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. This article lists judgments delivered by the UK courts that deal with excluded subject matter.
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. 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.
YearNameCourtPatent/applicationJudgmentAppealArticle1987Merrill Lynch's Application RPC 1Patents CourtComputer program as such RPC 561 - upheld, but for different reasonsMerrill Lynch1987Genentech's Patent RPC 553Patents Court RPC 147Genentech's Patent1989Genentech's Patent RPC 147Genentech's Patent1989Merrill Lynch's Application RPC 561Court of AppealBusiness method as suchNoneMerrill Lynch1990Gale's Application RPC 311Patents CourtNot a computer program as such RPC 305, 317 - overturnedGale's Application1990Gale's Application RPC 305, 317Court of AppealMathematical method and computer program as suchNoneGale's Application1991Wang's application RPC 4631993Raytheon's application RPC 4271996Fujitsu's Application RPC 511High Court EWCA 1174 (Civ) - upheld but for different reasonsFujitsu's Application1997Court of AppealComputer program as suchNoneFujitsu's Application2001Patents CourtNot a discovery as suchNot appealed directly, but several related cases including an HoL decisionKirin-Amgen v Hoechst Marion Roussel2005Patents CourtBusiness method as suchNoneCFPH LLC's Applications
1993 Lux Traffic Controls v Pike Signals RPC 107 (per Aldous J)
1996
2005
2006
- upheld on appeal - overruled on appeal
2007
2008
2009
2011
2013
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; hence the claimed invention was excluded. YearJudgmentDiscoveriesScientific theoriesMathematical methodsAesthetic creationsMental actsPlaying gamesDoing businessPrograms for computersPresentations of informationAppeal1987Merrill Lynch's Application RPC 1 RPC 561 - upheld, but for different reasons1987Genentech's Patent RPC 553 RPC 1471989Genentech's Patent RPC 147None1989Merrill Lynch's Application RPC 561discussed but not judged ondiscussed but not judged onbusiness method as suchdiscussed but not judged onNone1990Gale's Application RPC 311not a mathematical method as suchnot a computer program as such RPC 305, 317 - overturned1990Gale's Application RPC 305, 317discussed but not judged onmathematical method as suchcomputer program as suchNone1991Wang's application RPC 4631993Raytheon's application RPC 4271997discussed but not judged ondiscussed but not judged oncomputer program as suchNone2005discussed but not judged ondiscussed but not judged ondiscussed but not judged ondiscussed but not judged onbusiness method as suchdiscussed but not judged ondiscussed but not judged onNone2005mental act as such, but correctable defectAppeal filed, but not on this point2005None2005None2009Discovery as suchNone
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 Software Patents After Fujitsu. New Directions or (another) Missed Opportunity?, Ian Lloyd, University of Strathclyde. Alternative link IP/IT Update Patents Case Note: Fujitsu Ltd's Application
CFPH's Applications A Step Forward? Excluding "Technical" From the Test for Patentable Subject Matter Consensus Forms? High Court Approach to the Patentability of Computer Programs and Business Methods
Aerotel v Telco and Macrossan's Application
Thought policing, Alan Johnson, David Brown and James Boon, Bristows
Multi-judgment discussions Inherent Patentability as related to computer software Is the extension of the patent system to include software related inventions desirable? 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