Merrill 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, where an invention for which a patent is sought involves any of the matters specified in paragraphs (a) (b), (c) and (d) (‘an excluded matter’), on its proper construction the qualification in section 1(2) does require of the Patent Office an initial enquiry and assessment as to whether the inventive step resides in the contribution of that excluded matter alone – if only that contribution of the excluded matter is the inventive step, the invention is not patentable by virtue of section 1(2). I endorse, therefore, the view of the principal examiner that in the determination of whether or not an application relates to an excluded thing it is necessary to take into account whether the non-excluded features are already known or obvious.’


Falconer J


[1988] RPC 1


Patents Act 1977 1(2)


England and Wales

Cited by:

Appeal fromMerrill Lynch’s Application CA 1989
The invention in this case was an improved ‘data processing system for making a trading market in at least one security in which the system proprietor is acting as principal.’
Held: More than one exclusion can be in play in relation to the . .
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 . .
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 In one case a patent had been revoked on being challenged, and in the other, the . .
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

Updated: 04 May 2022; Ref: scu.245707