List of judgments of the UK Courts relating to excluded subject matter

This article lists judgments of the UK Courts relating to excluded subject matter. 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.

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.cite BAILII
country=ew
litigants=Aerotel Ltd v Telco Holdings Ltd & Ors and Neal William Macrossan's Application
court=EWCA
division=Civ
year=2006
num=1371
para=
date=2006-10-27] 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 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.

1993

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

1997

Biogen v Medeva [1997] RPC 1, 42 (Lord Hoffmann)

2005

*cite BAILII
country=ew
litigants=Halliburton Energy Services, Inc. v Smith International (North Sea) Ltd & Ors
court=EWHC
division=Patents
year=2005
num=1623
para=
date=2005-07-21
*cite BAILII
country=ew
litigants=Crawford's Application
court=EWHC
division=Patents
year=2005
num=2417
para=
date=2005-11-04
*cite BAILII
country=ew
litigants=Shoppalotto.com's Application
court=EWHC
division=Patents
year=2005
num=2416
para=
date=2005-11-07

2006

*cite BAILII
country=ew
litigants=Research In Motion UK Ltd. v Inpro Licensing SARL
court=EWHC
division=Patents
year=2006
num=70
para=
date=2006-02-02
*cite BAILII
country=ew
litigants=Neal William Macrossan's Application
court=EWHC
division=Ch
year=2006
num=705
para=
date=2006-04-03 - upheld on appeal
*cite BAILII
country=ew
litigants=Aerotel Ltd v Telco Holdings Ltd
court=EWHC
division=Patents
year=2006
num=997
para=
date=2006-05-03 - overruled on appeal
*cite BAILII
country=ew
litigants=Aerotel Ltd v Telco Holdings Ltd & Ors and Neal William Macrossan's Application
court=EWCA
division=Civ
year=2006
num=1371
para=
date=2006-10-27

2008

*cite BAILII
country=ew
litigants=Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks
court=EWHC
division=Patents
year=2008
num=85
para=
date=2008-01-25
*cite BAILII
country=ew
litigants=Autonomy Corporation Ltd v The Comptroller General of Patents, Trade Marks & Designs
court=EWHC
division=Patents
year=2008
num=146
para=
date=2008-02-06
*cite BAILII
country=ew
litigants=Research In Motion UK Ltd v Visto Corporation
court=EWHC
division=Patents
year=2008
num=335
para=
date=2008-02-28
*cite BAILII
country=ew
litigants=Symbian Ltd v Comptroller General Of Patents
court=EWHC
division=Patents
year=2008
num=518
para=
date=2008-03-18
*cite BAILII
country=ew
litigants=IGT / Acres Gaming Inc's Patent Application
court=EWHC
division=Patents
year=2008
num=568
para=
date=2008-03-19
*cite BAILII
country=ew
litigants=Kapur v Comptroller General of Patents, Designs & Trade Marks
court=EWHC
division=Patents
year=2008
num=649
para=
date=2008-04-10
*Cite BAILII
country=ew
litigants=Aerotel Ltd v Wavecrest Group Enterprises Limited
court=EWHC
division=Patents
year=2008
num=1180
para=
date=2008-05-23
*Cite BAILII
country=ew
litigants=Symbian Ltd v Comptroller General Of Patents
court=EWCA
division=Civ
year=2008
num=1066
para=
date=2008-10-08

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.

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

* [http://www2.warwick.ac.uk/fac/soc/law/elj/jilt/1997_2/lloyd/lloyd.doc Software Patents After Fujitsu. New Directions or (another) Missed Opportunity?] , Ian Lloyd, University of Strathclyde. [http://www2.warwick.ac.uk/fac/soc/law/elj/jilt/1997_2/lloyd Alternative link]
* [http://www.ipit-update.com/pat33.htm IP/IT Update Patents Case Note: Fujitsu Ltd's Application]

CFPH's Applications

* [http://www.boult.com/information/articlePrint.cfm?articleID=48 A Step Forward? Excluding "Technical" From the Test for Patentable Subject Matter]
* [http://www.withersrogers.co.uk/content/view/80/73/ Consensus Forms? High Court Approach to the Patentability of Computer Programs and Business Methods]

Aerotel v Telco and Macrossan's Application

* [http://www.vennershipley.co.uk/html/Library/aerotelmacrossan.html COURT OF APPEAL ISSUES EAGERLY-AWAITED AEROTEL/MACROSSAN DECISION CONCERNING THE PATENTABILITY OF COMPUTER PROGRAM AND BUSINESS METHOD INVENTIONS]
* [http://www.thelawyer.com/cgi-bin/item.cgi?id=123672&d=415&h=417&f=416 Thought policing] , Alan Johnson, David Brown and James Boon, Bristows

Multi-judgment discussions

* [http://www.fhs.co.uk/software.cfm Inherent Patentability as related to computer software]
* [http://scottishlaw.org.uk/journal/oct2000/clsoftpat.pdf Is the extension of the patent system to include software related inventions desirable?]
* [http://www.cipil.law.cam.ac.uk/Media/word/IP%20SIG%20Notes%20(3)(1).doc 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 Court
*Ch = Chancery Division
*EWCA / CA = Court of Appeal
*Civ = Civil Division

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 law

References