Aerotel Ltd v Telco Holdings Ltd; Macrossan's Application
Whether an invention is excluded from patentability as a computer program or business method is determined by a four step test focusing on the actual contribution made.
Facts
Aerotel held a patent for a method of making telephone calls using prepaid accounts, involving new apparatus, which Telco was alleged to have infringed. In a separate case, Mr Macrossan applied for a patent for an automated method of acquiring the documents needed to incorporate a company, using a computer program. The question in both cases was whether the inventions were excluded from patentability by section 1(2) of the Patents Act 1977, which excludes computer programs and methods of doing business as such.
Legal principle
The Court of Appeal held that Aerotel's patent was valid, because it involved a new physical combination of hardware, but that Mr Macrossan's invention was excluded, because it was a computer program and a method of doing business. Jacob LJ set out a four step approach: first, properly construe the claim; second, identify the actual contribution; third, ask whether it falls solely within the excluded subject matter; and fourth, check whether the actual or alleged contribution is actually technical in nature. The approach was later modified in Symbian and Emotional Perception.
Related cases on patents: patentability and validity
- Biogen Inc v Medeva plc [1997] RPC 1
- Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] UKHL 49, [2008] RPC 28
- Emotional Perception AI Ltd v Comptroller General of Patents, Designs and Trade Marks [2024] EWCA Civ 825
- Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12, [2009] RPC 13
- Human Genome Sciences Inc v Eli Lilly & Co [2011] UKSC 51, [2012] RPC 6
- Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd [1996] RPC 76
- Oliver Brüstle v Greenpeace eV Case C-34/10, [2011] ECR I-9821
- Pozzoli SpA v BDMO SA [2007] EWCA Civ 588, [2007] FSR 37
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