Under United Kingdom patent law, a patent may only be granted for "an invention". While the meaning of invention is not defined, certain things are not regarded as inventions. Such things are excluded from patentability. This article lists judgments delivered by the UK courts that deal with excluded subject matter.
The provisions about what are not to be regarded as inventions are not easy. There has been and continues to be much debate about them and about decisions on them given by national courts and the Boards of Appeal of the European Patent Office.[1] This article also list some of the discussions that have been had about the different judgments.
Article 52 of the European Patent Convention, which represents the source of UK law in this area and which should have the same meaning states that:
(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
(d) presentations of information.
(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.
The following table lists judgments by year, although it is sortable by any of the other fields by activating the sort icon.
| Year | Name | Court | Patent/application | Judgment | Appeal | Article | |
|---|---|---|---|---|---|---|---|
| 1987 | Merrill Lynch's Application [1988] RPC 1 | Patents Court | GB. 2180380. application. | Computer program as such | [1989] RPC 561 - upheld, but for different reasons | Merrill Lynch | |
| 1987 | Genentech's Patent [1987] RPC 553 | Patents Court | [1989] RPC 147 | Genentech's Patent | |||
| 1989 | Genentech's Patent [1989] RPC 147 | Genentech's Patent | |||||
| 1989 | Merrill Lynch's Application [1989] RPC 561 | Court of Appeal | GB. 2180380. application. | Business method as such | None | Merrill Lynch | |
| 1990 | Gale's Application [1991] RPC 311 | Patents Court | GB. 2174221. application. | Not a computer program as such | [1991] RPC 305, 317 - overturned | Gale's Application | |
| 1990 | Gale's Application [1991] RPC 305, 317 | Court of Appeal | GB. 2174221. application. | Mathematical method and computer program as such | None | Gale's Application | |
| 1991 | Wang's application [1991] RPC 463 | ||||||
| 1993 | Raytheon's application [1993] RPC 427 | ||||||
| 1996 | Fujitsu’s Application [1996] RPC 511 | High Court | [1997] EWCA 1174 (Civ) - upheld but for different reasons | Fujitsu's Application | |||
| 1997 | ew . Fujitsu's Application . EWCA . Civ . 1997 . 1174 . 1997-03-06. | Court of Appeal | Computer program as such | None | Fujitsu's Application | ||
| 2001 | ew . Amgen Parties v Roche Parties . EWHC . Patents . 2001 . 433 . 2001-04-11. | Patents Court | EP. 0148605B. | Not a discovery as such | Not appealed directly, but several related cases including an HoL decision | Kirin-Amgen v Hoechst Marion Roussel | |
| 2005 | ew . CFPH LLC's Applications . EWHC . Patents . 2005 . 1589 . 2005-07-21. | Patents Court | Business method as such | None | CFPH LLC's Applications |
The following table lists judgments and the different categories of excluded subject matter that are discussed within that judgment.
| Year | Judgment | Discoveries | Scientific theories | Mathematical methods | Aesthetic creations | Mental acts | Playing games | Doing business | Programs for computers | Presentations of information | Appeal | |
|---|---|---|---|---|---|---|---|---|---|---|---|---|
| 1987 | Merrill Lynch's Application [1988] RPC 1 | [1989] RPC 561 - upheld, but for different reasons | ||||||||||
| 1987 | Genentech's Patent [1987] RPC 553 | [1989] RPC 147 | ||||||||||
| 1989 | Genentech's Patent [1989] RPC 147 | None | ||||||||||
| 1989 | Merrill Lynch's Application [1989] RPC 561 | discussed but not judged on | discussed but not judged on | business method as such | discussed but not judged on | None | ||||||
| 1990 | Gale's Application [1991] RPC 311 | not a mathematical method as such | not a computer program as such | [1991] RPC 305, 317 - overturned | ||||||||
| 1990 | Gale's Application [1991] RPC 305, 317 | discussed but not judged on | mathematical method as such | computer program as such | None | |||||||
| 1991 | Wang's application [1991] RPC 463 | |||||||||||
| 1993 | Raytheon's application [1993] RPC 427 | |||||||||||
| 1997 | ew . Fujitsu's Application . EWCA . Civ . 1997 . 1174 . 1997-03-06. | discussed but not judged on | discussed but not judged on | computer program as such | None | |||||||
| 2005 | ew . CFPH LLC's Applications . EWHC . Patents . 2005 . 1589 . 2005-07-21. | discussed but not judged on | discussed but not judged on | discussed but not judged on | discussed but not judged on | business method as such | discussed but not judged on | discussed but not judged on | None | |||
| 2005 | ew . Halliburton Energy Services, Inc. v Smith International (North Sea) Ltd & Ors . EWHC . Patents . 2005 . 1623 . 2005-07-21. | mental act as such, but correctable defect | Appeal filed, but not on this point[2] | |||||||||
| 2005 | ew . Crawford's Application . EWHC . Patents . 2005 . 2417 . 2005-11-04. | None | ||||||||||
| 2005 | ew . Shoppalotto.com's Application . EWHC . Patents . 2005 . 2416 . 2005-11-07. | None | ||||||||||
| 2009 | ew . Tate & Lyle Technology Limited v Roquette Frères . EWHC . Patents . 2009 . 1312 . 16 June 2009. | Discovery as such | None |
Lawyers, patent attorneys and economists have often debated the effects of the judgments listed above. A list of some papers and articles is provided below. Many of these papers discuss more than one judgment, but they have been ordered according to their primary focus, if there is one.