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Case law in the UK

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The following are important cases which affect software patents in the UK.

Contents

Equivalence of UK law and the EPC

S.130(7) of the UK Patent Act 1977, as amended, states that key portions of the UK law, including the exclusion of software patents, "are so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty have in the territories to which those Conventions apply."

The equivalence of UK law and the European Patent Convention (EPC) has been confirmed in later decisions such as Symbian v. Comptroller General (2008, UK), where the EPC was applied instead of UK law.

Binding precedence

The manner and extent to which the UK courts are bound by previous decisions is explained in points 33 and 34 of the ruling in Symbian v. Comptroller General (2008, UK).

33. [...] In principle, the Court of Appeal is bound by one of its previous decisions unless that previous decision is inconsistent with a subsequent decision of the House of Lords (in which case, the previous decision cannot be followed), is inconsistent with an earlier Court of Appeal decision (in which case the court may choose which previous decision to follow), or can be shown to have been arrived at per incuriam (i.e. without reference to a relevant statutory provision or other authority) – see Young v Bristol Aeroplane Co Ltd [1944] KB 718.
34. However, in Actavis UK Ltd v Merck & Co Inc [2008] EWCA Civ 444, Jacob LJ, giving the judgment of the court, held that this court was also 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 on that point, which differs from that arrived at in that previous decision. At [48], Jacob LJ made it clear that the right to depart from a previous decision only arose if the "jurisprudence of the EPO" on the point at issue was "settled", and that, even where that was the case, this court was "not bound to do so": for instance in "the unlikely event" that it thought the jurisprudence was plainly unsatisfactory.

Vicom

[1] As noted later in [Astron Clinica], in Vicom (citation req'd), "the court therefore recognised that a computer system programmed in such a way that it produced a new technical effect would normally be patentable".

Merrill Lynch

From paragraph 39 of Symbian v. Comptroller General (2008, UK):

In Merrill Lynch's Appn. [1989] RPC 561, Fox LJ treated Vicom as representing the law in this jurisdiction, and said at page 569 that, while it was "impermissible to patent an item excluded by section 1(2) under the guise of an article which contains that item", it would be possible to obtain a patent for a program which contributes "some technical advance on the prior art in the form of a new result (e.g., a substantial increase in processing speed as in Vicom).

Hitachi

[2]

Gale's Application

This concerned an improved method of calculating square roots, performed by a program embodied in a ROM chip. The application was denied for being both a mathematical method and a computer program as such.

From paragraph 40 of Symbian v. Comptroller General (2008, UK):

In Gale, Nicholls LJ, after referring to Vicom, also adopted this terminology, saying at page 327, that, although instructions on a computer program "are not patentable as such", they "may represent, for instance, a technical process" because they may record "the means for carrying out a technical process with the aid of a computer". The program in that case contained an improved way of calculating square roots, which was, of itself, a "mathematical method" within art 52(2). However, as Nicholls LJ said at 327, the attraction in the applicant's case was that "a computer … with a square root function, will be a better computer when programmed with Mr Gale's instructions". Nonetheless, the patent was refused as "the instructions do not embody a technical process which exists outside the computer". He went on "Nor … do the instructions solve a 'technical' problem lying with the computer itself" as in IBM/ Data processor network. Although Nicholls LJ had "difficulty in identifying clearly the boundary line between what is and what is not a technical problem for this purpose", he concluded that all Mr Gale had done was "to prescribe for the cpu in a conventional computer a different set of calculations from those normally prescribed when the user wants a square root".


Fujitsu

Fujitsu set precedent that UK courts will refer to the text of Articles 52-54 of the European Patent Convention (EPC) when considering cases that raise issues about patentability. Additionally, the UK courts should look to the EPO decisions when deciding cases, a precedent which caused as many problems as it solved due to the differences of interpretation and precedent between the UK Patents Courts and the Boards of Appeal at the European Patent Office (the

According to paragraph 37 of the the UKIPO's comments regarding the a Nokia patent application, "acts done on a computer" are excluded from patentability because they fall under the excluded category of "mental acts".

From paragraph 41 of Symbian v. Comptroller General (2008, UK):

In Fujitsu's Appn [1997] RPC 608, 615 to 616, Aldous LJ also "had difficulty" in identifying the boundary line. In holding the contribution in that case to be excluded, he distinguished Vicom on the ground that there the Board held that there was "a technical contribution, namely the generation of the enhanced picture"; in other words, it was not the enhanced image in Vicom which brought the case outside art 52(2): it was "the way the enhanced image was produced". In effect, Aldous LJ went on to hold that the program in Fujitsu did not escape the ambit of art 52(2)(c), because it made no technical contribution. The point was made crisply by Roch LJ in his brief judgment at 621, where he said that the applicant had done "no more than to produce, brilliant though it may be, a new computer program", and, "as it [was] no more than a computer program", it was not patentable.

Halliburton

A good judgement in 2005, replaced by a terrible judgement in 2011.

Macrossan v. Comptroller General of Patents

[3]

Aerotel/Macrossan

Astron Clinica

Astron Clinica et al. set the precedent that a patent claim which involves a computer program on a machine-readable storage is not excludable from patentability by virtue of solely being a computer program. Kitchin J stated that the text of each of the six applications considered together were to a computer-related invention and which covered both the method of doing the claimed act by use of a programmed computer and to a computer device which carries out the claimed invention. The text also includes a summary of the previous cases as understood by the UK Judiciary and explains why the decisions were reached.

Symbian

Related pages on en.swpat.org

Articles about specific cases

External links


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