IPO The application concerns game playing services in game machines, such as slot machines or video poker games. The thrust of the application is to enable game patrons to recover left-amounts which may arise from transactions involving different currencies. This is facilitated by software in the game machine’s logic modules. These left-over amounts can be … Continue reading IGT (Patent) O/140/13: IPO 27 Mar 2013

IPO An uncontested application was filed by Renovo Limited. As a result, it was found that Ann Helena Ledwith should be mentioned as a joint inventor in the published patent application and granted patent for the invention along with the currently named inventors, Mark William James Ferguson, Sharon O’Kane, David Fairlamb and Tracey Mason. It … Continue reading Renovo Limited, Ledwith, Williams Ferguson, O’Kane, Fairlamb and Mason (Patent): IPO 27 Jan 2011

The application was entitled Hands-free megaphone and claimed a combination of a microphone assembly, a body pack including an output horn secured by a belt around a users body, and a cable connecting the microphone assembly and the body pack. An objection of lack of inventive step was based on a French patent. It was … Continue reading Robert Leonard Carpenter (Patent) O/325/03: IPO 27 Oct 2003

PO Patents – Inter Partes Decisions Judges: Mr P Hayward Citations: O/261/02, [2002] UKIntelP o26102, EP0549694 Links: PO, PO, Bailii Statutes: Patents Act 1977 Intellectual Property Updated: 15 October 2022; Ref: scu.455162

IPO Excluded fields (refused), Inventive step – The four applications all concerned gaming machines typically for use in arcades, in which there was a main game and a bonus game. The specific embodiments differed between the applications, but in all cases the inventions concerned the switching between the main game and bonus game and/or what … Continue reading IGT (Patent) O/211/06: IPO 27 Jul 2006

As a result of an uncontested application filed under section 13(1) by Ayumu Taniguchi and Juni-ichi Tanabe, it was found that Ayumu Taniguchi and Juni-ichi Tanabe should be mentioned as a joint inventors in the granted patent and directed that an addendum slip mentioning them as a joint inventors be prepared for the granted patent … Continue reading Ayumu Taniguchi Juni-Ichi Tanabe v Toyo Kohan Co Ltd (Patent): IPO 27 Jan 2000

Lilly appealed against a finding that an Actavis drug had not infringed its patents to the limited extent of holding that there would be indirect infringement in four jurisdictions, but they agreed with the Judge that there would be no direct infringement. The appeal raised the issue of the correct approach under UK law (and … Continue reading Actavis UK Ltd and Others v Eli Lilly and Company: CA 25 Jun 2015

Proceedings had been brought by a third party in which the patent had been revoked. The Defendant in the first proceedings now sought release from an enquiry as to damages after being found, before the revocation, to have infringed the patent. Held: (Lord Justice Neuberger dissenting) The defendant was bound by the order for an … Continue reading Coflexip S A and Another v Stolt Offshore Ms Ltd and others: CA 27 Feb 2004

When the court looked at whether the repair of a patented article was an infringement, the court would better achieve its required answer by asking whether the works amounted to a manufacture of the patented article, rather than a repair. The concept of implied licence was now to be disregarded. The acts in this case … Continue reading United Wire Limited v Screen Repair Services (Scotland) Limited; Howlett etc: CA 27 Jul 1999

Peter Prescott QC J set out the four steps to be taken: ‘The approach is in four steps: ‘(1) properly construe the claim; (2) identify the actual contribution; (3) ask whether it falls solely within the excluded subject matter; (4) check whether the actual or alleged contribution is actually technical in nature.’ (see Aerotel at … Continue reading Lantana Ltd v The Comptroller-General of Patents, Designs and Trade Marks: PatC 4 Sep 2013

The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, a patent, whose validity is not challenged, identified a compound as an efficacious treatment but did not identify an optimal dosage regime. A pharmaceutical company, which had acquired the patent, conducted … Continue reading Actavis Group PTC EHF and Others v ICOS Corporation and Another: SC 27 Mar 2019

