Gale’s Application, 1991 RPC 305
Citation:Gale’s Application, 1991 RPC 305
Rule of thumb:How do you stop a patent being granted for a new product which is similar to yours? If a new invention only has a technical effect, and not a technical result, this may result in a patent being refused – an invention must do more than just use an existing invention in a new way – it must actually be a significant improvement.
Judgment:
The Court held the precedent in this case that the words “technical contribution”, and “technical result”, with an emphasis on the word ‘technical’, were a good means of beginning to consider whether a patent should be granted. This is a good start towards proving an invention is sufficiently novel nonetheless. The Court held however that just because a new invention has ‘technical effect’ it is not a guarantee that it will be a successful application. The basic facts of this case were that a computer chip was created which could work out the square root of numbers. The Court held that computer chips were not registrable as patents because they were essentially computer programmes. The Court further warned however just because there is a technical result achieved by a process does not always mean that a patent will automatically be granted for it, and that this has not to be over-relied upon, ‘If you look at case on the subject... you will find many references to “technical contribution”, “technical result”, and so on, being touchstones by which these cases are decided. The use of the word “technical” as a short-handed expression in order to identify patentable subject matter is often convenient. But it should be remembered that it was not used by the framers of the Patents Act 1977 or the European Patent Convention when they wanted to tell us what is or is not an “invention”. In any case the word “technical” is not a solution. It is merely a restatement of the problem in different and more imprecise language. I am not claiming it is wrong to decide these cases with reference to the word “technical”, it happens all the time. What I am saying is that it is not a panacea. It is a useful servant but a dangerous master’, Fox LJ
Warning: This is not professional legal advice. This is not professional legal education advice. Please obtain professional guidance before embarking on any legal course of action. This is just an interpretation of a Judgment by persons of legal insight & varying levels of legal specialism, experience & expertise. Please read the Judgment yourself and form your own interpretation of it with professional assistance.