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The High Court has backed the Comptroller General of Patents in refusing a company a patent for inventions which were computer programs. The ruling in the appeal followed the lead of a recent landmark case.

US defence giant Raytheon wanted to patent an inventory management system which used images as well as text to help someone identify what machinery was contained in a factory or facility. It applied for a patent for the system but was refused by the Comptroller.

The whole case was postponed until after the Court of Appeal ruled in the Aerotel and Macrossan cases. In these cases, new steps were identified as the best way to determine whether or not an invention was patentable under one section of patent law.

An invention cannot be patented, according to the Patents Act, 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 ... as such".

The Aerotel and Macrossan judgment laid out how patentability should be assessed, and it is still in its early days as a precedent, having only been set in October 2006.

It said that a four-stage test should be applied which should identify what the invention is; identify what the invention has added to human knowledge; ask whether all of the invention's parts are identified by the Act as unpatentable; and determine if the invention makes a technical contribution.

Vivien Gray, a lawyer in the intellectual property group of Pinsent Masons, the law firm behind OUT-LAW.COM, said the decision was purposely postponed until after the Court of Appeal had considered the Aerotel case. "It is interesting because it confirmed the application of the four stage test," she said. "Although Mr Justice Kitchin had no difficulty in applying the first two stages of the test to the invention, the patent application fell at the third stage [exclusion]."

"This was because the contributions made by the invention were found to fall solely within the excluded subject matter set out in the Patents Act and the European Patent Convention," said Gray.

Justice Kitchin said that patent law did not exclude inventions that could only be operated via a computer. It was inventions which were simply a computer program and involved no other innovation that could not be patented.

"The objection does not apply just because the only practical way to implement the invention is to use a computer," wrote Kitchin in his ruling. "For these reasons I do not believe that this aspect of the invention can be said to be a computer program as such ... the hearing officer did not address this part of the contribution in his decision and in my judgment he fell into error in failing to do so."

"Not all computer programs are automatically excluded just because they are computer programs," said Gray. "That is only the case if the patent application relates to the computer program as such. If the computer program makes a technical contribution then it is potentially still patentable."

Kitchin also allowed the Comptroller to make arguments that had not been made initially. While this is unusual in an appeal, which is usually decided on the basis that a trial judge made a legal mistake, Kitchin said that it should be permitted because of the unusual position of the Comptroller.

"[On appeal], the Comptroller is essentially seeking the guidance of the court rather than defending the decision of the hearing officer. His job is to reject patents which should not be granted and to grant patents which should. For this reason counsel acting for the Comptroller seeks to present matters in an objective and non partisan manner," said Kitchin.

"If it appears to the Comptroller that he has failed to take a proper objection then I believe he has an obligation to seek to raise it on appeal consistent with his statutory duty to refuse applications which do not comply with the requirements of the Act," he said. "Similarly, the court must take into account the public interest in not allowing a defective application to proceed to grant."

Kitchin also said that the new arguments had been made on paper last summer, so that Raytheon had had plenty time to prepare a case against them.

"Kitchin found that the important thing here was to ensure that defective applications do not proceed to grant, even if objections are not raised in the most efficient way," said Gray.

Copyright © 2007, OUT-LAW.com

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

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