25 August 2005

Patents - Excluded Matter: NMR Holdings No. 2 Pty Ltd.'s application

The first case on s.1 (2) exclusions since Peter Prescott QC's decision in CFPH's application [2005] EWHC 1589 and Pumfrey J's in Halliburton Energy Services, Inc. v Smith International (North Sea) Ltd [2005] EWHC 1623 (Pat) (21 July 2005) has now come on before a hearing officer in the Patent Office.

The applications were brought by NMR Holdings No 2 Pty Limited. Two applications for a method of designing coils for magnetic resonance imaging apparatus were rejected by the examiner "on the grounds that they related to mathematical methods and/or methods of performing mental acts". Amendments introducing a step of producing the coil as the product of a design process and methods of manufacturing the coils failed to change her mind.

Before proceeding further, it is worth explaining that the countries that are party to the European Patent Convention exclude the following from patentability:
(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business,
or a program for a computer;
(d) the presentation of information.

However, those exclusions are not absolute. A proviso to the above paragraphs in the British patents legislation continues "..... The foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such." Over the years, there has been a lot of discussion in the European and national patent offices and the courts of the contracting states as to what the exception to the exception and, in particular, the words "as such" actually mean.

In CEPH's application Mr Prescott detected a divergence in the approaches of the British and European Patent Offices to the patentability of software related and business method inventions. Whether such divergence makes much practical difference is hard to say because the Patent Office applied both the European and British methodologies to the hypotheticals presented at the "technical contribution" consultation road show earlier this year and could find only one case where it might have made a difference (see "Computer-Implemented Inventions, Patentability: analysis of the effect of the CFPH and Halliburton judgments", 23 Aug 2005).

The hearing officer, Mr M G Wilson, accepted the applicant's invitation to apply the European approach but found that it did not assist him to overcome the examiner's objections. The addition of a manufacturing step to the design stage did not result in either a new product or new process. The only advance was in the design process and that was, of course, excluded from patentability as a mental act. As it was not possible to save the application by any kind of amendment, it followed that the patent application had to fail.

There is a right of appeal to the Patents Court but it is hard to see what more could be said.

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