When the court looked at whether the repair of a patented article was an infringement, the court would better achieve its required answer by asking whether the works amounted to a manufacture of the patented article, rather than a repair. The concept of implied licence was now to be disregarded. The acts in this case … Continue reading United Wire Limited v Screen Repair Services (Scotland) Limited; Howlett etc: CA 27 Jul 1999

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 … Continue reading Genentech’s (Human Growth Hormone) Patent: CA 1989

Lloyd LJ added to the guidance at first instance: ‘In each case sufficiency will thus be a question of fact and degree, depending on the nature of the invention and the other circumstances of the case. But if a working definition is required then one cannot do better than that proposed by Buckley L.J. in … Continue reading Mentor Corporation v Hollister Incorporated: CA 1993

Slade LJ said: ‘If the plea of obviousness is to succeed, the court has to be satisfied that it would have appeared to the hypothetical technician, skilled in the art but lacking in inventive capacity, worthwhile to coat the helix of a self-pulling corkscrew with a friction-reducing material for purpose (a) or purpose (b) above … Continue reading Hallen Co v Brabantia (UK) Ltd: CA 1991

A patent application was made for a system for the automatic recognition of ships by comparison of a digital image with data stored in a computer database. Held: The court gave a wider meaning to the phrase ‘mental act’ Citations: [1993] RPC 427 Statutes: Patents Act 1977 1 Cited by: Cited – Aerotel Ltd v … Continue reading Raytheon’s Application: 1993

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 … Continue reading Merrill Lynch’s Application: ChD 1988

Jacobs J said: ‘I do not think it is right to divide up the claim for an invention which consists of a combination of elements and then to seek to identify who contributed which element. I think the inquiry is more fundamental than that. One must seek to identify who in substance made the combination. … Continue reading Henry Brothers (Magherafelt) Ltd v Ministry of Defence Northern Ireland Office: ChD 1997

cw Inter Partes Decisions – Patents Judges: Mrs S Williams Citations: GB 2323411, O/120/02 Links: PO Statutes: Patents Act 1977 13(1) Intellectual Property Updated: 28 April 2022; Ref: scu.177152

The court was asked to interpret the application of section 40 of the 1977 Act. Held: The benefit of the section was to be taken by the actual inventor, and did not extend to those who had merely contributed. In calculating the benefit, the phrase ‘outstanding benefit’ the court should look for ‘something special’ or … Continue reading Kelly and Another v GE Healthcare Ltd: PatC 11 Feb 2009

The claimant appealed from refusal of statutory compensation under the 1977 Act. He had invented a form of pump which was used by his employers, the respondents in the management of diabetes management. Held: The appeal succeeded: ‘the correct approach to the application of section 40 and the one that does least violence to its … Continue reading Shanks v Unilever Plc and Others: SC 23 Oct 2019

A claim was made for a method of design in which certain calculations were to be carried out recursively, modifying the results each time until a particular criterion was satisfied. Though the method was susceptible of solution by computer, but the claim was not limited in this way. Nor was the claim limited to the … Continue reading Halliburton Energy Services, Inc v Smith International (North Sea) Ltd and others: PatC 21 Jul 2005

As a result of an uncontested application filed under section 13(1) by Ayumu Taniguchi, and Juni-ichi Tanabe, Fumio Kunishige and Masao Komai, it was found that Ayumu Taniguchi, and Juni-ichi Tanabe, Fumio Kunishige and Masao Komai should be mentioned as a joint inventors in the granted patent and directed that an addendum slip mentioning them … Continue reading Ayumu Taniguchi, Juni-Ichi Tanabe, Fumio Kunishige Masao Komai v Toyo Kohan Co Ltd (Patent): IPO 27 Jan 2000

Appeal from a decision rejecting a Patent Application in the name of Fujitsu Ltd. His grounds for rejection were that the subject matter of the application was not an invention for the purposes of the 1977 Act in that it was excluded as a result of the provisions of s. 1(1)(d) and 1(2)(d) as being … Continue reading Fujitsu Ltd, Re Patent Application No. 920495 2: PatC 24 May 1996

Patent revocation action [2000] EWHC Patents 34, [2001] RPC 25 Bailii England and Wales Cited by: Cited – Actavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019 The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, … Continue reading Novo Nordisk A/S v DSM NV; DSM NV’s Patent: PatC 21 Dec 2000

