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List of UK judgments relating to excluded subject matter

Summary

Under United Kingdom patent law, a patent may only be granted for "an invention". While the meaning of invention is not defined, certain things are not regarded as inventions. Such things are excluded from patentability. This article lists judgments delivered by the UK courts that deal with excluded subject matter.

The provisions about what are not to be regarded as inventions are not easy. There has been and continues to be much debate about them and about decisions on them given by national courts and the Boards of Appeal of the European Patent Office.[1] This article also list some of the discussions that have been had about the different judgments.

Law edit

Article 52 of the European Patent Convention, which represents the source of UK law in this area and which should have the same meaning[1] states that:

(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
(d) presentations of information.
(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

By year edit

The following table lists judgments by year, although it is sortable by any of the other fields by activating the sort icon.

Year Name Court Patent/application Judgment Appeal Article
1987 Merrill Lynch's Application [1988] RPC 1 Patents Court GB application 2180380  Computer program as such [1989] RPC 561 - upheld, but for different reasons Merrill Lynch
1987 Genentech's Patent [1987] RPC 553 Patents Court [1989] RPC 147 Genentech's Patent
1989 Genentech's Patent [1989] RPC 147 Genentech's Patent
1989 Merrill Lynch's Application [1989] RPC 561 Court of Appeal GB application 2180380  Business method as such None Merrill Lynch
1990 Gale's Application [1991] RPC 311 Patents Court GB application 2174221  Not a computer program as such [1991] RPC 305, 317 - overturned Gale's Application
1990 Gale's Application [1991] RPC 305, 317 Court of Appeal GB application 2174221  Mathematical method and computer program as such None Gale's Application
1991 Wang's application [1991] RPC 463
1993 Raytheon's application [1993] RPC 427
1996 Fujitsu’s Application [1996] RPC 511 High Court [1997] EWCA 1174 (Civ) - upheld but for different reasons Fujitsu's Application
1997 Fujitsu's Application [1997] EWCA Civ 1174 (6 March 1997) Court of Appeal Computer program as such None Fujitsu's Application
2001 Amgen Parties v Roche Parties [2001] EWHC 433 (Patents) (11 April 2001) Patents Court EP 0148605B  Not a discovery as such Not appealed directly, but several related cases including an HoL decision Kirin-Amgen v Hoechst Marion Roussel
2005 CFPH LLC's Applications [2005] EWHC 1589 (Patents) (21 July 2005) Patents Court Business method as such None CFPH LLC's Applications

1993 edit

  • Lux Traffic Controls v Pike Signals [1993] RPC 107 (per Aldous J)

1996 edit

  • Biogen Inc v. Medeva Plc [1996] UKHL 18 (31 October 1996)

2005 edit

  • Halliburton Energy Services, Inc. v Smith International (North Sea) Ltd & Ors [2005] EWHC 1623 (Patents) (21 July 2005)
  • Crawford's Application [2005] EWHC 2417 (Patents) (4 November 2005)
  • Shoppalotto.com's Application [2005] EWHC 2416 (Patents) (7 November 2005)

2006 edit

  • Research In Motion UK Ltd. v Inpro Licensing SARL [2006] EWHC 70 (Patents) (2 February 2006)
  • Neal William Macrossan's Application [2006] EWHC 705 (Ch) (3 April 2006) - upheld on appeal
  • Aerotel Ltd v Telco Holdings Ltd [2006] EWHC 997 (Patents) (3 May 2006) - overruled on appeal
  • Aerotel Ltd v Telco Holdings Ltd & Ors and Neal William Macrossan's Application [2006] EWCA Civ 1371 (27 October 2006)

2007 edit

  • Oneida Indian Nation's application [2007] EWHC 954 (Patents) (2 May 2007)

2008 edit

  • Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks [2008] EWHC 85 (Patents) (25 January 2008)
  • Autonomy Corporation Ltd v The Comptroller General of Patents, Trade Marks & Designs [2008] EWHC 146 (Patents) (6 February 2008)
  • Research In Motion UK Ltd v Visto Corporation [2008] EWHC 335 (Patents) (28 February 2008)
  • Symbian Ltd v Comptroller General Of Patents [2008] EWHC 518 (Patents) (18 March 2008)
  • IGT / Acres Gaming Inc's Patent Application [2008] EWHC 568 (Patents) (19 March 2008)
  • Kapur v Comptroller General of Patents, Designs & Trade Marks [2008] EWHC 649 (Patents) (10 April 2008)
  • Aerotel Ltd v Wavecrest Group Enterprises Limited [2008] EWHC 1180 (Patents) (23 May 2008)
  • Symbian Ltd v Comptroller General Of Patents [2008] EWCA Civ 1066 (8 October 2008)

