The applicant sought to patent an expert system embodied in a computer program for storing information in a way which allowed particular access.
Held: ‘Before turning to the claims, I must deal with a submission of Mr Burkill, who appeared for the applicant. He submitted that the words ‘a scheme, rule or method for performing a mental act’ in section 1(2)(c) only excluded schemes, rules or methods which were intended to be performed and were capable of being performed in the human mind. He submitted that the word ‘for’ introduced a subjective element. Thus, as claim l had as its basis steps which were not intended to be carried out by a human, in that the human mind would not go through those steps, the basis of the claim was not excluded matter.
The word ‘for’ does not, in my view, introduce a subjective element. It means ‘for the purposes of’. The fact that the scheme, rule or method is part of a computer program and is therefore converted into steps which are suitable for use by a person operating the computer does not matter. What is excluded from being patented is a scheme, rule or method for performing a mental act, whatever mental steps or process is involved. As I pointed out in Gale’s Application , it is a question of fact to be decided in each case whether the claimed invention is more than a claim to an invention for a disqualified matter. Just as a claim to a disc containing a program can be in fact a claim to an invention for a computer program, so can a claim to steps leading to an answer be a claim to an invention for a performing a mental act. The method remains a method for performing a mental act, whether a computer is used or not. Thus a method of solving a problem, such as advising a person whether he has acted tortiously, can be set out on paper, or incorporated into a computer program. The purpose is the same, to enable advice to be given, which appears to me to be a mental act. Further, the result will be the advice which comes from performance of a mental act. The method may well be different when a computer is used, but to my mind it still remains a method for performing a mental act, whether or not the computer program adopts steps that would not ordinarily be used by the human mind.’
Judges:
Adous J
Citations:
[1991] RPC 463
Statutes:
Jurisdiction:
England and Wales
Cited by:
Cited – Aerotel Ltd v Telco Holdings Ltd and others, In re Patent Application GB 0314464.9 in the name of Neal Macrossan Rev 1 CA 27-Oct-2006
In each case it was said that the requested patent concerned an invention consisting of a computer program, and was not therefore an invention and was unpatentable. In one case a patent had been revoked on being challenged, and in the other, the . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 07 May 2022; Ref: scu.245713
