Journal Article

Computer-related inventions: from <i>CFPH</i> to <i>Macrossan</i>

Paul England

in Journal of Intellectual Property Law & Practice

Volume 2, issue 5, pages 305-314
Published in print May 2007 | ISSN: 1747-1532
Published online May 2007 | e-ISSN: 1747-1540 | DOI: http://dx.doi.org/10.1093/jiplp/jpm029
Computer-related inventions: from CFPH to Macrossan

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Legal context

The recent joint decision of the Court of Appeal in Aerotel Ltd v Telco Holdings Ltd and othersand Patent Application by Neal William Macrossan concerns the proper application of the exclusions to patentability under Article 52 of the European Patent Convention (EPC) and in particular the exclusions concerning computer implemented inventions and methods of doing business.

Key points

Before this decision, the proper approach to this area of the law had been thoroughly discussed and reformulated by Deputy Judge Prescott QC in CFPH followed by a string of first instance cases. There were also numerous decisions of the European Patent Office, not all of which were consistent. Accordingly, this is an area fraught with difficulty where it has been difficult to find an overreaching rationale to exclusions based on individual policy.

The Court of Appeal has now set a new four stage test by which computer implemented inventions should be approached, as well as patents to which the other exclusions might apply.

Practical significance

This new test may not reduce the difficulty of assessing inventions on a case by case basis, but it provides one source of authority that can now be followed. Furthermore, it may also prove helpful that each of the cases featured in this decision falls on either side of Article 52. As such the decision provides a useful, if sketchy, illustration of the dividing line between patentable and non-patentable subject matter.

Keywords: The exclusion of computer programs ‘as such’ from the category of inventions that may be patented is a source of continual contention between patent applicants, their competitors, patent-granting authorities, and the courts.; The application of this exclusion to specific sets of patent claims is not a simple exercise, since it requires an understanding of the relationship of the claimed software to a product or process that may be technical or industrial or which may itself be excluded from patentability.; This article examines the rationale of the exclusion in the light of a spate of recent British decisions that have forced the Patent Office to take a fresh approach to the examination of software-related patent applications.

Journal Article.  5501 words.  Illustrated.

Subjects: Intellectual Property Law

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