As a result of an uncontested application filed under section 13(1) by Ayumu Taniguchi, and Juni-ichi Tanabe, Fumio Kunishige and Masao Komai, it was found that Ayumu Taniguchi, and Juni-ichi Tanabe, Fumio Kunishige and Masao Komai should be mentioned as a joint inventors in the granted patent and directed that an addendum slip mentioning them … Continue reading Ayumu Taniguchi, Juni-Ichi Tanabe, Fumio Kunishige Masao Komai v Toyo Kohan Co Ltd (Patent): IPO 27 Jan 2000

Industrial application – The invention related to a series of bags connected to form a vertical conveyer which rotates over rollers. Bags on the descending side of the conveyer are filled with water, causing the conveyer to rotate as the water-filled bags fall under gravity. Bags on the ascending side of the conveyer are empty, … Continue reading Peter Joseph Crowley (Patent): IPO 27 Sep 2013

The inventor company appealed against rejection of its application for a patent for a computer program. Held: The appeal failed: ‘on the facts found by the Hearing Officer, the invention is no more than the computerisation of a process which could already be done without a computer. It has no relevant technical effect. Accordingly, the … Continue reading Lantana Ltd v The Comptroller General of Patents, Design and Trade Marks: CA 13 Nov 2014

AI created Invention is not Patentable The case appears to be about artificial intelligence and whether AI-based machines can make patentable inventions – correct processing of application Held: The appeal failed. On the face of the Form 7s he filed, Dr Thaler did not comply with either of the requirements laid down by section 13(2), … Continue reading Thaler v Comptroller General of Patents Trade Marks and Designs: CA 21 Sep 2021

In each case it was said that the requested patent concerned an invention consisting of a computer program, and was not therefore an invention and was unpatentable. In one case a patent had been revoked on being challenged, and in the other, the appeal was against refusal. Held: Jacob LJ said: ‘the court must approach … Continue reading Aerotel Ltd v Telco Holdings Ltd and others, In re Patent Application GB 0314464.9 in the name of Neal Macrossan Rev 1: CA 27 Oct 2006

Appeal from refusal of patent as a method for doing business and a program for a computer, as such. . .

Appeal from exclusion of patentability . .

IPO Patent – In section 27 opposition proceedings, the opponent (Laird Security Hardware Limited) sought to file a supplementary statement, which was opposed by the applicant for amendment (Archibald Kenrick and Sons Limited) who requested that the opposition to amendment be struck out. It was held that admission of the supplementary statement would not materially … Continue reading Archibald Kenrick Sons v Laird Security Hardware Limited: IPO 13 Jun 2005

IPO The registered proprietor sought to have a late-filed statutory declaration admitted in evidence in support of its applications for amendment and correction. In proceedings which had been running some time, the HO decided that the proprietor had not discharged the onus on it to demonstrate that the nature of the fresh evidence and the … Continue reading Baker Hughes Incorporated v Halliburton Energy Services Inc (Patent): IPO 2 Jan 2001

Robinson Willey Limiteds application to amend GB 2305499 in the light of three items of Japanese prior art was opposed by Baxi Heating Limited. No explicit reasons were given for the proposed amendments to the claims other than they sought to distinguish the claimed invention from the prior art. The opponents grounds of opposition were … Continue reading Baxi Heating Limited and Robinson Willey Limited (Patent): IPO 10 Aug 2004

The claimant said that the defendants imported model airplanes infringing the claimant’s patents, and registered community designs. The defendant responded that the patents were invalid. Held: Some but not all of the patent claims were valid, and the goods were infringing. Judges: Hacon HHJ Citations: [2014] EWHC 2845 (IPEC) Links: Bailii Statutes: Patents Act 1977 … Continue reading William Mark Corporation and Another v Gift House International Ltd: IPEC 22 Aug 2014

