This website uses cookies to ensure you get the best experience on our website. Learn more

Law Notes Intellectual Property Law Notes

Patents Case Law Notes

Updated Patents Case Law Notes

Intellectual Property Law Notes

Intellectual Property Law

Approximately 446 pages

My notes cover all the main cases in intellectual property law. They are arranged so that each case occupies 1/3rd of a piece of A4 paper with the name of the case on one side and the details (key rule, facts of case, notes and key parts of the relevant statute) on the other side.

I found that using 'flash cards' really helped with learning the material and allowed my friends and family to test me. All I had to do was to print out the notes double sided on quite thick paper / thin card and...

Available here

The following is a more accessible plain text extract of the PDF sample above, taken from our Intellectual Property Law Notes. Due to the challenges of extracting text from PDFs, it will have odd formatting:

Asahi Kasei Kogyo KK’s Application

[1990] RPC 485 (HL)

Aerotel VERSUS Telco Holdings

Vicom/ Computer related invention

[1987] EPOR 74

Patents

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

Patents

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

Patents

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

STATUTES AND AREAS OF LAW:

PA1977 1 (2), EPC 52(2) , Patentable subject matter

Merrill Lynch Inc’s Application

[1989] RPC 561

PBS Partnership/Pension Benefit Systems

[2002] OJ EPO 441

Duns Licencing Associates

[2007] EPOR 38

Patents

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

Patents

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

Patents

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

Patents

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

Patents

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...

Buy the full version of these notes or essay plans and more in our Intellectual Property Law Notes.

More Intellectual Property Law Samples