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 discovery as such is not patentable as an invention under the Act, but when applied to a product or process which, in the language of the 1977 Act, is capable of industrial application, the matter stands differently. Section 1(2) did not depart from the established principles. A particular DNA sequence was an ‘existing fact of nature, newly discovered’. Table VI lay ‘at the heart of the invention’, bit it was not the invention.
Judges:
Mustill LJ, Purchas LJ, Dillon LJ
Citations:
[1989] RPC 147
Statutes:
Jurisdiction:
England and Wales
Citing:
Appeal from – 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 by:
Cited – Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others etc HL 21-Oct-2004
The claims arose in connection with the validity and alleged infringement of a European Patent on erythropoietin (‘EPO’).
Held: ‘Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance . .
Cited – 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
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 In one case a patent had been revoked on being challenged, and in the other, the . .
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 – 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 – Kapur v Comptroller General of Patents, Designs and Trade Marks PatC 10-Apr-2008
The applicant sought patents for systems of document management. The applications had been rejected as being for computer programs as such.
Held: The exclusion from protection created by the section was to be construed narrowly. In the absence . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 28 May 2022; Ref: scu.218803