The patentee had invented a method for storing CDs. The patentee sought leave to appeal a finding that its patent was invalid, and if successful, to appeal a finding that the defendant’s apparatus was not infringing. Held: The application for leave to appeal did involve a judicial finding sufficient to satisfy the obligation under TRIPS. … Continue reading Pozzoli Spa v BDMO Sa and Another: CA 22 Jun 2007

validity of patent. Held: No formula should distract the court from the statutory question. [2009] EWCA Civ 646, [2009] RPC 23, (2009) 109 BMLR 78, (2009) 32(9) IPD 32062 Bailii England and Wales Citing: Cited – Brugger v Medic-Aid Ltd (No 2) ChD 1996 B alleged infringement by M of its patented nebulizer. M replied … Continue reading Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd and Another: CA 2 Jul 2009

The original inventor obtained a patent for a brake fluid protection system. A loan was raised against the patent, assigning also the future developments of the idea. The loan was called in, and then assigned to the defenders, who took the idea forward obtaining further patents. The pursuer asserted infringement. Held: The loan transferred all … Continue reading Buchanan v Alba Diagnostics Limited: HL 5 Feb 2004

These proceedings raise, for the first time in the courts of the United Kingdom, the question how the concepts of sufficiency and infringement are to be applied to a patent relating to a specified medical use of a known pharmaceutical compound. Four issues arose: (i) the construction of the claims (in particular, Claim 3 as … Continue reading Warner-Lambert Company Llc v Generics (UK) Ltd (T/A Mylan) and Another: SC 14 Nov 2018

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 … Continue reading Gale’s Application: CA 1991

Synthon filed an international application for a patent. Before it was published, SB filed a similar application in the UK patents registry. Synthon had applied for the UK patent granted to SB to be revoked. Jacob J had found that the reader of the application, seeking to crystallise PMS, would be able to overcome any … Continue reading Synthon Bv v Smithkline Beecham Plc: HL 20 Oct 2005

Appeal from dismissal of application for revocation of patent. Lord Clarke of Stone-cum-Ebony MR, Jacob, Richards LJJ [2009] EWCA Civ 1362, (2010) 33(2) IPD 33007, [2010] RPC 9 Bailii England and Wales Cited by: Cited – Actavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019 The court considered: ‘the application of … Continue reading Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly and Company Ltd: CA 18 Dec 2009

Held: The court must answer a relatively simple question of fact: was it obvious to the skilled but unimaginative addressee to make a product or carry out a process falling within the claim Lord Justice Moore-Bick Lord Justice Lewison And Lord Justice Kitchin [2012] EWCA Civ 1234, [2013] RPC 27 Bailii England and Wales Cited … Continue reading MedImmune Ltd v Novartis Pharmaceuticals UK Ltd: CA 10 Oct 2012

The parties each made cable mechanisms for cars. There had been a patent dispute in Germany resulting in a finding of infringement, which finding was subject to appeal. A letter was sent in England referring to the German decision, stating that the company intended to enforce its rights. Held: In considering whether it was arguable … Continue reading Bowden Controls Ltd v Acco Cable Controls Ltd: ChD 1990

IPO The claimant launched entitlement proceedings in respect of four withdrawn and unpublished patent applications, arguing that the defendant had made the inventions during the course of his duties whilst employed by the claimant. The claimant argued that the defendant was a director of Cerise Innovation at the time when the inventions were made and … Continue reading Cerise Innovation Technology Ltd vAbdulhayoglu (Patent) O/067/00: IPO 23 Feb 2000

IPO The invention related to linking a software application that is pre-installed on a client device with a user account, thereby enabling certain acts to be carried out in relation to that application such as updating or reinstalling the application, or installing the application on another client device associated with the user account. A check … Continue reading Apple Inc (Patent): IPO 15 Mar 2016

IPO UK patent application GB2502133 was applied for in the name of WTL Technologies Limited and names Len Maxwell as the sole inventor. Ian Dennis Thirkell made an application under section 13(3) of the Patents Act 1977 to the effect that Len Maxwell should not be mentioned as inventor, together with a further application under … Continue reading Thirkell, WTL Technologies Limited, Maxwell (Patent): IPO 29 Jan 2016

The claimants had a patent specifying a means of gambling over computers connected at a distance. They brought infringement proceedings against the respondent, who defended by asserting that since the host computer was located abroad it did not infringe, claiming in aid the provisions which referred to the making of a supply within the UK. … Continue reading Menashe Business Mercantile Ltd and Another v William Hill Organization Ltd: PatC 15 Mar 2002

The question was what was meant by ‘application’ in section 2(3): the request, or the document. It was crucial, because if it meant the document it would have counted as prior art, and would have been novelty-destroying; but if it meant the request, it would not have done because the request had been withdrawn and … Continue reading Woolard, Re A Patent Application: PatC 12 Apr 2002

