Jacob LJ seeks challenge to Patent Act exclusions

The Court of Appeal could turn UK patent law on its head after Lord Justice Jacob decided to hear a case testing the Patent Office’s exclusion of software patents.

Private inventor Neal Macrossan appealed against the Patent Office’s refusal to grant him a patent for his online document assembly system. Mr Justice Mann upheld the Patent Office’s decision in the High Court.

Jacob LJ said Macrossan had “a real prospect of success” after reading his skeleton argument.

The UK Patents Act excludes software, unlike in the US. Article 52 excludes anything that is “a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer”.

Jacob LJ said: “The issue of the Article 52 exclusions is of public interest and sufficiently uncertain, thus worthy of an appeal.”

Andy Bartlett, deputy director at the UK Patent Office, told The Lawyer: “We’re stressing the need for the case to be heard as soon as possible because there are implications for a large number of live cases.”

The Court of Appeal will simultaneously hear healthcare company Aerotel’s patent dispute with communications company Telco.

It marks the first time the Court of Appeal has heard two patent cases at the same time. “I’m not aware of this ever happening before,” said Bartlett.

The last time the Court of Appeal looked at the exclusions was in 1997, when Fujitsu tried to patent a computer program to model crystal structures. The Court refused, saying: “A meth-od remains a method for performing a mental act, whether a computer is used or not.”

Macrossan, a qualified solicitor, has so far represented himself in court. Colin Birss at 3 New Square is standing counsel to the Patent Office and was instructed by Treasury Solicitor Andrew Prior.