NIPC Law

Pear-on-willow / CC BY-SA (https://creativecommons.org/licenses/by-sa/4.0) Jane Lambert Patents Court (Mr Justice Birss) Lenovo (Singapore) Pte Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat) (9 July 2020) This was an appeal from the decision of Mr P Mason, Deputy Director of Patents, in Lenovo (Singapore) Pte Ltd v Comptroller-General   10 Dec 2019 BLO/754/19 upholding the examiner's objection to UK patent application number  GB1603975.2  on the grounds that the invention was excluded from patentability  s.1 (2) of the Patents Act 1977 as a program for a computer and a method for doing business as such.  The appeal was heard by Mr Justice Birss on 24 June 2020.  His lordship delivered judgment in Lenovo (Singapore) Pte Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat) on 9 July 2020. The Invention The title of the application is  "Selecting a contactless payment card".  The inve...

Intellectual Property Office Crown copyright: all rights reserved, reproduced with kind permission of the  IPO Jane Lambert Intellectual Property Office (Mrs C L Davies) Re Adobe Systems Inc.'s Application   O/549/19 19 Sept 2019 This was an appeal by Adobe Systems Incorporated against the examiner's refusal to allow its application for a patent  for a method and system for recommending software actions to create an image and recommending images to demonstrate the effects of software actions to proceed to grant. The examiner objected to the application on the grounds that it was for a program for a computer and a mathematical method within the meaning of s.1 (2) (a) and (c) of the Patents Act 1977. That subsection declares that mathematical methods and programs for computers among other things are not inventions for the purposes of the Act but that declaration is subject to the proviso that it "shall prevent anything from being treated as a...

Lantana Ltd . ( "Lantana" ) is a California company that offers communication cable services, telephone systems and services and computer and data network services mainly to customers in Southern California . One of the company's employees invented a "method, systems, and computer program products for retrieving a file of machine readable data" for which Lantana applied for patents in the USA and around the world under the Patent Co-operation Treaty. The Invention  The invention is described in the abstract of the application as follows: "A user, wishing to retrieve a file of machine-readable data from a remote machine-readable data storage device, transmits a first e-mail message from a local station to a remote station via a packet switched network. The first e-mail message includes a first machine-readable instruction and a first machine-readable retrieval criterion. The remote station receives the first e-mail message from the packet ...

In  HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 (3 May 2013), the Court of Appeal (Lord Justices Richards, Lewison and Kitchin) ventured again into what Lord Justice Lewison described at paragraph [140] of the Court's judgment as "the minefield of the exclusion from patentability of computer programs 'as such'". The Appeal This was an appeal from the judgment of Mr Justice Floyd (as he then was) in  HTC Europe Co Ltd v Apple Inc [2012] EWHC 1789 (Pat) (4 July 2012). The judge found that two of the claims of one of Apple's patents were invalid because they related to computer programs as such and one of those claims was also invalid for obviousness. He also found that all the claims of another patent were invalid either for want of novelty or obviousness.  The first of those patents, European patent number 2,098.948 , related to computer devices with touch sensitive screens that are capable of responding to more than one touch at a time. The second, E...

On 8 Dec 2008 Sean Dennehey signed a new practice note on the patenmtability of computer programs to take account of the CA's decision in Symbian . T he main changes relate to: what constitutes a technical contribution for the purpose of determing whether a program is patentable; and clarificaiton of the exclusions in s.1 of the Patents Act 1977. Technical Contribution The Intellectual Property Office had previously recognized inventions that either solve technical problems external to a computer or solve "a technical problem within the computer" as potentially patentable inventions. The sea change of Symbian  is that  "improving the operation of a computer by solving a problem arising from the way the computer was programmed - for example, a tendency to crash due to conflicting library program calls - can also be regarded as solving "a technical problem within the computer" if it leads to a more reliable computer. Thus, a program that results in a computer...

C olin Birss QC is giving a talk for the AIPPI at Allen & Overy on Symbian entitled " Symbian: Where do we stand now? " on 4 De c .   It should be good.   I have heard Colin speak before. The cost is only £20 and if I can find time to get to London I shall be there. For those who can't make that event,  NIPC Training  is also discussing Symbian and linking it with Bilski at Liverpool on 5 Feb 2009 (see  "Software Protection after  Symbian  and  Bilski"    o n www.nipc-training.co.uk .  I shall be speaking as will Robin Bartle of WP Thompson. Kirwans have also promised a speaker and we have invited contributions from the IP Office, Intellect and the NCC. You can register an interest by completing the on-line form. Symbian is a very important case.   You can read my post on the case below.

I have not yet had a chance properly to analyse the Court of Appeal's decision in  Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066 (8 Oc 2008) but it looks to me as though the Court has rowed back a bit since  Macrossan   [2007] RPC 7, [2006] Info TLR 215, [2007] Bus LR 634, [2007] 1 All ER 225, [2006] EWCA Civ 1371 and that English jurisprudence is now closer to that of the EPO Technical Board of Appeal. Referring to the Board's decision in Duns Licensing Associates LP ,  T 0154/04 - 3.5.01 which discussed Macrossan the CA (which included Lord Neuberger as well as Lord Justice Jacob who also delivered the CA's judgment in Macrossan ) observed that  at para [11] "a t least as a matter of broad principle, it seems to us that the approaches in the two cases and indeed in the great majority of cases in this jurisdiction and in the EPO, are, on a fair analysis, capable of reconciliation." The basis of that reconciliation appears to have been as foll...