The UK's highest court, the House of Lords, has refused Australian businessman Neal Macrossan leave to appeal against the decision to reject his application for a patent on his invention for an automated system that compiles the documents needed to incorporate a company in the UK.
Macrossan asked the House of Lords for leave to appeal after the Court of Appeal ruled in October that Macrossan's invention could not be patented on the grounds that it was a "business method" and a "computer program".
But in a one line decision, Lord Walker of Gestingthorpe, Lord Hoffmann and Lord Mance said that the case "does not raise an arguable point of law of general public importance".
John Collins, a partner at Marks & Clerk Patent and Trade Mark Attorneys, who represented Macrossan in his request for leave to appeal, said he was disappointed by the decision.
"It is highly surprising that the House of Lords did not consider there to be significant points of law and public interest at stake here," he said.
The decision by the House of Lords represents the end of the line for Neal Macrossan in his attempts to obtain a national patent through the UK Patent Office. But he still has a patent application pending at the EPO, which includes a request for patent rights in the UK.
Many lawyers had thought that a positive Court of Appeal decision for Macrossan would lead to a flood of business method and software patent applications in the UK. Instead, the Court rejected the application and set out a four-step test for determining whether a claimed invention is barred from patentability because it is excluded subject matter under Article 52(2) and (3) of the European Patent Convention (the equivalent in English law is section 1(2) of the Patents Act).
The UK's Patent Office subsequently issued a practice note explaining how the Office will examine patent applications for software and business method inventions. But some patent attorneys believe the Office has interpreted the decision too restrictively.
Despite the refusal of the House of Lords to consider Macrossan's case, further clarification of the rules on the patentability of software-related inventions and business methods could come from one of two sources.
First, the High Court is expected to hand down a decision within the next two months in a case brought by Bloomberg. The financial news provider, which is also represented by Marks & Clerk, argues that that the Patent Office wrongly interpreted the test set out by the Court of Appeal in Macrossan when it denied Bloomberg a patent related to the customization of financial data sent to end users across a computer network.
Secondly, the European Patent Office may decide to clarify the issue itself. In its ruling in October, the Court of Appeal took the unprecedented step of recommending that the EPO Enlarged Board consider a series of questions relating to the patentability of software and business methods.
In a statement to MIP Week at the time, Alain Pompidou, president of the EPO, said the organization was very interested in developments in the case law of national courts.
"I have taken note of the UK decision, but a decision on whether or not it would be opportune to follow the suggestions for a referral has not yet been taken."
The Court of Appeal made it clear that its suggestion had the backing of the UK Patent Office. Alison Brimelow, who takes over the presidency of the EPO next summer, was formerly head of the UK Office.
"Hopefully the EPO will take up the referral and their response to these questions will help us, in time, to establish a pan-European consensus on the patentability of software," said John Collins.