IPO The application relates to a metering system to measure usage of renewable energy produced by a privately owned micro-generating unit. The micro-generating unit is part of a larger commercial installation which operates on the basis of ‘sharecropping’, where private users are allocated amounts of renewable energy based upon their investment into the scheme. The … Continue reading Sustainable Energy and Heating Systems Ltd (Patent): IPO 19 Aug 2014

IPO Excluded fields (refused) – The invention relates to a system for generating electronic security documents on a computing system. The invention provides a new method for generating and storing a security document in a multi-node network in which the document is assigned a unique document identifier including amongst other things a process identifier, and … Continue reading Recipero Ltd (Patent): IPO 23 Dec 2014

Excluded fields (refused) – The invention related to providing a personalized advertising service through portable terminals such as mobile phones and Personal Digital Assistants (PDAs). In the invention, if a particular user wishes a personalized advertisement to be delivered to other users or group members an advertising server can provide the personalized advertisement based on … Continue reading Samsung Electronics Co Ltd (Patent): IPO 17 Dec 2014

IPO An uncontested application was filed by the patent agents of the proprietor Zytronic Displays Limited under rule 10(2) of the Patents Rules 2007. As a result, it was found that both Stephen Ormston and Philip Rudland should be mentioned as joint inventors along with Andrew Morrison in the published patent application and granted patent … Continue reading Zytronic Displays Limited, Morrison, Ormston and Rudland (Patent): IPO 30 Dec 2014

IPO This was a Decision on costs following an earlier substantive Decision on entitlement in favour of the defendants. The lack of representation of the claimant prior to the week before the hearing was noted. An award on the scale was made to the defendant, taking this into account. Mr J Elbro [2014] UKIntelP o33614, … Continue reading Surinder Pal Kaur and Bhupinder Seran (Patent): IPO 31 Jul 2014

IPO An uncontested application was filed by Wonderland Nurserygoods Company Limited under rule 10(2) of the Patents Rules 2007 and section 13(3) of the Patents Act 1977. It was found that Guang-Hui Zhao should be mentioned as the sole inventor in relation to the granted patent and directed that an addendum slip mentioning him as … Continue reading Wonderland Nurserygoods Company Limited, Jian-Qun Li and Guang-Hui Zhao (Patent): IPO 31 Jul 2014

IPO The invention relates to an electronic book reading system, for accessing and reading digital content via a hand-held device. Data is transmitted wirelessly from the device to a lens system, in the form of glasses worn by the user or other lenses. The lens system reproduces content for the user in the form of … Continue reading Michael Oluwaseun Bamidele (Patent): IPO 11 Nov 2014

IPO Genentech Inc, the proprietors of Patent Number EP(UK) 1 187 632 B1, entitled ‘Treatment with Anti-ErbB2 Antibodies’, granted on 3 December 2008, gave notice on 16 January 2014 of an offer to surrender this patent under Section 29 of the Act. At this time, the patent was also the subject of revocation proceedings in … Continue reading Genentech Inc (Patent): IPO 11 Aug 2014

IPO The application relates to a method of computationally modelling production from a subterranean region with reference to a wellbore and surrounding formation, such as may be encountered in oil and gas exploration and production. The modelling typically provides simulations which predict the flow of oil, water and/or gas flow from a formation, using a … Continue reading Senergy Holdings Limited (Patent): IPO 4 Feb 2015

IPO The methods, systems and computer programs described in the application are concerned with the management of a supply chain and particularly with controlling access of trading partners in the supply chain to particular stages or ‘states’ of the supply chain, in particular the trading partner can view the transaction in a given state, the … Continue reading I2 Technologies US, Inc (Patent) O-417-10: IPO 1 Dec 2010

The application relates to a custom application builder for supply chain management. In particular a user wanting access to supply chain related data may build a ‘custom’ application using data in one or more particular ‘modules’, respective modules relating to subsets of data in the supply chain such as purchase order data, inventory data, forecasting … Continue reading I2 Technologies Us, Inc (Patent) O/416/10: IPO 1 Dec 2010

IPO The application relates generally to a program based supply chain management. Here the word ‘program’ is not used directly in relation to a computer program but the program is in this sense is rather a definition of a relationship between trading partners, e.g. such as a manufacturer and a vendor. The invention essentially restricts … Continue reading I2 Technologies Us, Inc (Patent) O/415/10: IPO 1 Dec 2010

