Intellectual Property – Patentability of Computer Programmes - Exclusions

By Rosanna Cooper

In the recent judgment of Re (2005), the Comptroller refused a patent application for a computer program that permitted a user to play the lottery on the grounds that it was excluded from patentability under the provisions of the Patents Act 1977. applied for a patent of a computer apparatus configured to provide a lottery playable via the Internet. The apparatus provided a web server and further software conditioning the machine to receive, store, select and compare. This enabled the computer to operate in a new way—to permit a user to play the lottery. The application was rejected and appealed this decision.

The patentability of the computer apparatus was examined in light of the exclusions under paragraph 1(2)(c) and (d) of the Patents Act 1977. These provisions exclude from being patentable, a scheme, rule or method of performing a mental act, playing a game, or doing business, and computer programs and presentations of information.

Re argued that this claim was a game, conceptually no different from a board game, and therefore patentable as a result of a note from Official Ruling 1926(A) (1926) 43 RPC Appendix page i, which stated that a playing game would meet the requirements of an invention under s.93 of the Patent and Designs Acts, 1907 and 1919.

The Deputy Director of the Comptroller determined that the Official Ruling guidelines on the interpretation of the 1907 and 1919 Acts were not valid guidelines for interpreting the 1977 Act. Furthermore, as there have been difficulties in interpreting the 1977 Act, the court would refer to Article 52 of the European Patent Convention, which has the same effect as the 1977 Act.

The Deputy Director concluded that:-

▪ the first test to determine whether a computer program is an invention is whether the inventor has contributed over and above a computer operating in a new way as a matter of substance;

▪ the second test is to determine whether the contribution lies in an excluded matter or, on the contrary, whether it creates a technical contribution or effect;

▪ in this case, it was unnecessary to make a search on the contribution to the art as computer programs are notorious and the court could therefore apply common sense;

▪ the program provides a web server to the Internet, which is a common service; and

▪ there is no contribution to the art outside of the provision of various pages to view the pages provided by the server.

The Deputy Director therefore dismissed the appeal.

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