List of judgments of the UK Courts relating to excluded subject matter
Encyclopedia
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. This article also list some of the discussions that have been had about the different judgments.
, which represents the source of UK law in this area and which should have the same meaning states that: 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. The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
- overruled on appeal
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
may only be granted for "an invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
". While the meaning of invention is not defined, certain things are not regarded as inventions. Such things are excluded from patentability
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
. 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. This article also list some of the discussions that have been had about the different judgments.
Law
Article 52 of the European Patent ConventionEuropean Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
, which represents the source of UK law in this area and which should have the same meaning states that: 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. 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. 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
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 | Computer program as such | [1989] RPC 561 - upheld, but for different reasons | Merrill Lynch's Application | |
| 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 | Business method as such | None | Merrill Lynch's Application | |
| 1990 | Gale's Application [1991] RPC 311 | Patents Court | 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 | 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 Fujitsu's Application Fujitsu's Application is a 6 March 1997 judgment by the Court of Appeal of England and Wales. The judges' decision was to confirm the refusal of a patent by the United Kingdom Patent Office and by J Laddie on Appeal before the High Court... |
||
| 1997 | Court of Appeal | Computer program as such | None | Fujitsu's Application Fujitsu's Application Fujitsu's Application is a 6 March 1997 judgment by the Court of Appeal of England and Wales. The judges' decision was to confirm the refusal of a patent by the United Kingdom Patent Office and by J Laddie on Appeal before the High Court... |
||
| 2001 | Patents Court | Not a discovery as such | Not appealed directly, but several related cases including an HoL decision | Kirin-Amgen v Hoechst Marion Roussel Kirin-Amgen v Hoechst Marion Roussel Kirin-Amgen, Inc. v Hoechst Marion Roussel Ltd. is a decision by the House of Lords of England and Wales. The judgment was issued on 21 October 2004 and relates to the scope to be accorded to patent claims, including the doctrine of equivalents. The case and subsequent judgment affirmed principles... |
||
| 2005 | Patents Court | Business method as such | None | CFPH LLC's Applications |
2006
- upheld on appealAerotel v Telco and Macrossan's Application
Aerotel v Telco and Macrossan's Application is a judgment by the Court of Appeal of England and Wales. The judgment was passed down on 27 October 2006 and relates to two different appeals from decisions of the High Court. The first case involved granted to Aerotel Ltd and their infringement action...
- overruled on appeal
Aerotel v Telco and Macrossan's Application
Aerotel v Telco and Macrossan's Application is a judgment by the Court of Appeal of England and Wales. The judgment was passed down on 27 October 2006 and relates to two different appeals from decisions of the High Court. The first case involved granted to Aerotel Ltd and their infringement action...
By subject matter
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.| 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 | discussed but not judged on | discussed but not judged on | computer program as such | None | |||||||
| 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 | mental act as such, but correctable defect | Appeal filed, but not on this point | |||||||||
| 2005 | None | ||||||||||
| 2005 | None | ||||||||||
| 2009 | Discovery as such | None |
Discussions
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
- 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
- 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
Aerotel v Telco and Macrossan's Application
- 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
- 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
- RPC = Reports of Patent, Design and Trade Mark Cases
- Patents / Pat = Patents Court
- EWHC = England and Wales High CourtHigh Court of JusticeThe High Court of Justice is, together with the Court of Appeal and the Crown Court, one of the Senior Courts of England and Wales...
- Ch = Chancery Division
- EWCA / CA = Court of AppealCourt of Appeal of England and WalesThe Court of Appeal of England and Wales is the second most senior court in the English legal system, with only the Supreme Court of the United Kingdom above it...
- Civ = Civil DivisionCourt of Appeal of England and WalesThe Court of Appeal of England and Wales is the second most senior court in the English legal system, with only the Supreme Court of the United Kingdom above it...
See also
- List of decisions of the EPO Boards of Appeal relating to Article 52(2) and (3) EPC
- Software patents under United Kingdom patent lawSoftware patents under United Kingdom patent lawThere are four over-riding requirements for a patent to be granted under United Kingdom patent law. Firstly, there must have been an invention. That invention must be novel, inventive and susceptible of industrial application...