Raytheon loses patentability appeal

Recently decided by Mr Justice Kitchin at the Patents Court for England and Wales (and reported on BAILII here), Raytheon's appeal against a decision by the Comptroller General of Patents, Designs and Trade Marks (to give him his full title), refusing their patent application (GB2381614A) under section 1(2), has been unsuccessful.

The decision at the Office in February 2006 (published as BL O/047/06) had been made based on the law at the time, being a collection of recently decided High Court cases and older Court of Appeal decisions. The parties agreed in June 2006 that the appeal should not be heard until the Court of Appeal had considered the then pending Aerotel case, which then arrived at the end of October 2006.

For the appeal, the Comptroller maintained his objection that the invention related to excluded subject matter, in particular that of being a computer program as such, under section 1(2)(c), which was the basis for the Office decision. The Comptroller submitted that the appeal could also be dismissed on other grounds including a method for doing business or the presentation of information. Raytheon argued that the Comptroller was wrong in his decision, and that objections not maintained at the hearing were not open to be raised on appeal.

Kitchin J therefore had to decide whether the Comptroller was to be allowed to raise further objections, as well as whether the previous decision was correct. Objections relating to methods of doing business or presentation of information, although raised by the examiner, were not pursued during prosection of the application. Raytheon argued that the Comptroller could and should have raised all his grounds of objection at the first hearing, since they were entitled to know where they stood. In relation to this point, Kitchin J stated (at paragraphs 25-31):

"[I]f 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. Similarly, the court must take into account the public interest in not allowing a defective application to proceed to grant.
[...]
I believe the statutory obligation on the Comptroller, the public interest in ensuring that defective applications do not proceed to grant, the nature of the proceedings, the nature of the new objections and the fact that Raytheon has now had ample notice of them do constitute special circumstances which justify allowing them to be taken at this stage."

He then went on to find that the application was not patentable, following the four-step test from Aerotel, and further commented (at para 34):

"In considering step iii) I would make the following preliminary observations. First, a convenient way of approaching the step is to ask whether there is any aspect of the contribution which does not fall within any of the exclusions. If there is then the invention does not relate to any excluded subject matter as such and is potentially patentable. Second, it is possible that the technical contribution does not fall wholly within any one of the exclusions but does fall wholly within two or more. [...] In such a case the contribution would still fall wholly within excluded subject matter. It would not be an invention within the meaning of Art. 52 of the EPC or s.l of the Act."

The IPKat thinks that this decision is a sensible one, and must be correct (barring an apparent slip in the paragraph above: if the contribution is technical in nature, it would presumably not be excluded). An applicant who has already had their application refused should not be allowed to get away on appeal just because a different ground for exclusion was not raised. Also, if an invention is excluded from patentability for falling within one category under section 1(2), it will still be excluded if it falls within more than one category.