Patent decision

BL number

O/032/09

Concerning rights in

GB 0616163.2

Hearing Officer

Mr R C Kennell

Decision date

2 February 2009

Person(s) or Company(s) involved

Research Affiliates, LLC

Provisions discussed

PA 1977 section1(2)

Keywords

None

Related Decisions

None

Summary

The invention related to the generation of an index of financial entities for the passive management of a securities portfolio. Applying the Aerotel test in the light of Symbian, the hearing officer held that the contribution was the generation of an index which was built and non-equally weighted on the basis of metrics which did not depend on market capitalization or share price, thus avoiding the volatility inherent in conventional market capitalization-based indexes. Refusing the application, he held that the contribution was solely a business method (analogous to the Macrossan invention in Aerotel) and (in the light of Symbian) a mental act but not solely a mathematical method or computer program, and was not technical in nature. The hearing officer did not accept (i) that the commercial success of the invention and its recognition as a significant advance by industry experts were relevant to whether the invention was excluded, (ii) that because the invention might be said to result in a “tradeable product” it avoided exclusion, or (iii) that because the invention required the technical skills of a “financial engineer” to devise it the contribution became technical in nature.