Fujitsu's Application

Fujitsu's Application [cite BAILII
country=ew
litigants=Fujitsu's Application
court=EWCA
division=Civ
year=1997
num=1174
para=
date=1997-03-06] is a judgment by the Court of Appeal of England and Wales. The judgment was passed down on 6 March 1997. The case in question had been refused by the United Kingdom Intellectual Property Office (then the UK Patent Office) and by J Laddie on Appeal before the High Court. LJ Aldous heard the appeal before the Court of Appeal.

Facts

Fujitsu's claimed invention was a new tool for modelling crystal structures on a computer. A scientist wishing to investigate what would result if he made a new material consisting of a combination of two existing compounds would enter data representing those compounds and how they should be joined into the computer. The computer then automatically generated and displayed the new structure using the data supplied. Previously, the same effect could only have been achieved by assembling plastic models by hand - a time-consuming task.

Discussion

* UK courts should look to the decisions of the European Patent Office for guidance in interpreting the exclusions.
* A "technical contribution" is needed to make a potentially excluded thing patentable, proclaiming that this was a concept at the heart of patent law and referring to the European Patent Office's decision in [http://legal.european-patent-office.org/dg3/biblio/t840208ep1.htm T 208/84, VICOM] .
* There is a difficulty inherent in determining what is and is not "technical", such that each case should be decided on its own facts.
* The substance of an invention should be used to assess whether or not a thing is patentable, not the form in which it is claimed. Thus a non-patentable method cannot be patented under the guise of an apparatus.

Judgment

The claimed invention was certainly a useful tool. However, as claimed, the invention was nothing more than a conventional computer which automatically displayed a crystal structure shown pictorally in a form that would in the past have been produced as a model. The only advance expressed in the claims was the computer program which enabled the combined structure to be portrayed more quickly. The new tool therefore provided nothing that went beyond the normal advantages that are obtained by the use of a computer program. Thus, there was no technical contribution and the application was rejected as being a computer program as such.

ee also

*List of judgments of the UK Courts relating to excluded subject matter
*Software patents under United Kingdom patent law
*Software patents under the European Patent Convention

References

External links

* [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?]
* [http://scottishlaw.org.uk/journal/oct2000/clsoftpat.pdf Is the extension of the patent system to include software related inventions desirable?]
* [http://www.boult.com/information/articlePrint.cfm?articleID=48 A STEP FORWARD: EXCLUDING 'TECHNICAL' FROM THE TEST FOR PATENTABLE SUBJECT MATTER]
* [http://www.fhs.co.uk/software.cfm Inherent Patentability as related to computer software] written after High Court judgment but before Court of Appeal had issued their judgment