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Thursday, 09 September 2010

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Copyright Notice

Excluded Subject Matter in the UK - Computer-Related Inventions

27/08/2009

In the UK, the High Court recently considered infringement and invalidity proceedings in relation to a computer-related patent granted by the EPO (EP Patent No. 0625760B1)¹. This decision is of interest as the Court was considering a computer-related patent granted by the EPO rather than the UK IPO and it develops the Court’s reasoning on excluded subject matter in this area. The prior art considered by the High Court had not previously been considered by the EPO.

The claimed invention relates to an online gaming system using general purpose computers. Minimal data is sent between the server and the client.

Novelty and inventive step
Prior art was cited that disclosed all the elements of the claimed system. The main construction point was whether or not the claim was limited to gambling for real money (a feature that was neither in the claims as granted nor in the prior art) - this was found not to be the case. The claimed invention was therefore anticipated.

Excluded subject matter
The patent was also attacked on the ground of excluded subject matter. It was alleged that the claimed invention was not patentable because it is a scheme, rule or method of performing a mental act or playing a game and/or is a computer program. It was not specifically alleged that it is a method of doing business although there was a general plea that it "otherwise makes no relevant technical contribution".

The scope of these exclusions has been considered by the Court of Appeal in the UK twice in recent times: first in Aerotel v. Telco; Macrossan's Application [2007] RPC 7 ("Aerotel"), and second in Symbian Ltd v Comptroller-General, both applications rejected by the UK IPO.

In the present case, it was held that, if one ignores the fact that the claimed invention operates through a computer program, there is nothing left to the invention. Its sole raison d'être is the computerisation of conventional gambling for real money. It was held that the contribution that the patent in suit describes is a computer program as such. The perceived problem (if any) is not a computer problem but is a business problem. Thus to the extent that the patent in suit solves a problem, it is a method of doing business.

Conclusion
This should be read in the context that the prior art was held to teach the same technical contribution that the claimed invention was held to teach. Once this common technical teaching is ignored, the only teaching alleged was the application to conventional gambling i.e. for real money. This was considered to fall within the excluded subject matter of a method of doing business.

 
¹ CRANWAY LIMITED (Claimant) - and - PLAYTECH LIMITED and others (Defendants) - Patents Court Decision - Mr Justice Lewison - 7 July 2009 [2009] EWHC 1588 (Pat)