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

Revocation was sought on the ground that the patent was invalid because of anticipation by prior publication. The court considered its powers under section 77 in the context of such a revocation application: ‘ . . the power to revoke arises in circumstances where there is a lis between the patentee and the applicant. The … Continue reading Regina v Comptroller-General of Patents Designs and Trademarks ex parte Ash and Lacey Building Products Ltd: 2002

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 In one case a patent had been revoked on being challenged, and in the other, the appeal was against refusal.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

An uncontested application was filed by the proprietor Emerson Electric Co under rule 10(2) of the Patents Rules 2007. As a result, it was found that Shawn M Chawgo should be mentioned as a joint inventor along with Todd A Westley, Richard W Ballas, Richard R Bowles and Brian A Mitchell in the granted patent … Continue reading Emerson Electric Co, John Mezzalingua Associates, Inc, Todd A Westley, Richard W Ballas, Richard R Bowles, Brian A Mitchell and Shawn M Chawgo (Patent): IPEC 17 Feb 2015

Sufficiency, Support – The invention appears to relate to the use of certain compounds in nuclear imaging for discovering the cause of cancer. The Hearing Officer decided that the claimed invention was not disclosed in a manner that was clear and complete enough for it to be performed by a skilled person, and was not … Continue reading Alaa Hussein Al-Darraji (Patent): IPO 19 Dec 2012

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 The application concerned a flood protection system. The Hearing Officer decided that the latest version of the claim on the official file at the end of the compliance period was anticipated by three earlier published patent applications. However, he decided that if the compliance period were to be extended, the applicant should be able … Continue reading Thomas R Cann (Patent): IPO 17 Oct 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

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

A request by Mr Parfitt for an opinion was found to cover essentially the same issues already considered by an earlier opinion and a decision reviewing that earlier opinion. The Hearing Officer taking into account all the circumstances therefore refused the second request for an opinion Judges: Mr P Thorpe Citations: [2012] UKIntelP o26512, GB2436776 … Continue reading Duncan James Parfitt (Patent): IPO 10 Jul 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

Entitlement – This was an uncontested entitlement action, the registered proprietor of the patent application having been dissolved. The Hearing Officer accepted that, on the balance of probabilities, the matter in the patent application belonged to the claimant. As the application was refused nearly three years ago, the Hearing Officer could not make an order … Continue reading Russell Taylor v AQ Plc (Patent): IPO 1 May 2012

IPO This application relates to a method and arrangement for investigating an unknown calling party that has sent a communication request to a called party, in order to provide information on the relationship between the calling party and the called party. The called party can then use this information to decide whether to accept the … Continue reading Telefonakiebolaget LM Ericsson (Patent): IPO 2 May 2012

IPO Excluded fields (refused) – The application relates to a method of retrieving financial information stored in a first database by using a second database, which contains data referencing the first database, as a dictionary or index. The Hearing Officer applied the Aerotel/Macrossan test and decided that the contribution made by the invention fell solely … Continue reading Bank of America Corporation (Patent): IPO 9 May 2012

IPO Inventive step – The application is concerned with installing software on a computer system and resolving any dependencies that arise by making copies of dependant resources. The examiner’s inventive step objection was based on two sets of citations, the first set showing that it is known to copy shared resources and the second set … Continue reading Vmware Inc (Patent): IPO 25 Apr 2012

IPO Excluded fields (refused), Inventive step – The invention relates to a computer-controlled system for ordering food and/or drink in a restaurant in which a projector mounted above the dining table is used to project plate shaped images of the actual food which can be ordered onto the surface of the table where customers are … Continue reading Compurants Ltd (Patent) O/187/12: IPO 4 May 2012

Entitlement, Inventorship, Striking out – The defendant requested that the reference under section 8 (now under section 35) be stuck out. The reasons given included that the claimant had delayed launching entitlement proceedings, had not filed any evidence and had misrepresented the invention in its statement of claim. The request to strike out was refused … Continue reading Andrew Cooke and Watermist Limited (Patent): IPO 8 Feb 2012

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

ICO The application related to a networked gaming system which changed the game content and behaviour based on recorded data about players, thus allowing a casino operator to tailor the experience to an individual. Using the approach in CFPH LLP’s Appn [2005] EWHC 1589, it was not disputed that any advance lay in the feedback … Continue reading Acres Gaming Incorporated (Patent): IPO 3 May 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

The claimant sought to pursue its licence claim after its claim to a proprietary interest in the patent had been dismissed. Held: The claim misunderstood the way section 37 worked. To have a claim to a license the license the claimant had to show some proprietary interest. The grant of a licence was not to … Continue reading Cinpres Gas Injection Limited v Melea Limited: ChD 23 Nov 2006

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

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

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

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

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 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

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

IPO Excluded fields (refused) – The invention relates to a system for generating electronic security documents on a computing system. The invention provides a new method for generating and storing a security document in a multi-node network in which the document is assigned a unique document identifier including amongst other things a process identifier, and … Continue reading Recipero Ltd (Patent): IPO 23 Dec 2014

IPO This was a Decision on costs following an earlier substantive Decision on entitlement in favour of the defendants. The lack of representation of the claimant prior to the week before the hearing was noted. An award on the scale was made to the defendant, taking this into account. Mr J Elbro [2014] UKIntelP o33614, … Continue reading Surinder Pal Kaur and Bhupinder Seran (Patent): IPO 31 Jul 2014

IPO The application relates generally to a program based supply chain management. Here the word ‘program’ is not used directly in relation to a computer program but the program is in this sense is rather a definition of a relationship between trading partners, e.g. such as a manufacturer and a vendor. The invention essentially restricts … Continue reading I2 Technologies Us, Inc (Patent) O/415/10: IPO 1 Dec 2010

Entitlement, Inventorship – This was an action brought by the wife and successor-in-title of one of the joint inventors against the other to remove him as both a joint inventor and co-owner. The patent concerned a standalone LED display interconnectable with itself which shows an editable picture. The hearing officer held that the attempts by … Continue reading Surinder Palkaur v Bhupinder Seran (Patent): IPO 30 May 2014

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 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 . .

Request for declaration of non-infringement of and for revocation of patents.
Held: Even if provisions are not listed in s130(7), it is undesirable for provision in our domestic law which in fact do correspond to provisions in the EPC to be . .

IPO Evidence, Revocation – The defendants in this case objected to the admissibility of the claimant’s evidence-in-reply on the grounds that it was not strictly in reply, and could have been filed at an earlier . .

IPEC An application under rule 10(2) of the Patent Rules 2007 was filed by Dr Peter Vincent Smallwood to mention Dr Peter Vincent Smallwood and Jonathan Hibbard as joint inventors. Robert Timothy Gros, the patent . .

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 . .