Entitlement, Inventorship – This was an action brought by the wife and successor-in-title of one of the joint inventors against the other to remove him as both a joint inventor and co-owner. The patent concerned a standalone LED display interconnectable with itself which shows an editable picture. The hearing officer held that the attempts by … Continue reading Surinder Palkaur v Bhupinder Seran (Patent): IPO 30 May 2014

IPO Inventorship – An uncontested application was filed by the proprietor Funky Moves Ltd under rule 10(2) of the Patents Rules 2007. As a result, it was found that Thomas David Binnie should be mentioned as a joint inventor along with Ralf Kinnert in the published patent application and granted patent for the invention and … Continue reading Funky Moves Ltd, Kinnert and Binnie (Patent): IPO 5 Jun 2014

IPO Inventorship – An uncontested application was filed by the proprietor E.V. Offshore Limited under rule 10(2) of the Patents Rules 2007. As a result, it was found that Matthew Gibson-Ford should be mentioned as a joint inventor along with Jonathan Thursby and Shaun Peck in the published patent application for the invention and directed … Continue reading EV Offshore Limited, Jonathan Thursby, Shaun Peck and Matthew Gibson-Ford (Patent): IPO 12 Jun 2014

IPO Inventorship – An uncontested application was filed by Patrick Gaillard under rule 10(2) of the Patents Rules 2007. As a result, it was found that Patrick Gaillard should be mentioned as a joint inventor along with Adrian Bunce and Andrew Fusellier in the published patent application and directed that an addendum slip mentioning him … Continue reading Dynex Technologies, Inc, Bunce, Fusellier and Gaillard (Patent): IPO 26 Jun 2014

IPO Inventorship – An uncontested application was filed by the proprietor E.V. Offshore Limited under rule 10(2) of the Patents Rules 2007. As a result, it was found that Matthew Gibson-Ford should be mentioned as a joint inventor along with Jonathan Thursby and Shaun Peck in the published patent application and granted patent for the … Continue reading EV Offshore Limited, Thursby, Peck and Gibson-Ford (Patent): IPO 10 Jun 2014

Amendment, Entitlement – A request to amend the defendant’s counterstatement was opposed by the claimants. The hearing officer exercised his discretion in line with the overriding principle to deal with the case justly and allowed the amendment. Mr P Slater [2014] UKIntelP o22414, GB2421687 Bailii Patents Act 1977 13 37 England and Wales Intellectual Property … Continue reading Susan Grant v Teifion Emlyn James (Patent): IPO 22 May 2014

IPO The patent related to a deployment method for a turbine base which is deployed on the seabed. The claimant and the defendant worked together on a project in this area, and the dispute was whose employees had devised the invention. The dispute hinged around what had occurred between the production by the claimant of … Continue reading Mclaughlin and Harvey Limited v Openhydro Group Limited: IPO 11 Feb 2014

IPO The invention is concerned with calibrating sleep clocks from fast clocks in wireless network apparatus, such as mobile telephones. Sleep clocks are low frequency clocks which run while devices are in an energy saving sleep mode; they are prone to frequency drift. Fast clocks are high frequency clocks which run when devices are awake, … Continue reading Renesas Mobile Corporation (Patent): IPO 20 Dec 2013

IPO The invention related to a method of allowing a user to interact with a 3D geoscience object displayed on a computer display. The user identifies a feature of interest in the object and is then able to manipulate the image using two or more control points in 3D space, e.g. to rotate, translate or … Continue reading Logined BV (Patent): IPO 20 Dec 2013

IPO An uncontested application was filed by Zymogenetics, Inc. under rule 10(2) of the Patents Rules 2007. As a result, it was found that Rolf E. Kuestner should be mentioned as a joint inventor along with Cindy A. Sprecher, L. Joseph Kuijper, Maria M. Dasovich, J. Francis Grant, Angela K. Hammond, E. Julia Novak, Jane … Continue reading Zymogenetics, Inc, Cindy A Sprecher, L Joseph Kuijper, Maria M Dasovich, J Francis Grant, Angela K Hammond, E Julia Novak, Jane A Gross, R Stacey Dillon and Rolf E Kuestner (Patent): IPO 19 Jun 2013

Patent – Decline to deal, Entitlement – These proceedings relate to the issue of entitlement and in particular a reference under sections 12 and 37 of the Patents Act 1977 in respect of GB2459912 and WO2009/136150. The matter appeared to have been resolved by agreement following mediation. However, there still appeared to be a number … Continue reading Neath and Neath v Neath: IPO 12 Sep 2013

