List of UK judgments relating to excluded subject matter

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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.

Contents

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

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

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

YearNameCourtPatent/applicationJudgmentAppealArticle
1987Merrill Lynch's Application [1988] RPC 1Patents Court GBapplication 2180380  Computer program as such[1989] RPC 561 - upheld, but for different reasons Merrill Lynch
1987Genentech's Patent [1987] RPC 553Patents Court[1989] RPC 147 Genentech's Patent
1989Genentech's Patent [1989] RPC 147 Genentech's Patent
1989Merrill Lynch's Application [1989] RPC 561Court of Appeal GBapplication 2180380  Business method as suchNone Merrill Lynch
1990Gale's Application [1991] RPC 311Patents Court GBapplication 2174221  Not a computer program as such[1991] RPC 305, 317 - overturned Gale's Application
1990Gale's Application [1991] RPC 305, 317Court of Appeal GBapplication 2174221  Mathematical method and computer program as suchNone Gale's Application
1991Wang's application [1991] RPC 463
1993Raytheon's application [1993] RPC 427
1996Fujitsu’s Application [1996] RPC 511High Court[1997] EWCA 1174 (Civ) - upheld but for different reasons Fujitsu's Application
1997Fujitsu's Application [1997] EWCA Civ 1174 (6 March 1997)Court of AppealComputer program as suchNone Fujitsu's Application
2001Amgen Parties v Roche Parties [2001] EWHC 433(Patents) (11 April 2001)Patents Court EP 0148605B  Not a discovery as suchNot appealed directly, but several related cases including an HoL decision Kirin-Amgen v Hoechst Marion Roussel
2005CFPH LLC's Applications [2005] EWHC 1589(Patents) (21 July 2005)Patents CourtBusiness method as suchNone CFPH LLC's Applications

1993

1996

2005

2006

2007

2008

2009

2011

2013

By subject matter

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

YearJudgmentDiscoveriesScientific theoriesMathematical methodsAesthetic creationsMental actsPlaying gamesDoing businessPrograms for computersPresentations of informationAppeal
1987Merrill Lynch's Application [1988] RPC 1[1989] RPC 561 - upheld, but for different reasons
1987Genentech's Patent [1987] RPC 553[1989] RPC 147
1989Genentech's Patent [1989] RPC 147None
1989Merrill Lynch's Application [1989] RPC 561discussed but not judged ondiscussed but not judged onbusiness method as suchdiscussed but not judged onNone
1990Gale's Application [1991] RPC 311not a mathematical method as suchnot a computer program as such[1991] RPC 305, 317 - overturned
1990Gale's Application [1991] RPC 305, 317discussed but not judged onmathematical method as suchcomputer program as suchNone
1991Wang's application [1991] RPC 463
1993Raytheon's application [1993] RPC 427
1997Fujitsu's Application [1997] EWCA Civ 1174 (6 March 1997)discussed but not judged ondiscussed but not judged oncomputer program as suchNone
2005CFPH LLC's Applications [2005] EWHC 1589(Patents) (21 July 2005)discussed but not judged ondiscussed but not judged ondiscussed but not judged ondiscussed but not judged onbusiness method as suchdiscussed but not judged ondiscussed but not judged onNone
2005Halliburton Energy Services, Inc. v Smith International (North Sea) Ltd & Ors [2005] EWHC 1623(Patents) (21 July 2005)mental act as such, but correctable defectAppeal filed, but not on this point [2]
2005Crawford's Application [2005] EWHC 2417(Patents) (4 November 2005)None
2005Shoppalotto.com's Application [2005] EWHC 2416(Patents) (7 November 2005)None
2009Tate & Lyle Technology Limited v Roquette Frères [2009] EWHC 1312(Patents) (16 June 2009)Discovery as suchNone

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

CFPH's Applications

Aerotel v Telco and Macrossan's Application

Multi-judgment discussions

Key

See also

References

  1. 1 2 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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