UK Court finds online gaming system non-patentable subject matter

December 16th, 2009 by Barry Sookman Leave a reply »

As Canada is still pondering the patentability of computer subject matter in the Amazon “one-click” patent case, UK courts continue to examin patents for computer related subject matter. The latest case is Cranway Ltd v Playtech Ltd & Ors [2009] EWHC 1588 (Pat) (07 July 2009). The patent involved an on-line gambling invention. The court found the invetion to be obvious. it also found the patent excluded subject matter under

The court summarized the law in its reasons as follows:

“(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(c) schemes, rules or methods for performing mental acts, playing games or doing business, and programs for computers;

(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.”

“Playtech pleads that the claimed invention is not patentable because it is a scheme rule or method of performing a mental act or playing a game and/or is a computer program. It does not specifically allege that it is a method of doing business; although there is a general plea that it “otherwise makes no relevant technical contribution.” Mr Tappin raised no objection to this form of pleading; and Mr Alexander made submissions on the “method of doing business” exclusion too.”

“In Aerotel the Court of Appeal laid down the following four step test to decide whether a claimed invention is patentable:

i) properly construe the claim;

ii) identify the actual contribution;

iii) ask whether the identified contribution falls solely within the excluded subject matter;

iv) check whether the actual or alleged contribution is actually technical in nature.”

“How do you assess the contribution? Mr Birss submits that the test is workable – it is an exercise in judgment probably involving the problem to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended.”

 “… asking what the inventor has added to human knowledge necessarily means that the questioner has some notion of the state of the art. In other words, patentability cannot be put into a watertight compartment completely separate from novelty.”

“What the Board are saying in this paragraph is, I think, that you assess the patentability of a claimed invention ignoring the fact that it operates through a computer program. If, ignoring the computer program, it would be patentable, then the fact that a computer drives the invention does not deprive it of patentability.”

 “ i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;

ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;

iii) whether the claimed technical effect results in the computer being made to operate in a new way;

iv) whether there is an increase in the speed or reliability of the computer;

v ) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented

“ i) The whole of the process is carried on inside the computer and/or the server;

ii) The architecture is standard;

iii) The computer does not operate in a new way;

iv) There is no increase in the speed or reliability of the computer;

v ) The perceived problem (if any) is not a computer problem but is a business problem. Thus to the extent that the patent in suit solves a problem, it is a method of doing business.”

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