We previously commented on the flexibility of the UK IPO in deciding sixteen applications concurrently. There were also a few nuggets of information in the decisions that might eventually turn into important practice points at the UK IPO, particularly the Hearing Officer’s comments on the burden of proof for refusing an application.
The Landmark Graphics applications each related to geophysical modelling and were all rejected as being excluded subject-matter as they related to computer programs and some were also considered to be mathematical methods. To make their decision, the Hearing Officer undertook an analysis of the relevant law (and I suggest it may be useful for any trainees out there). In the analysis the Hearing Officer made this important point:
“[The representatives] suggest that an applicant should be given the benefit of the doubt unless there is no reasonable doubt to be had. Insofar as this reasonable doubt is the same as the substantial doubt to which Mann J refers [in Aerotel/Macrossan], I can agree with this principle. I consider that the question for me is whether or not there is such substantial doubt regarding each of these seven applications, such that where an applicant makes a reasonable case that their invention is patentable then I am bound to find in their favour. I shall proceed on this basis.”
Effectively, the Hearing Officer is suggesting that examiners should give the benefit of doubt to the applicants if they can make a reasonable case that an invention is technical. I’m sure many applicants will feel some examiners have not been doing so. This passage raises questions such as:
will the UK IPO examiners start adopting a softer approach?
will examiners start searching applications even if they consider they might be excluded?
how will examiner’s react if this argument is put to them?
will the UK IPO issue a new Practice Notice following this decision?
There are some other interesting points raised in the decision. For example in considering Halliburton the Hearing Officer looked at the substance of the decision rather than simply applying the narrow conclusion and considered that: “when assessing the actual contribution in a computer-implemented invention, I shall take proper account of the task performed by the computer and determine whether the task falls outside the excluded categories.” From a practical point of view, it seems therefore that one way to avoid excluded subject matter problems in the UK could be to emphasise the task performed by the computer. Applying this to the application in question, the Hearing Officer stated: “While the method is implemented using a computer, I do not believe that it is merely a computer program as such and nor is it a mathematical method. It seems very much that the method ‘may be used e.g. in investigating properties of the object’ along the lines described in Vicom, the object in question being the modelled geological structure … [T]he contribution is technical in nature, tied to a very specific technical field of endeavour or task.” The Hearing Officer did not comment on whether the use of real data takes a method outside of the computer program exclusion (however the implication is that it might at least create enough doubt not to raise an objection).
Finally, the Hearing Officer also stated that “[i]t seems therefore that there is a burden upon an examiner to demonstrate that an invention falls foul of the exclusions and that to overcome such an objection an applicant must do more than ‘show that … it merely arguably covers patentable subject-matter.'” This is a good point to note for all practitioners.