Category: Intellectual Property

Cantor Index Llc (Patent): IPO 22 Mar 2007

IPO The invention related to a betting system in which a win bet (that a single participant would win) was combined with a group bet (that one of a subset of participants would win). The hearing officer did not think that determining the contribution of the invention for the purposes of the test in Aerotel/Macrossan [2006] EWCA Civ 1371 necessarily required a consideration of novelty and inventive step. He held the contribution, as a matter of substance, to be the provision of a group bet, its incorporation into a betting system and calculation of payouts in dependence on it, and did not accept the applicant’s argument that the contribution extended to the processor functions which formed part of the claims because the advantage of reduced traffic in the system would not otherwise be realised. The hearing officer held the invention to be excluded under the third step of the test as a computer program (stripping out the hardware aspects which were conventional) and a method for doing business; even if this finding was incorrect he did not think the contribution was technical.
The application was therefore refused, although the hearing officer also held that the invention involved an inventive step over the prior art cited by the examiner. Although the nearest document disclosed something that might be a group bet, it did not disclose or point to the placing of a group bet as a single transaction in conjunction with a win bet.

Citations:

[2007] UKIntelP o08207

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 October 2022; Ref: scu.456593

IGT (Patent) O/054/07: IPO 22 Feb 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 from which a large number of trajectories could be produced from a small stored data set: the applicant argued that the storage of initial trajectory states with probable game outcomes reduced the data storage requirement for a 3-D game.
Added matter The hearing officer held that the proposed claim added matter because (i) it impermissibly combined details from two distinct embodiments, (ii) as regards the probability distribution its wording did not correspond to what was actually described, and (iii) it appeared to relate to an invention not originally contemplated.
Excluded fields The applicant argued that the invention was patentable because there was a technical improvement to a computerised implementation of a game. The hearing officer did not think this followed from Aerotel/Macrossan and held the invention excluded because it failed the third Aerotel/Macrossan step in that it related solely to a computer program and (following the decision in O/211/06) to a method or rule for playing a game. Unlike cases such as Aerotel, Inpro SARL [2006] EWHC 70, [2006] RPC 20 and Arm Limited O/066/06, there was nothing going beyond excluded matter to constitute a feature which might be considered technical under the fourth Aerotel/Macrossan step. The application was refused.

Judges:

Mr R C Kennell

Citations:

[2007] UKIntelP o05407, O/054/07, GB 0427512.9

Links:

Bailii

Statutes:

Patents Act 1977 1(2) 76(2)

Intellectual Property

Updated: 19 October 2022; Ref: scu.456575

NEC Corporation (Patent): IPO 16 Feb 2007

IPO The application concerns a system, primarily for use on a mobile phone, for processing a received email depending upon the content and source of the email. The device is capable of producing two simultaneous notify tones when the address of the sender matches one preset by the user and the email contains a particular text string.
The Hearing Officer considered the application according to the method of analysis laid out in the Court of Appeal judgment in Aerotel/Macrossan and decided that the actual contribution made by the invention defined in the independent claims resided solely in excluded matter, in particular the presentation of information and a program for a computer.
He therefore refused the application.

Citations:

[2007] UKIntelP o05007, O/050/07

Links:

Bailii

Intellectual Property

Updated: 19 October 2022; Ref: scu.456578

Withers Rogers v Jon Henry Dobson (Patent): IPO 23 Jan 2007

IPO Withers and Rogers had previously applied for the revocation of Mr Dobson’s Patent on behalf of an anonymous client on the grounds that the invention lacked an inventive step. The Hearing Officer issued a decision in which the application was dismissed.
The patentee subsequently requested the issue of a certificate of contested validity under section 65(1). The Hearing Officer agreed to this request and made an order to the effect that the Patent had been unsuccessfully challenged in revocation proceedings before the Comptroller and was found to be valid.

Citations:

[2007] UKIntelP o02807

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 October 2022; Ref: scu.456557

Kabushiki Kaisha Toshiba (Patent): IPO 29 Jan 2007

IPO The application relates to a computer-aided design tool intended for use in designing, for example, nuclear or thermal power plants. A three-dimensional CAD system includes a parts table in spreadsheet format, and an arrangement adjusting unit and a parts editor to change the data stored about the parts using data about sub-parts. The Hearing Officer considered the recent Court of Appeal judgment in Aerotel/Macrossan and decided that the actual contribution made by the invention fell solely within the meaning of a computer program. It was not necessary to consider whether the contribution was technical in nature as set out in the fourth step of the Aerotel/Macrossan test. The application was refused.

