Patents Court applies Aerotel/Macrossan

Since Aerotel/Macrossan, two appeals from the Patent Office have been heard by the Patents Court. These are Bloomberg’s Application and Cappellini’s Application. Mr Justice Pumfrey issued a combined judgment on 13 March 2007. Both refusals were upheld.

The Bloomberg application was for a program installed on a network of traders’ terminals. The data transmitted to a user is mapped (using a record relating to the applications to which the user has access) to a form suitable for the application to be used by the user in question. The hardware specified could be met by a conventional general-purpose computer programmed to operate in a suitable networked environment. There was no matching of the format of the transmitted data to any deficiency or advantageous feature of any item of hardware: it was purely to format the data so as to render it suitable to cooperate with particular software. Passages in the description indicated a lack of importance that the physical aspects of the system might have to the claimed invention. The application failed on the third Aerotel/Macrossan question. Pumfrey J. held that the advance made was a computer program as such.

The fourth question (“is there a technical effect”) is almost redundant. It is included because it is required by precedent (Merrill Lynch [1989] RPC 561). Pumfrey J. nevertheless considered the question and found there to be no technical effect.

The second appeal (Cappellini) related to a novel algorithm for the “notoriously difficult problem” of determining the routes to be taken by a carrier when delivering packages. The permitted routes were variable to allow carriers to deviate, meet and transfer packages. The invention was claimed in terms of (i) a relay detection and coordination system, (ii) various methods and (iii) a transportation system.

Pumfrey J. dismissed most of the claims as

"the pure manipulation of data without the production of any physical or real-world effect. At best . . . it results in the presentation of information . . . It is equally, I am satisfied, a mathematical method alone."

The claims to a method of coordinating a transportation process were given a little more scrutiny.

"The problem, it seems to me, is that the physical effect that is produced is essentially the movement of known items (viz. lorries, vans, taxis, etc.) over known and existing routes, but equipped with instructions to deviate so as to meet other carriers at the points determined by the algorithmic analysis. The contribution therefore lies in the instructions given to the drivers as to where and when to begin, break and end their journeys, together with instructions, as appropriate, as to the goods to be transhipped at the breaks. The result is therefore a method of performing a set of journeys, and this I consider to be a method of doing business."

Comment

The Bloomberg/Cappellini decision clarifies the mental act exclusion. In Aerotel/Macrossan, the Court of Appeal did not come to a conclusion as to whether the mental act exclusion could be avoided by introducing a feature into the claim that could not be performed purely mentally, and the Patent Office’s practice note expressed this doubt about the scope of the mental act exclusion. In Bloomberg/Cappellini, Pumfrey J. decided that the mental act exclusion could be avoided by “tethering” the claim to a physical article (confirming his earlier decision in Halliburton v. Smith [2006] RPC 653).

The decision also underlines the difficulty in passing the third Aerotel/Macrossan question if all the elements of hardware are admitted to be conventional elements communicating in a conventional manner below the application layer. For a computer implemented invention Pumfrey J. has upheld as patentable, reference can be made to RIM v. Inpro [2006] RPC 20. His reasoning in that case appears unchanged in the light of the new precedent.