England and Wales High Court (Patents Court) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

		Royal Courts of Justice Strand, London, WC2A 2LL
		04/11/2005

The Hon Mr Justice Kitchin : Introduction

1. This is an appeal from a decision of Mr. Jones, the Deputy Director acting for the Comptroller, that UK patent application GB0108683.4 ("the Application") was excluded from patentability under s.1(2)(c) and 1(2)(d) of the Patents Act 1977 ("the Act").
2. The Application was filed by Mr. Crawford ("the Applicant") on 6 April 2001. A search and examination report was issued on 2 October 2001 in which the examiner listed four prior art documents in support of his objection that the claimed invention lacked novelty and an inventive step. The examiner also raised an objection that the invention was excluded from patentability as being either a method of doing business or relating to the mere presentation of information.
3. The Application was published on 9 October 2002. By a letter dated 31 March 2003, the Applicant disagreed with the examiner's objections. Following a further examination report, the citation of an additional prior art document and subsequent correspondence the matter came before the Deputy Director for his determination. He concluded that the invention as claimed was no more than a method of doing business or the presentation of information, and that it did not make the technical contribution required to make an otherwise excluded invention patentable. On 28 September 2004 the Applicant issued a notice of appeal against that decision.

The Application

4. The Application describes a display system for buses. The display may be used to indicate in which of two modes the bus is operating. If the bus is operating in boarding mode then it will both pick up and drop off passengers. If the bus is operating only in exit mode then it will only drop off passengers. The object of the invention is to provide a means of preventing what was described to me as "bus bunching", that is to say the phenomenon whereby buses tend to arrive in groups rather than at regular intervals. This object is achieved by allowing the bus at the front of a queue of buses to switch into exit mode when it is considered necessary to increase the separation between it and the following buses. When sufficient separation has been achieved, the front bus reverts to a normal mode of operation and the display is switched accordingly.
5. The application has two claims:

"1. The Boarding and Exit Bus Indicators are a method of operation consisting of two separate indicators, which take the practical form of visual or audible apparatus. These would provide the passenger with the necessary information as to whether the bus is in boarding or exit mode.

2. The Boarding and Exit Bus Indicators as claimed in claim 1 wherein if the exit indication is absent from the visual unit whether it takes the form of a text or a symbol or both, this would denote and represent that the bus was in boarding mode."

The Law

6. Section 1(1) and 1(2) of the Act are intended to have the same effect as the relevant corresponding provision of the European Patent Convention, namely Art.52, which, so far as relevant, reads:

"(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

(d) presentations of information.

(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such".

7. In Fujitsu Limited's Application [1997] RPC 608 the Court of Appeal explained the correct approach to be applied in determining whether or not an invention relates to excluded subject matter. Aldous LJ said at page 614:

"…it is and always has been a principle of patent law that mere discoveries or ideas are not patentable, but those discoveries and ideas which have a technical aspect, or make a technical contribution are. Thus the concept of what is needed to make an excluded thing patentable is a technical contribution is not surprising. That was the basis for the decision of the Board in Vicom. It has been accepted by this court and by the EPO and has been applied since 1987. It is a concept at the heart of patent law."

A little later in his judgment Aldous LJ recognised that there may be some difficulty in identifying clearly the boundary line between what is and is not a technical contribution and that each case must be decided on its own facts.

8. In Halliburton Energy Services v Smith [2005] EWHC 1623 (Pat) Pumfrey J referred to many of the English decisions including Fujitsu and concluded at para [215]:

"I am very reluctant to examine a large number of decided cases on this question, since for my purposes I think the law is, as I have indicated, clear, albeit difficult to apply: the contribution that the inventor makes must lie in a technical effect and not merely in excluded subject matter."

9. On the same day that Pumfrey J handed down his judgment in Halliburton, Mr. Peter Prescott QC (sitting as a Deputy High Court Judge) handed down his judgment in CFPH's Applications [2005] EWHC 1589 (Pat). In his comprehensive judgment the Deputy Judge reviewed the law, including the approach adopted most recently by the EPO as illustrated by the decisions of the Technical Board of Appeal in T931/95 Pension Benefit System Partnership and T258/03 Hitachi. He noted that the Board held that the first step is to ask if the invention is excluded by Art. 52(2) without any knowledge of the prior art. If, at this stage, any technical means is identified then the first stage is successfully passed. The next stage is to consider whether the invention is new and not obvious. But in considering these matters anything that is not a technical feature must be ignored.
10. In the light of his review of the law the Deputy Judge concluded at para [95]:

"A patentable invention is new and non-obvious information about a thing or process that can be made or used in industry. What is new and not obvious can be ascertained by comparing what the inventor claims his invention to be and what was part of the state of the existing art. So the first step in the exercise should be to identify what it is the advance in the art that is said to be new and non-obvious (and susceptible of industrial application). The second step is to determine whether it is both new and not obvious (and susceptible of industrial application) under the description 'an invention' (in the sense of Article 52). Of course if it is not new the application will fail and there is no need to decide whether it was obvious."

11. Mr Tappin, who appeared on behalf of the Comptroller, told me that the UK Patent Office intends to follow the approach in CFPH's Applications in the future. For my part I do not detect any difference in substance between this approach and the conclusion expressed by Pumfrey J in Halliburton. Nor do I believe it to be inconsistent with the decision of the Court of Appeal in Fujitsu. At the heart of all of these decisions is the consistent principle that an inventor must make a contribution to the art (that is to say the invention must be new and not obvious) and that contribution must be of a technical nature (susceptible of industrial application and not within one of the areas excluded by Art. 52 (2)).

The Decision of the Deputy Director

12. The Deputy Director referred to the prior art documents cited by the examiner and concluded that they disclosed bus displays controlled by the driver to alter the information displayed on the outside of the vehicle. The Deputy Director noted that this was a point which the Applicant appeared to concede in a letter dated 31 March 2003, where he stated:

"With reference to the Boarding and Exit Bus Indicators it should be made clear that these indicators do not seek to contribute to any technical innovations or enhancement to visual display units of any kind".

13. The Deputy Director then proceeded to identify the differences between the subject matter of the application and the prior art. He concluded that the only differences lay in the nature of the information displayed on the outside of the vehicle and the method of operating a bus in exit mode. As to the former, he decided that this fell within the exclusion set out in s.1(2)(d) of the Act (corresponding to Art. 52(2)(d)), that is to say, presentation of information. As to the latter, he concluded that the exit mode of operation was nothing more than a method of doing business. The whole point of the exit mode was to allow bus drivers to regulate the scheduling of buses as necessary in order to improve the efficiency of the service. He considered that this flexible organisation of buses fell squarely within the exclusion of s.1(2)(c) (corresponding to Art. 52 (2)(c)). The Deputy Director proceeded to consider whether the invention provided a technical contribution and concluded that it did not.
14. I have been unable to find any error in the approach adopted by the Deputy Director. Further, the same conclusion is reached by applying the approach explained in CFPH's Applications. The only advance in the art which is said to be new and inventive is the nature of the information to be displayed on the outside of a bus and the method of operating a bus in exit mode and these are not, individually or collectively, of a technical nature. The information to be displayed is the presentation of information. The method of operating a bus in exit mode is a method of doing business.
15. For all these reasons the appeal must be dismissed.