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Patents Case Law Notes

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Asahi Kasei Kogyo KK's Application
[1990] RPC 485 (HL)

Aerotel Telco Holdings

VERSUS

Vicom/ Computer related invention
[1987] EPOR 74

KEY RULE: A novelty destroying disclosure must be enabling FACTS OF THE CASE: This patent describes the TNF polypeptide and claims priority from a US patent filed in 1984 A previous patent that claims priority from a Japanese patent pre-dates it but only mentions existence of TNF with no information on how to produce IPO rejected patent on grounds of novelty (PA 1977 Section 2(2)), appeal at PCC also reject as did hearing at EWCA. House of Lords overturned the decision and allowed grant of patent NOTES: New definition "enabling disclosure". Quite late in case law history Double patenting a possibility Did earlier application support new one. Gave formula but not how to get there. STATUTES AND AREAS OF LAW: PA1977 2, Novelty KEY RULE: Business methods are not patentable subject matter FACTS OF THE CASE: Invention for a pre-payment phone calling system. Aerotel sued Telco Holdings Limited for patent infringement in February 2005 and Telco counterclaimed for revocation of the patent. This is the 'revocation case. Found that was a new system. Not only was a conventional computer involved but telephone exchanges, telephones, wires etc.. It was also clearly technical in nature. The patent was found invalid in high court who ordered revocation of the patent. The patent was later restored under appeal, but then re-revoked at the subsequent hearing by HHJ Fysh QC NOTES: Criticised as irreconcilable with the EPC in EU. UK court did not follow technical board of appeal in PBS Partnership case Four step approach outlined: to properly construe the claim; to identify the actual contribution; to ask if it fell solely within the excluded subject matter, and to check whether the actual or alleged contribution was technical in nature. Judge said that S1(2) of PA listed a disparate group of things STATUTES AND AREAS OF LAW: PA1977 1 (2), EPC 52(2) , Patentable subject matter KEY RULE: If there is a technical effect exclusions to patentability in PA1977 1 (2) do not apply FACTS OF THE CASE: Computer method for digitally processing images Originally rejected as computer program or mathematical formula 'as such' Rejection set aside -
? Invention should not be excluded just because technical effect implemented on a computer
? Any process carried out on an that that changes it by some technical effect is allowable Decisive is what technical contribution is made - in this case 'an enhanced picture' NOTES: EPC approach - at technical board of appeal Nowhere in the EPC or PA1977 is technical effect mentioned but this was a historical requirement

Merrill Lynch Inc's Application
[1989] RPC 561

PBS Partnership/Pension Benefit Systems
[2002] OJ EPO 441

Duns Licencing Associates
[2007] EPOR 38

KEY RULE: UK Courts will not accept a technical effect as patentable matter if it is in an excluded area - e.g. a business method FACTS OF THE CASE: Invention of an improved data processing system for automated trading platform Principle examiner rejected as non-patentable subject matter (software) EWCA rejected even though Vicom case suggested patentable matter as technical effect was a 'business method' - "the rider" NOTES: UK Approach There was no issue with the fact that this was a software based invention STATUTES AND AREAS OF LAW: PA1977 1(2), EPC 52(2) , Patentable subject matter

KEY RULE: If any hardware is produced, the subject matter is patentable as not purely software FACTS OF THE CASE: Method of controlling a pension-benefits programme. Took data about employees and worked out benefits Rejected by EPO as a method of doing business Technical board of appeal. Agreed claim 1 was a business method but claim 5 described an apparatus (computer program) to do the business method and this was allowed. Used EPC 52(2)(c) as justification NOTES: Known as the "Any hardware Approach" Invention is made of technical and non-technical features - the key thing is that it produces a technical result EPC Rules - essentially all software is patentable STATUTES AND AREAS OF LAW: PA1977 1(2), EPC 52(2) , Patentable subject matter

KEY RULE: Methods of business research were excluded from patentability under the European Patent Convention 2000 Art.52(2)(c) and Art.52(3). FACTS OF THE CASE: The system involved the collection of data from sales outlets and the use of algorithms to calculate estimated sales from other related sales outlets. The Examining Division held that the system was a method of doing business and was therefore excluded from patentability

NOTES: Technical board of appeal criticised Aerotel as not conforming with EPC STATUTES AND AREAS OF LAW: PA1977 1(2), EPC 52(2) , Patentable subject matter

State Street Bank USA Case

Gale's Application
[1991] RPC 305

Fujitsu's Application
[1997] RPC 608

KEY RULE: "Any thing under the sun and made by man" is patentable in the USA!
FACTS OF THE CASE: Patent on monitoring and recording the financial information flow and making all calculations necessary for maintaining a partner fund financial services configuration. Patent was rejected as both a business method and a mathematical method US Court of Appeals overturned decision Essentially US apply a "useful, concrete and tangible result" test Intepreted the extensive use of 'any' in legislation to suggest that legislation didn't need to be changed

NOTES: The case that allowed business methods, software patents to be filed in the USA STATUTES AND AREAS OF LAW: Patentable subject matter USA

KEY RULE: Even if a software program is on a ROM or other device it is still software as such unless it has a technical effect (e.g. speeds up processing) FACTS OF THE CASE: Application for a ROM programmed to carry out a method of calculating the square root of a number First instance judge, found no technical contribution and even though ROM were used no hardware was produced. EWCA overturned saying as a specific piece of hardware (ROM) is produced this isn't just a programme as such. Unfortunately for Gale, the technical effect was a mathematical method and so inadmissible by UK courts - reassertion of 'the rider' from Merrill Lynch even though this was not software as such. NOTES: Fact it was software was not the problem. Issue was that it was a mathematical formula STATUTES AND AREAS OF LAW: PA1977 1(2), EPC 51(2), Patentable subject matter KEY RULE: Must be a technical advance to be patentable subject matter. Simply doing what was done manually faster using a computer program is not patentable - it is software as such FACTS OF THE CASE: Method for modelling synthetic crystal structures. It involved a computer program that allowed researcher to select atom, lattice vector and crystal face. Output display of crystal. Replaced old method of assembling plastic models Decision was that this was a software program as such and so rejected Judge said obiter that he took a broad definition of 'mental act' and that therefore this was also a mental act as such. Halliburton decision clarified this - narrow definition of mental act is correct. NOTES: UK Approach to patentable subject matter Approach requires a lot of input from the operator Hard to tell why judge said 'no technical effect'. EPO would probably have found this technical.

Haliburton
[2011] EWHC 2508 (Pat)

Macrossan Appeal heard alongside Aerotel. [2006] EWCA Civ 1371

Howard Florey/Relaxin Green Party

Versus

The

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