program are used. Decisive is what technical contribution the invention as defined in the claim The questions which it asked as it rejected Macrossans’s appeal were as follows:

(1) What is the correct approach to adopt in determining whether an invention relates to subject matter that is excluded under Article 52?

(2) How should those elements of a claim that relate to excluded subject matter be treated when assessing whether an invention is novel and inventive under Articles 54 and 56?

(3) And specifically:

(a) Is an operative computer program loaded onto a medium such as a chip or hard drive of a computer excluded by Art.52(2) unless it produces a technical effect, if so what is meant by ‘technical effect’?

(b) What are the key characteristics of the method of doing business exclusion?

These questions will need to be asked each time a business method or software patent is to be considered.

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