Case 4: Robert B Franks’ Application BL O/153/06
This application relates to a networked system for administering the renewal of intellectual property rights such as patents and trade marks whereby a member of the public receives a renewal quotation over the internet and orders and pays for the renewal if he so wishes.
Applying the test in Macrossan/Aerotel
1. Construe the claim:
The above paragraph gives a reasonable summary of the invention defined in the claims.
2. Identify the actual contribution:
The contribution made by the invention is a semi-automatic system for helping users manage the renewal of intellectual property rights by calculating the cost of renewing particular IP rights in various jurisdictions and effecting the renewal as the user sees fit. Alternatively, and given that the specification acknowledges that the hardware employed to implement the invention is conventional, the contribution is a computer program for managing such rights.
3. Ask whether it falls solely within the excluded subject matter:
The process of renewing IP rights is essentially a business activity and so the contribution falls squarely within the method of doing business category. As it is implemented in software it also falls within the computer program category. There is nothing in the contribution that falls outside these excluded categories.
4. Check whether the actual or alleged contribution is actually technical in nature:
This step is redundant having found it to fall solely within the categories of excluded matter in step 3.
Conclusion
The invention is excluded from patentability by section 1(2). The Hearing Officer reached the same conclusion by applying the CFPH and technical contribution tests albeit under some different categories. In particular he found it unpatentable as a computer program but concluded it was not a method for doing business following the interpretation given to that category by Mann J in Macrossan. That interpretation, of course, has now been overturned by the Court of Appeal.
The Hearing Officer also found that it was excluded as a mental act. That would also be true under the Aerotel/Macrossan approach if the obiter comments in Fujitsu are followed, but not if the obiter comments in Aerotel/Macrossan are followed.
