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: Allowing the appeal and finding that it was not patentable the court found the reasoning of Aldous J to be incorrect. A mere ‘new hardware’ test is not enough, if the newness consists of a computer program on a known medium. The Court adopted the EPO’s ‘technical contribution approach’, but a novel and non-obvious improvement to an excluded category does not count as a technical improvement. The computer program exclusion extends not merely to the code constituting a program, but that code as embodied on a physical medium which causes a computer to operate in accordance with that code. More is needed before one is outside the exclusion – as for instance a change in the speed with which the computer works. A technical effect which is no more than the running of the program is not a relevant technical effect.
Fox LJ: ‘The position seems to me to be this. Genentech decides that the reasoning of Falconer J. is wrong. On the other hand, it seems to me to be clear, for the reasons indicated by Dillon LJ, that it cannot be permissible to patent an item excluded by s.1(2) under the guise of an article which contains that item — that is to say, in the case of a computer program, the patenting of a conventional computer containing that program. Something further is necessary. The nature of that addition is, I think, to be found in the Vicom case where it is stated: ‘Decisive is what technical contribution the invention makes to the known art’. There must, I think, be some technical advance on the prior art in the form of a new result (e.g., a substantial increase in processing speed as in Vicom).’ and as to a technical contribution: ‘Now let it be supposed that claim 1 can be regarded as producing a new result in the form of a technical contribution to the prior art. That result, whatever the technical advance may be, is simply the production of a trading system. It is a data-processing system for doing a specific business, that is to say, making a trading market in securities. The end result, therefore, is simply ‘a method of doing business’, and is excluded by s.1(2). The fact that the method of doing business may be an improvement on previous methods of doing business does not seem to me to be material. The prohibition in s.1(2)(c) is generic; qualitative considerations do not enter into the matter. The section draws no distinction between the method by which the mode of doing business is achieved. If what is produced in the end is itself an item excluded from patentability by s.1(2), the matter can go no further. Claim 1, after all, is directed to ‘a data processing system for making a trading market’. That is simply a method of doing business. A data processing system operating to produce a novel technical result would normally be patentable. But it cannot, it seems to me, be patentable if the result itself is a prohibited item under s.1(2). In the present case it is such a prohibited item.’
Sir Nicholas Browne-Wilkinson V-C agreed adding that the application failed additionally being excluded as a mathematical method.
Nicholls LJ: ‘One of the purposes of the l977 Act was to give effect to the European Patent Convention. Thus, section 77(1) provides that a European patent (UK), by which is meant a European patent designating the United Kingdom, shall as from a prescribed date be treated for the purposes of parts 1 and 3 of the Act as if it were a patent under the Act granted in pursuance of an application made under the Act. Section 77(4) provides that where a European patent (UK) is revoked in accordance with the European Patent Convention, the patent shall be treated for the purposes of parts 1 and 3 of the Act as having been revoked under the Act.
The Act had a further purpose. The Act did not merely enact the statutory provisions necessary for the provisions of the Convention regarding European patents to take effect in this country. The Act also had a harmonisation objective. On the signature of the Convention for the European Patent for the Common Market, referred to in the Act as the Community Patent Convention, and not to be confused with the European Patent Convention, the governments of the member states of the European Community resolved to adjust their laws relating to patents so as to bring those laws into conformity with the corresponding provisions in the European Patent Convention and other conventions. Accordingly, when construing and applying section l(l) and (2) of the Act, the court must have regard to the legislative intention with which those subsections were framed, namely, that they were framed so as to have, as nearly as practicable, the same effect in the United Kingdom as the corresponding provisions in Article 52(1), (2) and (3) of the European Patent Convention have in the territories in which that Convention applies. That is the effect of section 130(7) in the present case.
From this brief reference to the European Patent Convention one point which emerges is that it is of the utmost importance that the interpretation given to section l of the Act by the courts in the United Kingdom, and the interpretation given to Article 52 of the European Patent Convention by the European Patent office, should be the same. The intention of Parliament was that there should be uniformity in this regard. What is more, any substantial divergence would be disastrous. It would be absurd if, on an issue of patentability, a patent application should suffer a different fate according to whether it was made in the United Kingdom under the Act or was made in Munich for a European patent (UK) under the Convention. Likewise in respect of opposition proceedings.’
Nicholls LJ: ‘ In the present case Mr. Gale claims to have discovered an algorithm. Clearly that, as such, is not patentable. It is an intellectual discovery which, for good measure, falls squarely within one of the items, mathematical method, listed in s.1(2). But the nature of this discovery is such that it has a practical application, in that it enables instruction to be written for conventional computers in a way which will, so it is claimed, expedite one of the calculations frequently made with the aid of a computer. In my view the application of Mr. Gale’s mathematical formulae for the purpose of writing computer instruction is sufficient to dispose of the contention that he is claiming a mathematical method as such.’ and ‘That still leaves the difficulty that those instructions when written, and without more, are not patentable, because they constitute a computer program. Is there something more? In the end I have come to the conclusion that there is not. The attraction of Mr. Gale’s case lies in the simple approach that, as claimed, he has found an improved means of carrying out an everyday function of computers. To that extent, and in that respect, his program makes a more efficient use of a computer’s resources. A computer, including a pocket calculator with a square root function, will be a better computer when programmed with Mr. Gale’s instructions. So it may. But the instructions do not embody a technical process which exists outside the computer. Nor, as I understand the case as presented to us, do the instructions solve a ‘technical’ problem lying within the computer, as happened with patent applications such Tl15/85) [1990] E.P.O.R. 107 and IBM Corp./Data processor network T06/83), [1990] E.P.O.R. 91. I confess to having difficulty in identifying clearly the boundary line between what is and what is not a technical problem for this purpose. That, at least to some extent, may well be no more than a reflection of my lack of expertise in this technical field. But, as I understand it, in the present case Mr. Gale has devised an improvement in programming. What his instructions do, but it is all they do, is to prescribe for the cpu in a conventional computer a different set of calculations from those normally prescribed when the user wants a square root. I do not think that makes a claim to those instructions other than a claim to the instructions as such. The instructions do not define a new way of operating the computer in a technical sense, to adopt the expression used in IBM Corp./Document abstracting and receiving T22/85, [1990] E.P.O.R. 98, 105.
In short, therefore, the claim is in substance a claim to a computer program, being the particular instructions embodied in a conventional type of ROM circuitry, and those instructions do not represent a technical process outside the computer or a solution to a technical problem within the computer.’

Nicholls LJ, Fox LJ, Sir Nicholas Browne-Wilkinson V-C
[1991] RPC 305
Patents Act 1977 1(2)
England and Wales
Appeal fromGales 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 . .
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Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 January 2022; Ref: scu.245671