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Aerotel ruling by UK Court of Appeal on 27 October 2006

Revision as of 06:56, 20 August 2009 by Ciaran (talk | contribs) (paste in from case law in the UK)

Aerotel v. Telco is a UK ruling made in 2006 by Lord Justice Jacob.

Summary

A conjoined appeal against refusal from Aerotel, who made an alternative telephone carrier system implemented in programmed computer systems, and Mr Neil Macrossan, this case established the four-step test for whether a core technical feature of a patent is to be excluded as not patentable under the UK Patents Act. The previous methods were summarised and criticised and a new four-step test outlined to be used where it was not clear if a particular patent claim should be excluded from patentability. The four steps are:

  • i) properly construe the claim;
  • ii) identify the actual contribution;
  • iii) ask whether it falls solely within the excluded subject matter;
  • iv) check whether the contribution is actually technical in nature.

In particular, the judgement states their interpretation that the European Patent Convention intended to exclude real, functioning compute programs from patentability (paragraph 31): "We think the framers of the EPC really meant to exclude computer programs in a practical and operable form. They meant to exclude real computer programs, not just an abstract series of instructions."

Quotes

Point 20 (page 10): "The patent system is there to provide a research and investment incentive but it has a price. That price (what economists call “transaction costs”) is paid in a host of ways: the costs of patenting, the impediment to competition, the compliance cost of ensuring non-infringement, the cost of uncertainty, litigation costs and so on. There is, so far as we know, no really hard empirical data showing that the liberalisation of what is patentable in the USA has resulted in a greater rate of innovation or investment in the excluded categories. Innovation in computer programs, for instance, proceeded at an immense speed for years before anyone thought of granting patents for them as such. There is evidence, in the shape of the mass of US litigation about the excluded categories, that they have produced much uncertainty. If the encouragement of patenting and of patent litigation as industries in themselves were a purpose of the patent system, then the case for construing the categories narrowly (and indeed for removing them) is made out. But not otherwise."

Result

The Macrossan patent was held invalid (section 73).

External link