Patent decision

BL number

O/141/06

Concerning rights in

GB0223268.4

Hearing Officer

Mr P Hayward

Decision date

31 May 2006

Person(s) or Company(s) involved

Agilent Technologies Inc

Provisions discussed

PA1977 section 1(2)

Keywords

Claim construction, Excluded fields (refused)

Related Decisions

None

Summary

The invention relates to the processing of data records collected by a known call monitoring device in a telephone signalling network. The invention provided more flexibility than the prior art because it could analyse more than one type of record and carry out more than one analysis on a given type of record. The only embodiment described was implemented in software.

The Hearing Officer held that the correct approach was the one originally formulated by Mr Peter Prescott QC in CFPH LLC's Application [2006] RPC 5 and broadly endorsed by a number of subsequent High Court judgments, namely, identify the contribution and ask whether it falls solely within the excluded areas. He also held this was consistent with the technical contribution approach of Fujitsu Limited's Application [1997] RPC 608 because if the contribution was technical, it was likely that it lay outside the excluded areas. He agreed that in identifying the contribution, one must start with the claims and not look vaguely in the specification for something that could be called the "substance" of the invention. However, one should not be beguiled by the precise formulation of the claims – that is what the reference to "substance" meant in Merrill Lynch's Application [1989] RPC 561. Relying on Macrossan's Application [2006] EWHC 705, he also ruled that software architecture could be caught by the exclusion for computer programs.

The Hearing Officer held that selecting the type of record and type of analysis were not technical features, and that there was no contribution outside of excluded matter, in particular the exclusion of programs for computers. He rejected a submission that the invention was saved by the fact that it could, arguably, be implemented in hardware on the grounds that a claim covering both patentable and unpatentable subject matter was a bad claim. He also held that the method claim as drafted did not go beyond steps that could be carried out mentally and was therefore caught by the mental act exclusion.