Industrial application – The invention related to a series of bags connected to form a vertical conveyer which rotates over rollers. Bags on the descending side of the conveyer are filled with water, causing the conveyer to rotate as the water-filled bags fall under gravity. Bags on the ascending side of the conveyer are empty, … Continue reading Peter Joseph Crowley (Patent): IPO 27 Sep 2013

The application relates to ‘System and method for super-augmenting a persona to manifest a pan-environment super-cyborg for global governance’. The Hearing Officer considered the application to lack both industrial application and sufficiency and subsequently refused the application. Mrs C L Davies [2013] UKIntelP o40113, GB1213494.6 Bailii Patents Act 1977 1(1)(c) 1493) Intellectual Property Updated: 23 … Continue reading Caleb Suresh Motupalli (Patent) O/401/13: IPO 4 Oct 2013

Patent application GB 1009825.9 relates to electrochemical protection of steel in reinforced concrete exposed to the air. The applicants had been unable to satisfy the examiner that the claimed invention was novel and that amendments made to the application had not added matter. Following a hearing at which the applicants provided more information on the … Continue reading Gareth Glass, Adrian Roberts and Nigel Davison (Patent): IPO 20 Aug 2013

IPO PCT application WO 2009/128847 entitled ‘Apparatus for playing wagering games’ entered the UK national phase as patent application GB1018115.4. This invention allows a player to play a wagering game at a machine in the casino using funds in a remote account. Specifically, it allows one or more players to use syndicate funds or, alternatively, … Continue reading WMS Gaming Inc (Patent): IPO 24 Jun 2013

IPO The invention relates to a data synchronization protocol, in which synchronization messages to be exchanged between a client and server comprise separate sync modes (e.g. fast, slow, reset) associated with different dataclasses of data to be synchronized. The sync modes may be provided in parallel and the data may be updated in parallel. This … Continue reading Apple Inc (Patent): IPO 6 Jun 2013

IPO This is a decision on costs following a case management conference at which a reasoned oral decision was given refusing a request by the defendant for postponement of the substantive hearing. Costs in respect of the case management conference (which took place in two short sessions on consecutive days) were awarded to the claimant. … Continue reading Coupling Technology Limited and Coupling Solutions Llc (Patent): IPO 5 Jun 2013

IPO The application relates to a method of generating a list of cancer drug treatment options based on the status of molecular markers derived from a sample of a tumor in a patient. It is claimed as a method of diagnosing cancer which comprises the steps of interrogating a computer-implemented database and producing a list … Continue reading The Rocket Science Group, Llc (Patent): IPO 7 Jun 2013

IPO The application relates to a method and apparatus for determining the competency of human language interpreters. More specifically the invention, which is computer based, evaluates the proficiency of language interpreters, including in terms of determining if they have knowledge of specific technical terms in a certain field, for example medicine. The invention seeks to … Continue reading Language Line Services, Inc (Patent): IPO 14 May 2013

IPO The application concerns a gene called VHZ that encodes a phosphatase. The claims at issue are second medical use claims that are directed to agents against VHZ for use in the treatment of cancers in which VHZ is overexpressed. The examiner had objected that the application only provides support for the use of anti-VHZ … Continue reading Agency for Science, Technology and Research (Patent): IPO 28 May 2013

IPO The application relates to transcoding a web site by storing information that is found on one page of the site, inserting it into the transcoded version of another page, and providing the result to a mobile communication device. The ‘stored information’ may be a street address, a map, a telephone number or a brand … Continue reading Afilias Technologies Limited (Patent): IPO 30 May 2013

IPO This decision relates to costs in revocation proceedings. In an earlier decision (BL/0326/12), the hearing officer found the claims as granted to be invalid for lack of novelty. However, revocation was subsequently avoided by amendment under section 75. The claimants were found to be entitled to an award of costs in line with the … Continue reading Tip-TopCom Ltd v Salvus Technology Limited (Patent): IPO 16 May 2013

IPO An uncontested application was filed by the patent agents of the proprietor Arvia Technology Limited under rule 10(2) of the Patents Rules 2007. As a result, it was found that Syed Hussain should be mentioned as a joint inventor along with Edward P L Roberts and Nigel Willis Brown in the published patent application … Continue reading Arvia Technology Limited, Edward P L Roberts, Nigel Willis Brown and Syed N Hussain (Patent): IPO 16 Oct 2013

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 … Continue reading In Re Patent Application No 9204959 by Fujitsu Ltd: CA 14 Mar 1997

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 to the conclusion that the ROM claimed cannot … Continue reading Gales Application: ChD 1990

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 appeal was against refusal. Held: Jacob LJ said: ‘the court must approach … Continue reading 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