Judges: Jacob J Citations: [2002] EWHC 2324 (Patents) Links: Bailii Statutes: Patents Act 1977 Jurisdiction: England and Wales Intellectual Property Updated: 30 November 2022; Ref: scu.178127

The claimants sought to amend their claim which had previously been on the basis of a joint ownership, to one of sole ownership. Held: The application for the amendment being made more han two years after the grant, the amendment could not be allowed. s.37(5) bars the making of a new claim out of time. … Continue reading Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc and others: CA 31 Jul 2006

ICO The application relates to a method of providing a financial ‘risk score’ within the authorisation process of a wireless financial transaction. The Hearing Officer applied the Aerotel/Macrossan test and decided that the contribution made by the invention fell solely within excluded matter. He also considered the Court of Appeal decision in Symbian and concluded … Continue reading Bank of America Corporation (Patent): IPO 4 Oct 2012

Berni Hambleton of Sterling IP initiated proceedings under section 72(1)(a) of the Patents Act 1977 for revocation of the patent on the grounds that the invention as defined in claims 1, 21 to 25 and 34 was not entitled to its earliest priority date, and that the invention as such lacked an inventive step over … Continue reading Hambleton of Sterling IP and Cold Spring Harbor Laboratory (Patent): IPO 6 Aug 2012

IPO The invention relates to a process control safety system and in particular to a method and apparatus for generating a script for use in writing data in a process control safety system. The claims address the interface provided to the user when changes to safety systems are required. A script is automatically generated as … Continue reading Fisher-Rosemount Systems Inc (Patent): IPO 10 Sep 2009

The defendant firm of solicitors had acted for a Danish Research Institute. They wrote to several parties regarding a patent. B initiated a threat action. IBB appealed against an order striking out their defence, saying that the issue of whether what they said amounted to a threat was a question of fact to be decided … Continue reading Brain v Ingledew Brown Benson and Garrett and Another: CA 1996

The threats provisions may have the effect of making litigation more rather than less likely. The exclusion in the subsection is limited in its scope. It does not give rise to a general entitlement to threaten manufacturers or importers or users. In particular, if a trader both manufactures and sells products and a patentee threatens … Continue reading Cavity Trays Ltd v RMC Panels Products Ltd: CA 1996

IPO The application relates to a computer-controlled interactive food and/or drink ordering system that can prompt a customer to place an order. In conventional restaurants, a waiter will present a customer with a menu and then return a few minutes later to take his order. On some occasions, the customer may not have made up … Continue reading Compurants Ltd (Patent) O/283/11: IPO 11 Aug 2011

Third party terms – Patent GB2310274 was announced as ceased in the Patents Journal due to a failure to pay the 14th year renewal fee. The Office had however failed to process a notification of a change of address for service correctly which had resulted in the renewal reminder being sent to the wrong address. … Continue reading Charalambous (Patent): IPO 29 Nov 2010

IPO The opponent opposed the patentee’s request under section 27 of the Patents Act 1977 for amendment of the patent, arguing, inter alia, that the patentee had delayed excessively before bringing the request to amend. The patentee sought the striking out of this ground following the amendment to the Patents Act which required the Comptroller … Continue reading Strix Ltd and Otter Controls Ltd (Patent): IPO 2 Jan 2009

IPO An uncontested application was filed by NATS (EN ROUTE) PLC originally under section 13(1) of the Patents Act 1977 though the application was subsequently taken as filed under rule 10(2) of the Patent Rules 2007. The applicants also filed an uncontested application under section 13(3). It was found that Stephen James Pember and Alison … Continue reading Nats (En Route) Plc, Brian Janes, Stephen James Pember and Alison Laura Udal Roberts (Patent): IPO 13 Oct 2008

IPO In apparatus for electronic trading a spreadsheet application calculated a series of trading commands from incoming market data and stored them in a queue to be sent at predetermined intervals to an electronic trading system (ETS); since the commands might not be synchronised with market conditions by the time they were transmitted they were … Continue reading CFPH LLC (Patent): IPO 10 Aug 2007

