Background

In October 2006 Jacob LJ gave the leading judgment in the Court of Appeal’s consideration of the correct approach to the exclusions to patentability enshrined in Art 52(2) EPC. The case concerned a patent owned by Aerotel Ltd and a patent application made by Mr Macrossan. The exclusions of concern were the ones concerning software and business method patents. The judgment resulted in a 4 step test to be applied when considering the exclusions from patentability as follows:

  1. properly construe the claim;
  2. identify the actual contribution;
  3. ask whether it falls solely within the excluded subject matter;
  4. check whether the actual or alleged contribution is actually technical in nature.

During the course of his judgment Jacob LJ noted that, in his view, the current decisions of the EPO Boards of Appeal are mutually contradictory. He summarised the contradictory approaches as (A) the contribution approach; (B) the technical effect approach; and (C) the “any hardware” approach (which he considers has three sub-categories). Jacob LJ, supported by the UK Patent Office (soon to be the UK Intellectual Property Office as of 1 April), then invited the President of the EPO to consider putting various questions before the President of an Enlarged Board of Appeal in order to iron out the alleged contradictory approaches to the exclusion of patentable matter contained in Art 52(2) EPC.

Outcome

Aerotel/Macrossan has won three followers and lost one but Mr Macrossan is by no means defeated and is planning a second petition to the House of Lords.

Wins: On 2 November 2006 the UK Patent Office released a new practice note announcing that the 4 step test “will be applied by examiners with immediate effect”. The Office noted in particular Jacob LJ’s comments that Art 52(2) EPC is not a list of exceptions to patentability but instead a positive category of things which are not to be regarded as inventions. Accordingly the general UK and European principle of statutory interpretation that exceptions should be construed narrowly does not apply. The Office also published a short list of recent applications that had been refused under the old approach and noted that the new approach did not result in a different outcome. The second win came in the form of Pumfrey J’s decision in the High Court on 13 March 2007 in connection with patent applications by Bloomberg and Mr Capellini. Bloomberg’s application concerned treating data on the server side so that it is compatible with the recipient’s receiving mechanism prior to transmission. Mr Capellini’s application concerned an algorithm for organising and rerouting carriers when delivering packages to enable the identification of new and more efficient routes and pick-up and drop-off points. Neither application succeeded before the Court.

Whilst Pumfrey J followed the 4 step test he noted that the High Court is equally bound by Macrossan and Fujitsu as they are both Court of Appeal authorities and the High Court is not permitted to choose between them. Jacob LJ was alive to this issue and, when setting out his 4 step test in Macrossan, noted, that the 4 step test asks the same questions as those raised in Fujitsu but in a different order. He noted that Fujitsu asks first whether there is a technical contribution (really two questions – What is the contribution? Is it technical?) and then added the rider that a contribution which consists solely of excluded matter will not count as a technical contribution. The upshot is that regardless of which approach is used the result will be the same.

The third win comes in the form of the House of Lords’ refusal of Mr Macrossan’s application for leave to appeal the Court of Appeal’s judgment. This represents the end of the UK legal road for Mr Macrossan and a determination (for the time being!) of the UK’s approach to the law – it is as enshrined in Macrossan and Fujitsu.

Losses: The loss comes in the form of a letter from Prof. Alain Pompidou, President of the EPO to Jacob LJ concerning the questions posed in Jacob LJ’s judgment. Essentially the President has point blank refused to consider the questions going so far as to say “I believe that there are insufficient differences between the Board of Appeal decisions dealing with Article 52 EPC exclusions on important points of law that would justify a referral at this stage.” In other words the EPO does not put any store by Jacob LJ’s summary of three contradictory approaches.

Extra Time?

Although, in our view, Mr Macrossan has reached the end of the UK court system his bid for patent protection is in no sense over.

Mr Macrossan owns an Australian patent and his EP application is pending which designates, amongst other countries, GB. The determination of this application should help to illuminate whether Jacob LJ or Prof. Pompidou are correct in their view of the contradictory nature of the EP’s approach to patentability and the usefulness or otherwise of the proposed questions.

We say that in our view Mr Macrossan has reached the end of the UK court system but it is clear from Mr Macrossan’s website that he does not agree. He says that the Office noted in its recommendation that leave ought to be refused that the EPO would be dealing with this issue as a result of Jacob LJ’s questions. Further he claims that the House of Lords considered the request for leave to appeal on the basis that they may refuse leave if the case ought not to be considered by the House at the time of the request. Mr Macrossan submits that the fact that Jacob LJ’s questions were outstanding with the EPO would have been a material consideration in the House of Lords’ refusal of leave. Accordingly Mr Macrossan says that in light of the EPO’s letter refusing to consider Jacob LJ’s request he is considering lodging a second petition to the House of Lords re-seeking leave to appeal. All that can be said is “Watch this space…”