IN THE MATTER OF APPLICATION NO 9204959.2 BY FUJITSU LIMITED

Factual and Procedural Background

This appeal concerns a patent application filed by Company A on 6 March 1992, claiming priority from a Japanese application. The application related to a method and apparatus for creating synthetic crystal structure images by using a computer to model combined crystal structures. The patent examiner objected to the application on the basis that it related to a method for performing a mental act and a computer program, thus excluded from patentability under Section 1(2)(c) of the Patents Act 1977. The objection was upheld after an oral hearing by a Principal Examiner acting for the Comptroller. Company A appealed, but the appeal was rejected by Judge Laddie. Company A then appealed to the Court of Appeal.

Legal Issues Presented

1. Whether the patent application falls within the exclusion of patentable inventions under Section 1(2)(c) of the Patents Act 1977 as a method for performing a mental act or a computer program as such.
2. Whether the invention provides a technical contribution sufficient to avoid exclusion from patentability.
3. How to construe the phrase "a method for performing a mental act" in Section 1(2)(c) — whether it covers only methods carried out by the human mind or also those capable of being carried out by the human mind.

Arguments of the Parties

Appellant's Arguments

• The application includes a technical contribution because it processes real images or structures, relying on the precedent set in the Vicom case.
• The application provides a new tool for modelling crystal structure combinations, relieving scientists from laborious manual modelling, thus constituting a technical advance.
• The phrase "a method for performing a mental act" should be narrowly construed to cover only methods actually performed by the human mind, excluding computer-implemented methods that the human mind could not practically perform.

Respondent's Arguments

• The narrow construction of "a method for performing a mental act" is incorrect and contrary to established authority.
• The phrase should be understood broadly to exclude any scheme, rule, or method for performing a mental act, regardless of whether it is actually performed by the human mind or implemented by a computer.
• The patent application does not provide a technical contribution beyond a computer program and is therefore excluded from patentability.

Table of Precedents Cited

Court's Reasoning and Analysis

The Court examined the patent application in the context of Section 1(2)(c) of the Patents Act 1977, which excludes from patentability schemes, rules, or methods for performing mental acts and computer programs as such. The Court emphasized the need for uniform interpretation aligned with the European Patent Convention.

The Court analyzed the nature of the invention, which involves a computer program enabling an operator to select and combine crystal structures to produce a composite image. The Court found that the invention essentially amounted to a computer program without a technical contribution beyond that program.

The Court distinguished this case from Vicom, where the technical contribution was the enhancement of the image itself, not merely its production. Here, the display was conventional, and the process mimicked manual model assembly, lacking the required technical advancement.

The Court also addressed the appellant's argument on the interpretation of "a method for performing a mental act," rejecting a narrow construction limited to acts actually performed by the human mind. The Court held that the phrase encompasses any such mental act, whether or not performed mentally, and patentability depends on the presence of a technical contribution.

In line with prior authorities, the Court reiterated that claims to computer programs or methods of performing mental acts are excluded from patentability unless they provide a technical contribution. The application failed this test.

Holding and Implications

The Court DISMISSED THE APPEAL, affirming that the patent application is excluded from patentability under Section 1(2)(c) of the Patents Act 1977 as it relates to a computer program as such and a method for performing a mental act.

The direct effect is that Company A's patent application remains refused. No new precedent was established, but the decision reinforces the principle that patentability requires a technical contribution beyond the mere use of a computer program or mental act. The appeal against the High Court decision was dismissed with costs, and leave to appeal to the House of Lords was refused.