Gale’s Application: ChD 1990


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 be considered as a claim to an invention which is no more than an invention relating to disqualified matter defined in section 1(2) of the Act. The ROM is an article which can be manufactured. It has one dedicated function. It is an article whose structure has been altered during manufacture so as to perform the function of this method or program defined by the claim. A claim in a patent to such an article cannot to my mind be called a claim relating to a mathematical method or a method for performing a mental act, nor a program for a computer. There is a difference between a claim which relates to a disc containing a program and a ROM with particular circuitry. In the former the disc carries the program and therefore can be considered as in effect a claim relating to the program; where as in the latter the program or method is used as the basis for altering the structure of the ROM which then becomes a dedicated piece of apparatus, which can be used to carry out the program or method.
That difference also applies to the combination of an ordinary computer when programmed, which was referred to by Dillon L.J. in the Genentech case. Such a computer even when programmed remains an ordinary computer: the only difference being the fact that it is programmed and therefore in reality what is being claimed is the use of the program. However, in the case where a computer is constructed so as to operate in a particular way by insertion of a ROM the result is a technical change resulting in a different computer. Thus a claim to a computer containing a ROM as defined in Mr. Gale’s claim would in my view be more than a claim to a program. No doubt the claim would cover use of the program, but only when a particular ROM was used. What appears to me to be important is that such a claim relates to a new technical product namely a computer constructed in a particular way.
I believe that the principal examiner was wrong in equating the claimed ROM with a disc carrying a program. A disc serves as a carrier for a program, as no doubt can a ROM. However a ROM is more than a carrier, it is a manufactured article having circuit connections which enables the program to be operated. A claim to a ROM with particular circuitry, albeit defined by functional steps, cannot to my mind be said to relate to the program or the functional steps as such.’
Aldous J
[1991] RPC 305
Patents Act 1977 1(2)
Appeal fromMerrill 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, . .
[1988] RPC 1
CitedGenentech’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 . .
[1989] RPC 147

Cited by:
CitedAerotel 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
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 . .
[2006] EWCA Civ 1371, [2007] Bus LR 634, [2007] RPC 7, [2006] Info TLR 215, [2007] 1 All ER 225
Appeal fromGale’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: . .
[1991] RPC 305
CitedSymbian 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 . .
[2008] EWCA Civ 1066, Times 28-Oct-08, [2009] RPC 1
CitedSymbian Ltd v Comptroller General of Patents PatC 18-Mar-2008
The company appealed against rejection of its patent application, the objection being as to the invention’s patentability. The EPO had granted a European Patent. . .
[2008] EWHC 518 (Pat), GB 0325145.1

These lists may be incomplete.
Leading Case
Updated: 12 December 2020; Ref: scu.245710