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 In one case a patent had been revoked on being challenged, and in the other, the appeal was against refusal.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 the categories without bias in favour of or against exclusion. All that is clear is that there was a positive intention and policy to exclude the categories concerned from being regarded as patentable inventions. We must simply try to make sense of them using the language of the Convention.’
The court summarised the history of such applications and the approaches taken. ‘A claim to hardware alone, deeming the method or software to be part, was insufficient. This would allow the patenting of a method simply for having been displayed in a book. It was wrong to try to assess the three categories of exclusion as having a common characteristic. Before you get to the ‘as such’ qualification, you must make up your mind as to the meaning of the category which is excluded. The framers of the EPC really meant to exclude computer programs in a practical and operable form. They meant to exclude real computer programs, not just an abstract series of instructions. The court should have a staged approach to assessing a claim. It should: ‘(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.’ The Aerotel patent stood the test, and the appeal succeeded. The Macrossan claim did not and failed as a ‘computer program as such’.
Chadwick LJ, Jacob LJ, Neuberger LJ
[2006] EWCA Civ 1371, [2007] Bus LR 634, [2007] RPC 7, [2006] Info TLR 215, [2007] 1 All ER 225
Bailii
European Patent Convention 52(2) 52(3), Patents Act 1977 1
England and Wales
Citing:
Cited – Gale’s Application CA 1991
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: . .
Cited – Halliburton Energy Services Inc v Smith International (North Sea) Ltd and others CA 21-Feb-2006
. .
Cited – Research In Motion UK Ltd v Inpro Licensing Sarl PatC 2-Feb-2006
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 . .
Cited – Swift’s Application 1962
An application for a patent should only be refused where on no reasonable view could the subject-matter be patentable. . .
Cited – Amengual Far v Amengual Far ECJ 3-Feb-2000
Europa Article 13B(b) of the Sixth Directive 77/388 on the harmonisation of the laws of the Member States relating to turnover taxes allows Member States to lay down a general rule making lettings of immovable . .
Cited – Asahi Kasei Kogyo KK’s Application HL 1991
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 . .
Cited – Effort Shipping Company Ltd v Linden Management Sa and others (The Glannis Nk) HL 22-Jan-1998
A ship’s cargo can be held to be dangerous, and the shipper liable for anything which was more than an obvious physical danger. Such wider danger includes beetle infestation of a crop cargo. Lord Steyn said:’I would be quite prepared, in an . .
Cited – Genentech’s (Human Growth Hormone) Patent CA 1989
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 . .
Cited – Merrell Dow Pharmaceuticals Inc and Another v H N Norton and Co Ltd; Same v Penn Etc HL 26-Oct-1995
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 . .
Cited – IBM/Text processing (1988) T 115/85 EPOBA 1988
IBM sought a European Patent for a text processing program which caused a computer to give automatic visual indications about conditions within the computer.
Held: As a mere technical effect, the claimed step was not within Art 52(2): . .
Cited – Vicom/Computer-related invention EPOBA 1987
The claimant sought a patent claiming a method for the digital processing of images and an associated apparatus (which might be a computer) for implementing the method.
Held: The claims were not to a computer program as such: ‘Generally . .
Cited – Genentech’s (Human Growth Hormone) Patent ChD 1987
The applicant sought a patent for a hormone: ‘It is trite law that you cannot patent a discovery, but if on the basis of that discovery you can tell people how it can be usefully employed, then a patentable invention may result. This in my view . .
Cited – Merrill Lynch’s Application ChD 1988
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, . .
Cited – Gales Application ChD 1990
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 . .
Cited – IBM/Data processor network EPOBA 1988
The Board considered an application for a patent apparently relating to a computer program. The ‘technical feature’ of the claimed innovation was the removal of limitations of prior art systems with the result that the data processing system was . .
Cited – Merrill Lynch’s Application CA 1989
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 . .
Cited – In Re A Patent Application No 9204959 2 by Fujitsu Ltd; Merrill Lynch, Gale, and Fujitsu Limited’s Application ChD 18-Jun-1996
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 . .
Cited – Vicom/Computer-related invention EPOBA 1987
The claimant sought a patent claiming a method for the digital processing of images and an associated apparatus (which might be a computer) for implementing the method.
Held: The claims were not to a computer program as such: ‘Generally . .
Cited – Wang Laboratories Inc’s Application ChD 1990
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 . .
Cited – Raytheon’s Application 1993
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’ . .
Cited – In Re Patent Application No 9204959 by Fujitsu Ltd CA 14-Mar-1997
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 . .
Cited – Pension Benefits EPOBA 2000
The applicant sought a European patent for a method of calculating and controlling pensions benefits. The claim was ‘1. A method of controlling a pension benefits program by administering at least one subscriber employer account on behalf of each . .
Appeal from – Aerotel Ltd v Telco Holdings Ltd PatC 3-May-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. . .
Cited by:
Cited – Symbian Ltd v Comptroller General of Patents CA 8-Oct-2008
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 . .
Considered – Duns Licensing Associates EPB 15-Nov-2006
Inherent in the concept of ‘an invention’ in the EPC was ‘any subject matter or activity having technical character’ and that a contribution could be patentable ‘even if it was related to the items listed in [art. 52(2)] since these items were only . .
Cited – Blacklight Power Inc v The Comptroller-General of Patents PatC 18-Nov-2008
The applicant appealed against the refusal of two patents by the respondent.
Held: The standard of proof to be applied on objections to patentability was the same which applied when testing for exclusions. The standard was the balance of . .
Applied – HTC Europe Co Ltd v Apple Inc CA 3-May-2013
Appeal against two findings that two patents relating to touch sensitive screens were invalid for obviousness in the light of prior art.
Held: It was appropriate for the court, when considering the patentability of computer programs, to adhere . .
Cited – Lantana Ltd v The Comptroller-General of Patents, Designs and Trade Marks PatC 4-Sep-2013
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;
Cited – Lantana Ltd v The Comptroller General of Patents, Design and Trade Marks CA 13-Nov-2014
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 . .
Cited – CFPH LLC (Patent) IPO 10-Aug-2007
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 . .
Cited – Thaler v Comptroller General of Patents Trade Marks and Designs CA 21-Sep-2021
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 . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Leading Case
Updated: 01 November 2021; Ref: scu.245668
