| PATENT — Invention — Exclusion from patentability — Business methods and computer programs — Comptroller raising new points on appeal — Special circumstances justifying new objections on appeal — Patents Act 1977, s 1(2)
Raytheon Company v Comptroller General of Patents, Designs and Trade Marks [2007] EWHC 1230 (Pat)
Ch D: Kitchin J: 22 May 2007
The court had a discretion to allow the Comptroller General of Patents, Designs and Trade Marks to raise objections on appeal that had not been maintained before a hearing officer determining whether to grant a patent.
Kitchin J so held in the Chancery Division dismissing an appeal by the applicant, Raytheon Company, against a decision of the Comptroller General of Patents, Designs and Trade Marks refusing the applicant’s patent application on the ground that the invention related to a computer program and therefore fell within s 1(2)(c) of the Patents Act 1977.
The invention related to a method of inventory management. At the first hearing the examiner did not press objections previously raised that the invention related to a method for doing business and to the presentation of information, and the hearing officer only dealt with the computer program objection. On appeal the Comptroller resurrected the objections as to business method and presentation of information. The applicant objected, arguing that the Comptroller could and should have raised all his grounds of objection at the first hearing.
KITCHIN J said that the court had a discretion whether to allow new grounds of objection to be taken on an appeal against a decision of the Comptroller not to grant a patent. The hearing before the Comptroller was not an inter partes hearing but was part of the pre-grant procedure, and it was in the interests of fairness and justice that the Comptroller took all appropriate objections at the hearing before him. An applicant was entitled to know where he stood and had a reasonable expectation that new objections would not be raised on appeal, particularly where the examiner had expressly considered objections but had chosen not to maintain them. However, in the instant case, there were special circumstances that justified allowing the new objections to be taken on appeal, namely the statutory obligation on the Comptroller to raise proper objections, the public interest in ensuring that defective applications did not proceed to grant, the nature of the proceedings, the nature of the new objections and that the applicant had had ample notice of them.
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