IPO This application relates to an electronic gaming machine such as a ‘slot machine’ wherein players receive monetary awards which are displayed, for example, in the form of a three digit number. The player can then choose whether to keep the original award or to modify or gamble the award. A number of methods are … Continue reading IGT (Patent) O/099/07: IPO 5 Apr 2007

IPO Added subject matter, Excluded fields (refused) – The invention related to a trajectory-based game of chance for implementation on a video gaming machine. The claim related to a gaming machine but in the light of Aerotel/Macrossan [2006] EWCA Civ 1371 it was agreed that the contribution was a data structure including a probability distribution … Continue reading IGT (Patent) O/054/07: IPO 22 Feb 2007

Held that BT were the rightful owners of the US and Canadian applications. Mr Yashap was ordered to execute the necessary documents (Messrs Wyatt and Percival already having signed); failing that, BT were authorised to sign on his behalf. Costs awarded against Mr Kashyap, but not Messrs Wyatt and Percival. Cannings’ United States Application [1992] … Continue reading British Telecommunications Plc v Wyatt, Percival and Kashyap (Patent): IPO 17 Jul 2002

IPO The claims related to an apparatus for gaming which was networked to a host computer and allocated players to levels each with an associated amount beyond which a player would be given an award. The nearest prior art was the applicant’s published application which lay in the section 2(3) field and had been refused … Continue reading Acres Gaming Incorporated (Patent): IPO 18 Sep 2006

IPO In section 27 opposition proceedings, the opponent (Laird Security Hardware Limited) argued that the application to amend should be refused on the grounds that it contravenes section 76 in that it introduces additional matter; that it contravenes section 14 in that the claims as amended are not clear; and that it does not rectify … Continue reading Archibald Kenrick Sons Limited v Laird Security Hardware Limited: IPO 15 Mar 2006

The applicant failed to respond to an examination report under section 18(3) of the Act, by the final date specified in the report for reply. He did not communicate with the Office at all until a letter was sent to him some 18 months after the final date for reply warning that the end of … Continue reading Samuel Abekah-Mensah (Patent): IPO 1 Feb 2006

IPO The patent concerned a non-woven fabric used primarily for wound dressing. The parties had discussed such a wound dressing in 1993, and in 1994 a company was formed to carry on the business of development and production of wound dressings, with the parties as shareholders. The defendant was managing director and had approached a … Continue reading Chan v Jeffcoat (Patent): IPO 20 Jun 2001

PO Patents – Inter Partes Decisions – In an EP patent that had been found bad for lack of novelty and obviousness (see Decision O/147/97) an opportunity for amendment was given. When the applicant tried to take advantage of this opportunity, the proposed amendments were opposed, initially by Morgan only and subsequently by both Morgan … Continue reading Kaiser v Morgan and Schmidt: IPO 14 Aug 2000

The defendants wanted to defend their patent against a possible infringement. There were negotiations, following which the defendants wrote claiming damages or licence fees. The claimant asserted that the letter constituted a threat. The defendant argued justification. Held: The court has to determine in all the circumstances not only whether a threat was made but … Continue reading Cintec International Ltd v John Humphries Parkes (T/A Dell Explosives) and Another: ChD 2 Oct 2003

Judges: Floyd J Citations: [2011] EWHC 2720 (Pat), [2012] RPC 13 Links: Bailii Statutes: Patents Act 1977 Citing: Appeal from – Protecting Kids The World Over (PKTWO) Limited (Patent) IPO 23-Dec-2010 IPO The invention concerned a system for monitoring an electronic communication on the internet such as a chat room, e.g. being used by a … Continue reading Re Protecting Kids The World Over (PKTWO) Ltd: PatC 26 Oct 2011

