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 anyÂ 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) 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 mattersÂ specified in paragraphs (a) (b), (c) and (d) (“an excluded matter”), on its proper constructionÂ the qualification in section 1(2) does require of the Patent Office an initial Â enquiry andÂ assessment as to whether the inventive step resides in the contribution of that excluded matterÂ alone – if only that contribution of the excluded matter is the inventive step, the invention isÂ not patentable by virtue of section 1(2). I endorse, therefore, the view of the principal examinerÂ that in the determination of whether or not an application relates to an excluded thing it isÂ 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 conventionalÂ patentability criteria should not be excluded from protection by the mere fact that, for itsÂ implementation, modern technical means in the form of a computer program are used. Decisive isÂ what technical contribution the invention as defined in the claim The questions which it asked as it rejected MacrossansÂs appeal were as follows:
(1) What is the correct approach to adopt in determining whether an invention relates to subjectÂ matter that is excluded under Article 52?
(2) How should those elements of a claim that relate to excluded subject matter be treated whenÂ 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 aÂ computer excluded by Art.52(2) unless it produces a technical effect, if so what is meant byÂ ‘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 beÂ considered.