List of UK judgments relating to excluded subject matter

This article lists judgments of the UK courts relating to excluded subject matter. 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.

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.

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 subject matter

The following table lists judgments and the different categories of excluded subject matter that are discussed within that judgment. Where a category of excluded subject matter is discussed obiter dictum, this is also indicated.

By year

1988

• Merrill Lynch's Application [1988] RPC 1 - upheld on appeal, but on different grounds

1989

• Genentech's Patent [1989] RPC 147
• Merrill Lynch's Application, (GB application 2180380 ), [1989] RPC 561 (CA)

1991

• Gale's Application, (GB application 2174221 ), [1991] RPC 305 (CA)
• Wang's application [1991] RPC 463

1993

• Raytheon's application [1993] RPC 427

1997

• Fujitsu's Application [1997] EWCA Civ 1174 (6 March 1997)

2005

• CFPH LLC's Applications [2005] EWHC 1589 (Patents) (21 July 2005)
• Halliburton Energy Services, Inc. v Smith International (North Sea) Ltd & Ors [2005] EWHC 1623 (Patents) (21 July 2005)
• Crawford's Application [2005] EWHC 2417 (Patents) (4 November 2005)
• Shoppalotto.com's Application [2005] EWHC 2416 (Patents) (7 November 2005)

2006

• Research In Motion UK Ltd. v Inpro Licensing SARL [2006] EWHC 70 (Patents) (2 February 2006)
• Neal William Macrossan's Application [2006] EWHC 705 (Ch) (3 April 2006) - upheld on appeal
• Aerotel Ltd v Telco Holdings Ltd [2006] EWHC 997 (Patents) (3 May 2006) - overruled on appeal
• Aerotel Ltd v Telco Holdings Ltd & Ors and Neal William Macrossan's Application [2006] EWCA Civ 1371 (27 October 2006)

2008

• Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks [2008] EWHC 85 (Patents) (25 January 2008)
• Autonomy Corporation Ltd v The Comptroller General of Patents, Trade Marks & Designs [2008] EWHC 146 (Patents) (6 February 2008)
• Research In Motion UK Ltd v Visto Corporation [2008] EWHC 335 (Patents) (28 February 2008)

Key

EWHC = England and Wales High Court; RPC = Reports of Patent, Design and Trade Mark Cases; EWCA / CA = Court of Appeal; Pat = Patents Court; Ch = Chancery Division

See also

• List of decisions of the EPO Boards of Appeal relating to Article 52(2) and (3) EPC
• Aerotel v Telco and Macrossan's application