This was an appeal to the High Court of a decision by a UK Intellectual Property Office Hearing Officer not to grant two patent applications (one directed at human subjects, the other to animals). The invention in this case relates to the field of genetics and was directed towards a screening method for differentiating between copy number variants (“CNV”s- repeated sections of DNA) which are associated with a particular condition or phenotype, and CNVs which are present in the population at large, and do not appear to cause disease.
Claim 1 referred to the provision of genome-wide CNV frequency data from a control group of at least 1,000 individuals who did not possess the particular phenotype. The issue was whether there was an inventive step, and whether the invention fell foul of the mental act and the computer program exclusions. The Hearing Officer held that the contribution of the invention lay solely in excluded fields, and there were no other technical contributions.