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 patentability: ‘I, like Nicholls LJ [in Gale], have difficulty in identifying clearly the boundary line between what is and what is not a technical contribution. In Vicom it seems that the Board concluded that the enhancement of the images produced amounted to a technical contribution. . . Each case has to be decided upon its own facts.’ Aldous LJ said that the court was not required to decide upon whether the application depended upon a mental act, but, obiter, ‘Methods of performing mental acts, which means methods of the type performed mentally, are unpatentable, unless some concept of technical contribution is present.’

Aldous LJ
Times 14-Mar-1997, [1997] EWCA Civ 1174, [1997] RPC 608
Patents Act 1977 1(2)
England and Wales
Appeal fromIn 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 . .
CitedVicom/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 . .
CitedGale’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 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 In one case a patent had been revoked on being challenged, and in the other, the . .
CitedCappellini and Bloomberg, Re PatC 13-Mar-2007
The applicants appealed rejection of their applications for patents. The comptroller-general had said that patents were in respect of computer programs excluded from registration.
Held: The appeals failed. There was no relevant technical . .
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 . .
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. . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Leading Case

Updated: 01 November 2021; Ref: scu.82115