PO Patent Office – Ex Parte Decisions – As a result of an uncontested application filed under section 13(1) by Koito Manufacturing Co Ltd, it was found that Akinori Matsumoto and Takayuki Iwaki should also be mentioned as joint inventors in any patent granted for the invention and directed that an addendum slip mentioning them … Continue reading Koito Manufacturing Co Ltd and Akinori Matsumoto and Takayuki Iwaki (Patent): IPO 31 Mar 2003
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 company appealed against refusal of patentunder the provision restricting such for ‘uses of human embryos for industrial or commercial purposes’ Held: The matter was referred to the ECJ. Henry Carr QC [2013] EWHC 807 (Ch), [2013] 3 CMLR 14, [2014] RPC 2, BL O/316/12, [2013] 3 CMLR 14, [2014] RPC 2 Bailii Patents Act … Continue reading International Stem Cell Corporation v Comptroller General of Patents: ChD 17 Apr 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
No Pattern Established to Patent Computer Systems The Comptroller appealed against the decision in Chancery to grant a patent to the clamant for an invention which the comptroller said should have been excluded from protection under section 1(2) as a computer program. It was argued that the UK was taking a different approach to the … Continue reading Symbian Ltd v Comptroller General of Patents: CA 8 Oct 2008
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
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Section 44 could be used in a patent contract dispute even though the patent at issue was governed by the law of a foreign state which would not itself have applied that section. . .
The defendant had charged his property to the Halifax. Abbey supplied funds to secure its discharge, but its own charge was not registered. It sought to take advantage of the Halifax’s charge which had still not been removed. Held: A mortgagee whose loan is used to repay another charged debt is subrogated to that debt, … Continue reading Boscawen and Others v Bajwa and Others; Abbey National Plc v Boscawen and Others: CA 10 Apr 1995
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
The application related to method of storing data in a computer. The method relied on de-duplication of the data such that only one copy of the data is stored. If an attempt is made to store a further copy of the same data then instead of storing that same data again, a pointer to the … Continue reading Quantum Corporation (Patent): IPO 14 Nov 2012
IPO Patent applications GB0621068.6 and GB0621069.4 relate to methods where parthenogenesis is used to activate a human oocyte (i.e. stimulation of a human oocyte, without fertilisation by a sperm cell) to produce a parthenogenetically-activated oocyte or ‘parthenote’. GB0621068.6 concerns the production of human stem cells from such parthenotes, whilst GB0621069.4 concerns human synthetic corneas and … Continue reading International Stem Cell Corporation (Patent): IPO 16 Aug 2012
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 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
Citations: O/286/05, [2005] UKIntelP o28605 Links: IPO, Bailii Statutes: Patents Act 1977 Intellectual Property Updated: 19 October 2022; Ref: scu.456441
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
The claimant sought an order to prevent the defendant, a former employee, from misusing its confidential information said to be held by her. Her contract contained no post employment restrictions but did seek to control confidential and other information. She had obtained employment with a customer of the claimant, and was said to carry out … Continue reading Caterpillar Logistics Services (UK) Ltd v Huesca De Crean: QBD 2 Dec 2011
The parties were co-proprietors of a patent. Mr Hughes appealed a decision confirming an order that the patent must be exploited. Held: The comptroller had the power to make such an order. Parliament could not have intended a deadlock situation between the proprietors to allow the frustration of the exploitation of the patent. Though given … Continue reading Hughes v Paxman: CA 23 Jun 2006
The applicant appealed rejection of its application for a patent for a method and apparatus for modelling synthetic crystalline structures. The apparatus would involve (indeed consist of) a computer programmed for the task. Held: A pure software application or method did not become registrable merely because it took control of a computer screen; it was … Continue reading In Re A Patent Application No 9204959 2 by Fujitsu Ltd; Merrill Lynch, Gale, and Fujitsu Limited’s Application: ChD 18 Jun 1996
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
The appellant challenged dismissal of its claim for patent infringement. The judge had held that the design was obvious, involving essentially only the collocation of two known features. Held: Collocation was no more than a species of obviousness, and the test remained to be performed as to whether the bringing together of the two ideas, … Continue reading SABAF SpA v MFI Furniture Centres Ltd and Another: CA 11 Jul 2002
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
The appellants resisted disclosure to the revenue of advice it had received. It claimed legal advice privilege (LAP), though the advice was from its accountants. Held: (Lords Sumption and Clarke dissenting) LAP applies to all communications passing between a client and its lawyers, acting in their professional capacity, in connection with the provision of legal … Continue reading Prudential Plc and Another, Regina (on The Application of) v Special Commissioner of Income Tax and Another: SC 23 Jan 2013
The applicant sought to patent an expert system embodied in a computer program for storing information in a way which allowed particular access. Held: ‘Before turning to the claims, I must deal with a submission of Mr Burkill, who appeared for the applicant. He submitted that the words ‘a scheme, rule or method for performing … Continue reading Wang Laboratories Inc’s Application: ChD 1990
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
Hoover appealed a finding that Dyson’s patent was valid and infringed. They asserted the patent was not novel in the light of a US patent, and even so was obvious. One test was whether an application of the claimed patent would inevitably infringe the previous patent. Both parties had prepared models from the earlier patent. … Continue reading Dyson Appliances Limited v Hoover Limited: CA 4 Oct 2001
Jacobs J said: ‘I do not think it is right to divide up the claim for an invention which consists of a combination of elements and then to seek to identify who contributed which element. I think the inquiry is more fundamental than that. One must seek to identify who in substance made the combination. … Continue reading Henry Brothers (Magherafelt) Ltd v Ministry of Defence Northern Ireland Office: ChD 1997
