In July of 2008, William Kostuj filed an international patent application titled “Method Of Forming A Golf Swing And Equipment”. The UK Intellectual Property Office [IPO] has denied the application that sought to patent a means of developing a golfer’s swing style without the use of a golf club. The full decision may be read here.

The patent application relies on the notion of a base swing being learned without the use of any golf equipment. An individual’s base swing is unique to him or her and once it is developed the applicant asserts that personalized golf equipment may be structured to fit the individual’s swing style.

The IPO’s decision was based on a revised version of the applicant’s claims filed November 21 2011. There were 21 claims in total and three independent claims that are outlined as follows:

71. A method of more efficiently establishing a golfer’s current base golf grip and swing through which the golfer’s performance can be more efficiently changed or improved[…]

84. A method of determining a performer’s base performance of a determined activity that utilizes equipment during performing, said base performance used as a basis for more efficiently changing or improving said base performance or fitting said equipment to said base performance[…]

91. A method of fitting a golf equipment or golf club specification measurement to a golfer’s base golf grip or swing[…]

The issues identified in the decision were “whether claims 71 and 91 satisfy section 1(2) of the Patents Act 1977 and whether claim 84 satisfies section 14(3) of the Act.”  Under section 1(2), “a scheme, rule or method for performing a mental act, playing a game or doing business or a program for a computer” is not an invention under the Act. Case law on the interpretation of section 1(2) provides a four-step test for assessing patentability. The steps are summarized as follows:

1. Properly construe the claim
2. Identify the actual contribution
3. Ask whether it falls solely within the excluded matter
4. Check whether the contribution is actually technical in nature

Firstly, the Hearing Officer found that claim 84 was “broad and speculative in scope” and therefore did not satisfy the section 14(3) requirement of disclosing the invention “in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.” The four-step test was then applied to determine patentability under section 1(2).

With regard to properly construing the claims, the Hearing Officer emphasized the difficultly in conceptualizing a base golf grip as this is something that is personally felt and experienced by the individual player. As such, it cannot be defined in an “objective, technical” sense. Secondly, the actual contribution was identified as:

“a method of producing a golf swing comprising, without the use of a golf club, forming a limb- only golf grip and performing a limb-only golf swing, using that as reference for further improvements, the limb-only established swing being used for the fitting or making of golfing equipment”.

Given this definition of the actual contribution, step three looks at whether it falls within the exclusions outlined in section 1(2)(c). The Hearing Officer found that the application falls within all three exclusions. That is, it is a mental act as well as a scheme for playing a game or doing business. The application discloses no technical element and the base swing learning process relies on the mental aspects of repetition. Finally, since the application also requires the involvement of a skilled individual to produce golf equipment, it is further found to be non-patentable as a business method.

Nora Sleeth is a JD candidate at Osgoode Hall Law School. 

Posted in Patentability, Patents, UK