Judges:

Mr B Westerman

Citations:

[2007] UKIntelP o03107

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 October 2022; Ref: scu.456537

Elizabeth Jane Acosta, Sharp Kabushiki Kaisha, Michael John Towler and Harry Garth Walton (Patent): IPO 6 Dec 2005

IPO As a result of an uncontested application filed under section 13(1) by Elizabeth Jane Acosta, it was found that she should also be mentioned as a joint inventor in granted patent EP (UK) 0919847 and directed that an addendum slip mentioning her as a joint inventor be prepared for the granted patent for the invention.

Judges:

Mrs S Williams

Citations:

[2005] UKIntelP o31605

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 19 October 2022; Ref: scu.456496

Overture Services Inc (Patent): IPO 21 Dec 2005

IPO The invention concerned a search engine for searching geo-coded records. The user specifies a distance range as a limitation on the field of search, so that for example, it is possible to search for a pizza store within (say) 5 km of the users address. If no pizza stores are found within 5 km, the search engine automatically extends the distance range until a certain number of pizza stores (eg. 10) are found.
The Hearing Officer applied the two-stage test from CFPH, and concluded that the said advance was not new and inventive under the description an invention in the sense of Article 52 (EPC). Rather, the new and inventive element(s) of the invention were all outside this description, in fields that are not inventions for the purposes of patent law.
The Hearing Officer also considered the policy reasons behind the computer program exclusion, as stated in CFPH. He concluded that since the claims (if granted) would foreclose computer programs (and only computer programs) to the public, then the application could not be granted.

Judges:

Mr S Probert

Citations:

[2005] UKIntelP o33105, GB 2379062

Links:

Bailii

Citing:

Cited – CFPH LLC, Patent Applications By PatC 21-Jul-2005
In the context of deciding as to the patentability the use of the description ‘technical’ was ‘a useful servant but a dangerous master’. Peter Prescott QC discussed the importance of being clear as to the meaning of an ‘invention’ saying: ‘does it . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 October 2022; Ref: scu.456504

Ajit Weekly (Trade Mark: Invalidity): IPO 29 Dec 2005

Professor Annand set out the combined test of bad faith in a trade mark application: ‘Bad faith is to be judged according to the combined test of dishonesty for accessory liability to breach of trust set out by the majority of the House of Lords in Twinsectra Ltd v Yardley, with Gromax Plasticulture Ltd v Don and Low Nonwovens Ltd providing the appropriate standard, namely acceptable commercial behaviour observed by reasonable and experienced persons in the particular commercial area being examined.
the upshot of the Privy Council decision in Barlow Clowes is: (a) to confirm the House of Lords’ test for dishonesty applied in Twinsectra, i.e. the combined test; and (b) to resolve any ambiguity in the majority of their Lordships’ statement of that test by making it clear that an enquiry into a defendant’s views as regards normal standard of honesty is not part of the test. The subjective element of the test means that the tribunal must ascertain what the defendant knew about the transaction or other matters in question. It must then be decided whether in the light of that knowledge, the defendant’s conduct is dishonest judged by ordinary standard of honest people, the defendant’s own standards of honesty being irrelevant to the objective element.’

Judges:

Professor Ruth Annand

Citations:

[2006] RPC 25, 2283796, [2005] UKIntelP o00406

Links:

IPO, Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Ajit Weekly (Trade Mark: Invalidity) IPO 2-Feb-2005
PO Trade Marks – Inter Partes Decisions – Invalidity . .

Cited by:

Cited – Jules Rimet Cup Ltd v The Football Association Ltd. ChD 18-Oct-2007
The parties disputed on preliminary issues the ownership of the rights in the trade mark ‘World Cup Willie’. The claimant had set out to register the mark, and the defendant gave notice of its intention to oppose. The claimant now alleged threat and . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 19 October 2022; Ref: scu.456487