Shoplotto.com’s Application, 2005 EWHC 2416
Citation: Shoplotto.com’s Application, 2005 EWHC 2416
Rule of thumb: Is it hard to prove sufficiently novel in a patent application? Yes, sometimes a technical solution to an existing problem does not improve the knowledge in the area, rather it is just a person who knows how to use & organise the existing knowledge better – there is a grey area there.
Judgment:
In order to obtain a patent the new invention has to be ‘sufficiently novel’, and this is an abstract, obtuse concept where it is not always easy to ascertain whether the ‘new’ invention is ‘sufficiently new’, ‘A moment’s thought will show that it is not possible to provide an exhaustive definition of invention. The Convention does not attempt to interpret the word but provides a list of things which are excluded, whether or not they would be regarded as inventions’, Pumfrey J, at 6. The Court held that a new invention providing a ‘technical solution’ to a problem, and potentially being able to be constructed as a machine, is a good start for a patent technically being obtained, even if it is to be mainly used in practice as a computer programme in practice. From this it can then be ascertained if it has ‘enough technical effect’. The basic facts of this case were that a new online lottery game was created. The Court in this case held that patent applications for computer programmes and computer implemented inventions will not be granted patent certificates, mainly due to them being on the excluded list, ‘The real question is whether there is a relevant technical effect, or, more crudely, whether there is a enough technical effect: is there a technical effect over and above that expected from the mere loading of a program into a computer? From this sort of consideration there has to developed an approach that I consider to be well established on the authorities, which is to take the claimed programme computer, and ask what it contributes to the art over and above the fact that it covers a programmed computer. If there is a contribution outside the list of excluded matter, then the invention is patentable, but if the only contribution to the art lies in the excluded subject matter, it is not patentable’, at 9, “First, determine what the inventor has contributed to the art over and above a computer operating in a new way as a matter of substance and, second, determine whether this contribution lies in excluded matter or, on the contrary, whether it consists in a technical contribution or effect. The contribution must be considered as a matter of substance so as (for example) to prevent patents being granted for such things as novel computer programs on a carrier such as a compact disc. “An invention may be viewed as a solution to a concrete technical problem. Merely to program a computer so that it operates in a new way is not a solution to any technical problem, although the result may be considered to be a new machine. It follows that an inventive contribution cannot reside in excluded subject matter.”
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.