A patent was granted for a product, produced by the bacterium streptomyces hygroscopicus, called rapamycin, which was useful to suppress transplant rejection. Because rapamycin was a known product at the priority date, it could not be patented: neither could its use as a treatment, because that would offend section 4(2) of the Patents Act 1977. … Continue reading American Home Products Corporation, Professor Roy Calne v Novartis Pharmaceuticals UK Limited: ChD 2000

The claimant sought damages alleging patent infringement. The defendant responded by saying that the patent was invalid as a scheme, rule or method for doing business as such. Judges: Lewison J Citations: [2006] EWHC 997 (Pat) Links: Bailii, Bailii Statutes: Patent Act 1977 1 Cited by: Appeal from – Aerotel Ltd v Telco Holdings Ltd … Continue reading Aerotel Ltd v Telco Holdings Ltd: PatC 3 May 2006

Patent validity – not an invention. Judges: The Hon Mr Justice Laddie Citations: [2004] EWHC 482 (Pat) Statutes: Patents Act 1977 1(2)(d) Jurisdiction: England and Wales Intellectual Property Updated: 27 June 2022; Ref: scu.194465

The House considered a case involving the issue of enablement of a particular peptide in a patent application. Held: On the assumed facts that there had been a prior disclosure of the same invention neither the disclosed information nor common general knowledge would have enabled the skilled man to make it. The argument that the … Continue reading Asahi Kasei Kogyo KK’s Application: HL 1991

A patent claim for an important protein called Tissue Plasminogen Activator was objected to on the basis of the obviousness of the gene sequence. Held: The court considered the categories of exclusion in the context of what was said to be a discovery – namely the gene sequence which caused TPA to be expressed. A … Continue reading Genentech’s (Human Growth Hormone) Patent: CA 1989

In a claim for infringement of a patent, where variations on a patent were to be considered, the court should look to the three tests set down in Improver (‘the Protocal questions’), and the claim should be interpreted in a purposive and contextual way. The court should ask if the variation was material, would the … Continue reading Wheatley, Bortec Limited v Drillsafe Limited, Force Group Services Plc, Foster, Foster, Carter, Davies: CA 25 Jul 2000

A patent was not infringed by a sale of goods because the property in the goods had already passed before they arrived in this country. Citations: [1982] FSR 406 Statutes: Patents Act 1977 Jurisdiction: England and Wales Intellectual Property Updated: 07 May 2022; Ref: scu.273186

A patent application was made for a system for the automatic recognition of ships by comparison of a digital image with data stored in a computer database. Held: The court gave a wider meaning to the phrase ‘mental act’ Citations: [1993] RPC 427 Statutes: Patents Act 1977 1 Cited by: Cited – Aerotel Ltd v … Continue reading Raytheon’s Application: 1993

The court rejected an application for a patent for, inter alia, a ‘data processing system for making a trading market in at least one security in which the system proprietor is acting as principal’. Held: Falconer J said: ‘In my judgment, where an invention for which a patent is sought involves any of the matters … Continue reading Merrill Lynch’s Application: ChD 1988

The claimant appealed from refusal of statutory compensation under the 1977 Act. He had invented a form of pump which was used by his employers, the respondents in the management of diabetes management. Held: The appeal succeeded: ‘the correct approach to the application of section 40 and the one that does least violence to its … Continue reading Shanks v Unilever Plc and Others: SC 23 Oct 2019

Patent revocation action [2000] EWHC Patents 34, [2001] RPC 25 Bailii England and Wales Cited by: Cited – Actavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019 The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, … Continue reading Novo Nordisk A/S v DSM NV; DSM NV’s Patent: PatC 21 Dec 2000

The patentee had invented a method for storing CDs. The patentee sought leave to appeal a finding that its patent was invalid, and if successful, to appeal a finding that the defendant’s apparatus was not infringing. Held: The application for leave to appeal did involve a judicial finding sufficient to satisfy the obligation under TRIPS. … Continue reading Pozzoli Spa v BDMO Sa and Another: CA 22 Jun 2007

validity of patent. Held: No formula should distract the court from the statutory question. [2009] EWCA Civ 646, [2009] RPC 23, (2009) 109 BMLR 78, (2009) 32(9) IPD 32062 Bailii England and Wales Citing: Cited – Brugger v Medic-Aid Ltd (No 2) ChD 1996 B alleged infringement by M of its patented nebulizer. M replied … Continue reading Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd and Another: CA 2 Jul 2009

