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English Judge OKs software patent case

Says has 'real prospect of success'

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The exclusion of computer programs from the patenting process will be tested in a Court of Appeal case that could turn UK patent law on its head.

Lord Justice Jacob has given permission for an appeal to be heard over an online system of document assembly that was previously ruled to be excluded from the patent provision. Jacob's decision could clear up a till-now murky area of patent law.

"The issue of exclusions is of public interest, sufficiently uncertain and thus worthy of consideration by the court," wrote Jacob in his decision to grant the right of appeal.

The case rests on a series of exceptions to the patent law, and two in particular. It will test the exclusion of anything that is a "mental process" and anything that is a "computer program".

The case concerns Australian resident Neal Macrossan, who built a web system that automatically gathers the documents needed to incorporate a company in the UK. Using a series of increasingly focused questions, the system automatically generates and registers the complex series of documents on behalf of a client.

His application to patent the process was denied by a Hearing Officer of the Patent Office on the grounds that it fell foul of the exclusions contained in both the European Patent Convention and the UK Patents Act.

The Act states that something cannot be patented 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". It is this set of exclusions which Jacob calls "sufficiently uncertain" to merit an appeal.

The case will constitute a rare test of those exclusions as they relate to computer programs. In 1997 Fujitsu was involved in a similar case heard at the Appeal Court. Fujitsu wanted to patent a computer-based process which modelled crystal structures, something previously only possible through complex plastic modelling.

The court ruled that because the computer simply sped up an existing process, the application must fail because the only change in the process was that it was done by a computer program, which excluded it from patent protection.

The Patent Office Hearing Officer's original ruling came to similar conclusions. Hearing Officer Mrs S E Chalmers said that some of her rulings "follow the decision of the Court of Appeal in Fujitsu Limited’s Application," and that "this method [Macrossan's product] is replicating a mental process and hence the invention falls within the general ambit of the 'mental act' exclusion."

The Patent Office Hearing Officer's original ruling came to similar conclusions. Hearing Officer Mrs S E Chalmers said that some of her rulings "follow the decision of the Court of Appeal in Fujitsu Limited’s Application," and that "this method [Macrossan's product] is replicating a mental process and hence the invention falls within the general ambit of the 'mental act' exclusion."

Macrossan took the Patent Office to the High Court over its decision earlier this year, only to be rebuffed again. Though the High Court pointed out that the Patent Office rules had changed in the year since Macrossan's hearing, Justice Mann said that the application should fail both on the grounds of being the automation of a mental act and of it being a program for a computer.

Jacob's permission to appeal raises the possibility of a new interpretation on one, or indeed both, of those crucial exclusions in an area untested at this level in recent times. In his decision, Jacobs wrote that "the arguments have a real prospect of success".

Copyright © 2006, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

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