IPKat flagged a question this week from Neal Macrossan, the inventor behind the high-profile Aerotel v Telco Holdings case on software patenting (in essence, should Macrossan appeal to the House of Lords?). Note also the interesting exchange between Macrossan and another commenter on IPKat's earlier post here. I am afraid that I don't propose to answer Macrossan's question today, but thought this was a good opportunity to observe that the High Court again recently considered the Aerotel case in IGT v Comptroller [2007] EWHC 1341 (Pat).
The Court of Appeal in Aerotel laid down a 4-step approach to be followed in determining whether or not such a claimed invention is patentable:
- Properly construe the claim – in other words, identify the invention claimed
- Identify the actual contribution – in other words, determine what the claimed invention has really added to human knowledge
- Ask whether it falls solely within the excluded subject matter – in other words, is this contribution solely in relation to any of the above excluded subject matters
- Check whether the actual or alleged contribution is actually technical in nature- this follows from previous case law that in order for a software to be patentable, the claimed invention must make a technical contribution over and above the excluded subject matter mentioned above (the Court of Appeal expressed the view that the fourth step may not be necessary because the third step should have covered that, but felt obliged to include it in the light of previous case law).
The IGT case was an appeal against the decision of the UK Intellectual Property Office refusing four patent applications relating to gaming systems. The judge noted that in the virtual world it is possible to emulate existing games from the “physical world”, in which case it might be possible to argue that the rules of the game are the same as the rules of the real game and that the computer program is excluded as a scheme, rule or method for playing a game. The judge stated that if the contribution included something else (e.g. new physical combination of hardware), it may be entitled to protection. However, in this case there was no new physical combination of hardware; the novelty was in the software (a computer program, which was not as such patentable); if that novel software produced a contribution which lies only in the excluded field of rule, method or scheme for playing a game, it could not be the subject of a valid patent.
The court held that in applying the Aerotel four stage test, the key question is not whether a contribution is technical, but whether it lies solely in an excluded area. The important question was therefore not whether the subject matter of the claim was patentable and outside the excluded subject matter, but whether the contribution was within the excluded subject matter. In the IGT case, the court held that the contribution made lay in the excluded field of a scheme, rule or method for playing a game and upheld the refusal of the applications.
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