A patent for a substance which had been produced naturally before the application of the process was invalid. The patent was invalidated after the discovery that the effect was produced naturally from an acid metabolite. Patent infringement does not require that one should be aware that one is infringing: ‘whether or not a person is … Continue reading Merrell Dow Pharmaceuticals Inc and Another v H N Norton and Co Ltd; Same v Penn Etc: HL 26 Oct 1995
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
The court considered an appeal against the declaration of invalidity of a biomedical patent for a new human protein on the grounds that it was not susceptible of industrial application. Held: The patentee’s appeal succeeded. The court had to apply the jurisprudence of the European Board. The Board’s approach applied principles under which the disclosure … Continue reading Human Genome Sciences Inc v Eli Lilly and Company: SC 2 Nov 2011
Virgin Atlantic Airways Ltd sought to recover damages exceeding 49,000,000 pounds for the infringement of a European Patent which did not exist in the form said to have been infringed. The Technical Board of Appeal of the European Patent Office had retrospectively amended it so as to remove with effect from the date of grant … Continue reading Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd: SC 3 Jul 2013
The claimant said that the defendant had infringed its patents regarding containers for the transport of liquids in bulk. The patent provided for a steel cage surrounding a large bottle. The defendant supplied refurbished or replacement bottles. The patent was attacked for obviousness. Held: The claim failed. The court held, inter alia, as to whether … Continue reading Schutz (UK) Ltd v Werit UK Ltd and Another: PatC 31 Mar 2010
IPO The application relates to a metering system to measure usage of renewable energy produced by a privately owned micro-generating unit. The micro-generating unit is part of a larger commercial installation which operates on the basis of ‘sharecropping’, where private users are allocated amounts of renewable energy based upon their investment into the scheme. The … Continue reading Sustainable Energy and Heating Systems Ltd (Patent): IPO 19 Aug 2014
IPO The invention relates to a data synchronization protocol, in which synchronization messages to be exchanged between a client and server comprise separate sync modes (e.g. fast, slow, reset) associated with different dataclasses of data to be synchronized. The sync modes may be provided in parallel and the data may be updated in parallel. This … Continue reading Apple Inc (Patent): IPO 6 Jun 2013
The defendant’s negotiators had asserted in an expressly ‘without prejudice’ meeting, that the plaintiff was infringing its patent and they threatened to bring an action for infringement. The plaintiff sought to bring a threat action under section 70 relying on the statements. The judge held the statement inadmissible. Held: The plaintiff’s appeal failed. Where there … Continue reading Unilever plc v Procter and Gamble Company: CA 4 Nov 1999
The invention in this case was an improved ‘data processing system for making a trading market in at least one security in which the system proprietor is acting as principal.’ Held: More than one exclusion can be in play in relation to the same application. Inventive excluded matter cannot count as a technical advance. Fox … Continue reading Merrill Lynch’s Application: CA 1989
A computer program modelling a crystal structure is not patentable; it was not a hardware function, and software is not capable of protection under Patents law. Aldous LJ repeated his concern at the so called ‘technical contribution test’ for patentability: ‘I, like Nicholls LJ [in Gale], have difficulty in identifying clearly the boundary line between … Continue reading In Re Patent Application No 9204959 by Fujitsu Ltd: CA 14 Mar 1997
Claim to Patent for Computer Chip was Valid The applicant had implemented an algorithm for solving square roots problems by embodying it within a computer chip. He appealed against refusal of the patent by the Patents Office. Held: The appeal succeeded. Aldous J said: ‘I have come to the conclusion that the ROM claimed cannot … Continue reading Gales Application: ChD 1990
The company had obtained legal advice but had taken it from their accountants. The Revenue sought its disclosure, and the company said that as legal advice it was protected by legal professional privilege. Held: The material was not protected. The privilege given under the Act by virtue of the Morgan Grenfell decision was limited to … Continue reading Prudential Plc and Another, Regina (on the Application of) v Special Commissioner of Income Tax and Another: Admn 14 Oct 2009
Following its earlier main judgment in the case, the court made use of the CPR to award costs on an appeal. The overall result had been that the patent was found to be valid but not infringed. There had been huge costs. Smithkline sought costs on an indemnity basis, saying the court had certified the … Continue reading Smithkline Beecham Plc and Another v Apotex Europe Ltd and others: CA 16 Dec 2004
Contractor and Client Copyrights The plaintiff had contributed a design for a system of classifying and selecting tracks to be played on a radio station. He did so under a consultancy contract. Held: A Joint authorship claim required that the contributor had made some direct contribution to the words appearing in the eventual published item. … Continue reading Robin Ray v Classic FM Plc: PatC 18 Mar 1998
The applicant attempted to patent the use of two known pharmaceuticals to treat the folowing: ‘battle fatigue, combat stress reaction, post-traumatic stress disorder in civilian and military emergency situations, neurological symptoms associated . .
The court should incline towards patentability in the case of computer programs: ‘I am anxious that these exclusions are not given too wide a scope. All modern industry depends upon programmed computers, and one must be astute not to defeat patents . .
The issue of loss in a prior patent challenge is res judicata in later proceedings despite the presence of experimental difficulties leading to ipossibly severe time limits. A patent applicant has no duty to inform the Patent Office of matters . .
The applicant had implemented an algorithm for solving square roots problems by embodying it within a computer chip. He appealed against refusal of the patent by the Patents Office.
Held: The appeal succeeded.
Aldous J said: ‘I have come . .
