Patent decision

BL number
Concerning rights in
Hearing Officer
Mr A Bartlett
Decision date
19 July 2006
Person(s) or Company(s) involved
Touch Clarity Limited
Provisions discussed
PA 1977 sections 1(2)(a) 1(2)(c)
Excluded fields (allowed), Excluded fields (refused)
Related Decisions


The claims concern a controller for controlling a system to carry out one of a range of candidate actions so that an objective function of the system is optimized. A candidate action is selected so as to minimize the growth in regret. This was taken to mean that the system selects the next candidate action by balancing previous experience of performed actions with a degree of exploration of other candidate actions.

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. The invention was felt to lie in an optimization process which, following the reasoning in Vicom and Halliburton, was not of itself patentable, but could form the basis of a patentable claim if suitably tied to a technical application i.e. controlling a robot. However, the Hearing Officer found that at least some of the claims were bad as they encompassed both excluded and non-excluded subject matter.

Full decision O/198/06 PDF document54Kb