2009 edit

  • AT&T Knowledge Ventures LP and CVON Innovations Limited v Comptroller General Of Patents [2009] EWHC 343 (Patents) (3 March 2009)
  • Tate & Lyle Technology Limited v Roquette Frères [2009] EWHC 1312 (Patents) (16 June 2009)
  • Cranway Ltd v Playtech Ltd and others [2009] EWHC 1588 (Patents) (7 July 2009)

2011 edit

  • Re Halliburton Energy Services Inc [2011] EWHC 2508 (Patents) (5 October 2011)

2013 edit

  • HTC Europe Co Ltd v Apple Inc (Rev 1) [2013] EWCA Civ 451 (3 May 2013)
  • Lantana Ltd v The Comptroller-General of Patents, Designs and Trade Marks [2013] EWHC 2673 (Patents) (4 September 2013)

By subject matter edit

The following table lists judgments and the different categories of excluded subject matter that are discussed within that judgment.

  • Categories in blue were not discussed in the judgment.
  • Categories in yellow were discussed but not judged on.
  • Categories in green were judged on but the (alleged) invention was found not to fall into that category.
  • Categories in red were judged on and the (alleged) invention was found to fall into that category; hence the claimed invention was excluded.
Year Judgment Discoveries Scientific theories Mathematical methods Aesthetic creations Mental acts Playing games Doing business Programs for computers Presentations of information Appeal
1987 Merrill Lynch's Application [1988] RPC 1 [1989] RPC 561 - upheld, but for different reasons
1987 Genentech's Patent [1987] RPC 553 [1989] RPC 147
1989 Genentech's Patent [1989] RPC 147 None
1989 Merrill Lynch's Application [1989] RPC 561 discussed but not judged on discussed but not judged on business method as such discussed but not judged on None
1990 Gale's Application [1991] RPC 311 not a mathematical method as such not a computer program as such [1991] RPC 305, 317 - overturned
1990 Gale's Application [1991] RPC 305, 317 discussed but not judged on mathematical method as such computer program as such None
1991 Wang's application [1991] RPC 463
1993 Raytheon's application [1993] RPC 427
1997 Fujitsu's Application [1997] EWCA Civ 1174 (6 March 1997) discussed but not judged on discussed but not judged on computer program as such None
2005 CFPH LLC's Applications [2005] EWHC 1589 (Patents) (21 July 2005) discussed but not judged on discussed but not judged on discussed but not judged on discussed but not judged on business method as such discussed but not judged on discussed but not judged on None
2005 Halliburton Energy Services, Inc. v Smith International (North Sea) Ltd & Ors [2005] EWHC 1623 (Patents) (21 July 2005) mental act as such, but correctable defect Appeal filed, but not on this point[2]
2005 Crawford's Application [2005] EWHC 2417 (Patents) (4 November 2005) None
2005 Shoppalotto.com's Application [2005] EWHC 2416 (Patents) (7 November 2005) None
2009 Tate & Lyle Technology Limited v Roquette Frères [2009] EWHC 1312 (Patents) (16 June 2009) Discovery as such None

Discussions edit

Lawyers, patent attorneys and economists have often debated the effects of the judgments listed above. A list of some papers and articles is provided below. Many of these papers discuss more than one judgment, but they have been ordered according to their primary focus, if there is one.

Fujitsu's Application edit

  • Software Patents After Fujitsu. New Directions or (another) Missed Opportunity?, Ian Lloyd, University of Strathclyde. Alternative link
  • IP/IT Update Patents Case Note: Fujitsu Ltd's Application

CFPH's Applications edit

  • A Step Forward? Excluding "Technical" From the Test for Patentable Subject Matter
  • Consensus Forms? High Court Approach to the Patentability of Computer Programs and Business Methods[permanent dead link]

Aerotel v Telco and Macrossan's Application edit

  • COURT OF APPEAL ISSUES EAGERLY-AWAITED AEROTEL/MACROSSAN DECISION CONCERNING THE PATENTABILITY OF COMPUTER PROGRAM AND BUSINESS METHOD INVENTIONS
  • Thought policing, Alan Johnson, David Brown and James Boon, Bristows

Multi-judgment discussions edit

  • Inherent Patentability as related to computer software
  • Is the extension of the patent system to include software related inventions desirable?
  • Intellectual Property - Special Interest Group: The edge of reason - boundaries to what can be patented

Key edit

See also edit

References edit

  1. ^ a b Aerotel Ltd v Telco Holdings Ltd & Ors and Neal William Macrossan's Application [2006] EWCA Civ 1371 (27 October 2006)
  2. ^ Halliburton Energy Services, Inc. v Smith International (North Sea) Ltd & Ors [2006] EWCA Civ 1715 (15 December 2006)

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