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 taking a different approach to the European Patent Office, and that the Court of Appeal should depart from its earlier decisions on this topic.
Held: The line of decisions in Europe was not yet so consistent as to require that English law change to accord with it. The court urged a dialogue with the European Patent Office to reconcile the differences. The issue as to what constituted a computer program ‘is inherently problematic, and inevitably will lead to a degree of inconsistency and uncertainty. ‘
Lord Neuberger of Abbotsbury
[2008] EWCA Civ 1066, Times 28-Oct-2008, [2009] RPC 1
Bailii
Patents Act 1977 1(2)
England and Wales
Citing:
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 – 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 . .
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 In one case a patent had been revoked on being challenged, and in the other, the .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 – Actavis UK Ltd v Merck and Co Inc CA 21-May-2008
Appeal against finding that patent invalid.
Held: The Court of Appeal is free to depart (but not bound to depart) from one of its previous decisions on a point in the field of patent law if satisfied that the Board have formed a settled view . .
Cited – Duns Licensing Associates EPB 15-Nov-2006
Inherent in the concept of ‘an invention’ in the EPC was ‘any subject matter or activity having technical character’ and that a contribution could be patentable ‘even if it was related to the items listed in [art. 52(2)] since these items were only . .
Cited – Actavis UK Ltd v Janssen Pharmaceutica Nv PatC 30-Jun-2008
. .
Cited – Windsurfing International Inc v Tabur Marine (Great Britain) Limited CA 1985
Testing Validity of a Patent
A patent was challenged where the windsurf board had been shown as a primitive prototype to have been built and used in public by a twelve year old boy. The court set out the four steps required to be taken when ascertaining the validity of a . .
Cited – Pozzoli Spa v BDMO Sa and Another CA 22-Jun-2007
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 . .
Cited – Improver Corporation v Remington Consumer Products Ltd ChD 1989
Protocol Tests For Onbviousness Set Out
The invention was based upon the discovery that an arcuate rod with slits, when rotated at high speed, would take the hair off the skin by means of the opening and closing of the slits. The claim was to a rod in the form of an ‘helical spring’ but . .
Cited – Gameaccount Ltd EPB 29-Jun-2007
‘[A]n invention which as a whole falls outside the exclusion zone of [art 52(2)] (i.e. is technical in character) cannot rely on excluded subject matter alone, even if it is novel and non-obvious (in the colloquial sense . .), for it to be . .
Cited – Astron Clinica Ltd and others v The Comptroller General of Patents, Designs and Trade Marks PatC 25-Jan-2008
There is no reason in principle to exclude claims to computer programs from patentability under Art.52 where the claims to a method performed by running a suitably programmed computer or to a computer program to carry out the method are allowable. . .
Cited – CFPH LLC, Patent Applications By PatC 21-Jul-2005
In the context of deciding as to the patentability the use of the description ‘technical’ was ‘a useful servant but a dangerous master’. Peter Prescott QC discussed the importance of being clear as to the meaning of an ‘invention’ saying: ‘does it . .
Cited – Young v The Bristol Aeroplane Co Ltd CA 28-Jul-1944
Court of Appeal must follow Own Decisions
The claimant was injured and received compensation. He then sought to recover again, alleging breach of statutory duty by his employers.
Held: The Court of Appeal was in general bound to follow its own previous decisions. The court considered . .
Cited – Vicom/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 . .
Cited – Merrell Dow Pharmaceuticals Inc and Another v H N Norton and Co Ltd; Same v Penn Etc HL 26-Oct-1995
A patent for a substance which had been produced naturally before the application of the process was invalid. The patent was invalidated after the discovery that the effect was produced naturally from an acid metabolite. Patent infringement does not . .
Cited – Actavis UK Ltd v Merck and Co Inc CA 21-May-2008
Appeal against finding that patent invalid.
Held: The Court of Appeal is free to depart (but not bound to depart) from one of its previous decisions on a point in the field of patent law if satisfied that the Board have formed a settled view . .
Cited – Conor Medsystems Inc v Angiotech Pharmaceuticals Inc and others HL 9-Jul-2008
The respondents had applied for and obtained an order to revoke the appellant’s patent of a stent for obvousness. Though the parties had settled, the public law element required the intervention of the Comptroller General. The House was asked about . .
At IPO – Symbian Ltd (Patent) IPO 30-Jul-2007
IPO The application relates to a method of operating a computing device to access data held in a dynamic link library (DLL) which has two parts, each part containing a number of functions. In operation, an . .
Appeal from – Symbian Ltd (Patent) IPO 30-Jul-2007
IPO The application relates to a method of operating a computing device to access data held in a dynamic link library (DLL) which has two parts, each part containing a number of functions. In operation, an . .
Cited by:
Cited – Lantana Ltd v The Comptroller General of Patents, Design and Trade Marks CA 13-Nov-2014
The inventor company appealed against rejection of its application for a patent for a computer program.
Held: The appeal failed: ‘on the facts found by the Hearing Officer, the invention is no more than the computerisation of a process which . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Litigation Practice, European
Leading Case
Updated: 01 November 2021; Ref: scu.276773