The original inventor obtained a patent for a brake fluid protection system. A loan was raised against the patent, assigning also the future developments of the idea. The loan was called in, and then assigned to the defenders, who took the idea forward obtaining further patents. The pursuer asserted infringement. Held: The loan transferred all … Continue reading Buchanan v Alba Diagnostics Limited: HL 5 Feb 2004

These proceedings raise, for the first time in the courts of the United Kingdom, the question how the concepts of sufficiency and infringement are to be applied to a patent relating to a specified medical use of a known pharmaceutical compound. Four issues arose: (i) the construction of the claims (in particular, Claim 3 as … Continue reading Warner-Lambert Company Llc v Generics (UK) Ltd (T/A Mylan) and Another: SC 14 Nov 2018

The applicant had devised a new and better algorithm for finding square roots. Having embodied the method in a read only chip which could be installed within a computer which could then apply the algorithm, he sought to patent it. Held: Allowing the appeal and finding that it was not patentable the court found the … Continue reading Gale’s Application: CA 1991

Synthon filed an international application for a patent. Before it was published, SB filed a similar application in the UK patents registry. Synthon had applied for the UK patent granted to SB to be revoked. Jacob J had found that the reader of the application, seeking to crystallise PMS, would be able to overcome any … Continue reading Synthon Bv v Smithkline Beecham Plc: HL 20 Oct 2005

Appeal from dismissal of application for revocation of patent. Lord Clarke of Stone-cum-Ebony MR, Jacob, Richards LJJ [2009] EWCA Civ 1362, (2010) 33(2) IPD 33007, [2010] RPC 9 Bailii England and Wales Cited by: Cited – Actavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019 The court considered: ‘the application of … Continue reading Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly and Company Ltd: CA 18 Dec 2009

Held: The court must answer a relatively simple question of fact: was it obvious to the skilled but unimaginative addressee to make a product or carry out a process falling within the claim Lord Justice Moore-Bick Lord Justice Lewison And Lord Justice Kitchin [2012] EWCA Civ 1234, [2013] RPC 27 Bailii England and Wales Cited … Continue reading MedImmune Ltd v Novartis Pharmaceuticals UK Ltd: CA 10 Oct 2012

The parties each made cable mechanisms for cars. There had been a patent dispute in Germany resulting in a finding of infringement, which finding was subject to appeal. A letter was sent in England referring to the German decision, stating that the company intended to enforce its rights. Held: In considering whether it was arguable … Continue reading Bowden Controls Ltd v Acco Cable Controls Ltd: ChD 1990

IPO The invention relates to an electronic book reading system, for accessing and reading digital content via a hand-held device. Data is transmitted wirelessly from the device to a lens system, in the form of glasses worn by the user or other lenses. The lens system reproduces content for the user in the form of … Continue reading Michael Oluwaseun Bamidele (Patent): IPO 11 Nov 2014

IPO An uncontested application was filed by Medimmune Vaccines, Inc. under rule 10(2) of the Patents Rules 2007 and section 13(3) of the Patents Act 1977. It was found that both John Michael Berry and Weldong Cui should be mentioned as joint inventors in relation to the granted EP (UK) patent and directed that an … Continue reading Medimmune Vaccines, Inc, Robert George Trager, George Kemble, Richard M Schwartz, Harshvardhan Mehta, Vu Truong-Le, Zhongying Chen, A Alfred Pan, Eric Tsao, Kathy Chiaoyin Wang, Luisa Yee, Palani Balu, John Michael Berry and Weldong Cui: IPO 4 Nov 2013