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Reviewed 30 November 2008

Applying the Aerotel / Macrossan test

Case studies

The Court of Appeal’s recent judgment in the matters of Aerotel Ltd v Telco Holdings Ltd (and others) and Macrossan’s Application [2006] EWCA Civ 1371 ("Aerotel/Macrossan") PDF document(236Kb) proposed a new test for assessing whether inventions relate to patentable subject matter. This paper gives some examples of how the Office sees the test being applied in practice. The examples chosen are patent applications that were refused by hearing officers earlier this year using the old tests. In every case the new test appears to come to the same conclusion, thus confirming the Court’s view that the new test is consistent with previous decisions of the Court.

Case 1: Agilent Technologies Inc BL O/141/06

This application relates to monitoring a telephone signalling network. It allows the user to look at a variety of different pieces of information relating to both voice messages and data transmission.

Case 2: Arm Limited BL O/066/06

This application concerns an optimized compiler of application code in a data processing apparatus which responds to input signals derived from a non-invasive trace unit coupled to the processing apparatus to continuously modify the compilation process.

Case 3: Touch Clarity Limited BL O/198/06

This application concerns a system which takes an action based on an assessment of a number of possible actions. The system can be one of a wide range of possibilities – highlighted examples are a greetings card website where the customer is presented with a number of choices based on previous selections, and control of a robot vacuum cleaner. Independent claims 1 and 15 claim the system and method in full generality; independent claims 20 and 32 are the system and method restricted to a robotic operating system.

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.