Why is it that, when the words "population" and "warren" appear in close proximity, this Kat struggles to exclude from his mind the word which unites them: "rabbit"? The two words were brought together in the Chancery Division of the High Court, England and Wales, in Population Diagnostics Inc v The Comptroller General of Patents, Designs and Trade Marks  EWHC 3541 (Ch), a decision from last Thursday by Mr Justice Warren in an appeal against the refusal of Mrs Chalmers, on behalf of the UK's Intellectual Property Office, to grant two somewhat curious patent applications.
|"Stop when you get to one thousand ...!"|
[Merpel quibbles at this point that you can't find something if it isn't there -- she didn't find that there was an inventive step, rather than didn't find that there was one ...]. The respondent in this appeal, the splendidly-named Comptroller General of Patents, Designs and Trade Marks, disagreed: Population Diagnostics' applications had been hanged with their own rope, this being their own choice of wording of the claim itself. What's more, it certainly couldn't be inventive [except perhaps in the United States, where a cynic might suggest that the spirit of Cole Porter still haunts the USPTO] to increase the size of the sample of the normal population to achieve that, since that was basic experimental methodology and statistics, while the selection of a database of 1,000 individuals was arbitrary.
Mr Justice Warren dismissed the appeal, in some detail and a considerable degree of length, the 132 paragraphs of his judgment being a tribute to the fact that the appellant's legal team were a good deal more inventive than their patent-seeking patent.
This was never going to be a patent judgment for the rocket scientists, and the judge was not about to restate the entire law of inventive step. He did however remind us that an invention's inventive concept was the gap between what was claimed in the application and what was already sitting there in the prior art. For the purposes of patent law it was this that was important, not the contents of the application's specification. Mrs Chalmers had appreciated this when selecting her approach to the application and was right to identify the inventive concept the way she did.
Treading gingerly into the treacherous quicksands of patent law, Warren J then stated that, i f the only difference between a claim's inventive concept and the prior art was an arbitrary feature, the alleged invention had no inventive step. This being so, if the inventive concept contained within Population Diagnostics' claim was already apparent from the prior art, apart from specifying that the size of the control group had to be 1,000, the feature of the invention which was the arbitrary statement that the control group should be at least 1,000 individuals did not actually add anything inventive -- and it certainly wasn't inventive to seek to bump up the size of the sample of the normal population in order to help identify CNVs which were relevant to a particular phenotype in an individual. That was nothing other than basic experimental methodology and statistics. Oh yes and, in any event, the invention as claimed was excluded from patentability both by virtue of it being a mental act and to the extent that it was an excluded computer program.
Mrs Warren's Profession, here