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Wednesday, November 01, 2006

New UK Case Law on Patentability of CIIs (cont'd.).

In my

earlier posting I had reported that

The Honourable Mr. Justice Mann of The High Court Of Justice - Chancery Division / Patents Court - in London had handed down a

Decision cited as [2006] EWHC 705 (Ch) dated April 03, 2006. The decision was about UK application

GB 0314464.9 filed as a UK national phase of PCT Application PCT/AU2001/001526 and titled "Automated method of acquiring the documents necessary to incorporate a company" which had, on March 22, 2005, previously been rejected by the UK Patent Office. In April 2006, Judge Mann had dismissed the Appeal filed by the Applicant.

I am now a bit late to mention that there is

a further Decision in the Supreme Court of Judicature Court of Appeal (Civil Division) on Appeal from the High Court of Justice Chencery Division (Patents Court) concerning this matter - Neutral Citation Number: [2006] EWCA Civ 1371 - given by The Hon Mr Justice Lewison, The Rt Hon Lord Justice Jacob, and by The Rt Hon Lord Justice Neuberger. The matter wals delat with together with another case in re Aerotel. A patent on a method of making a telephone call from any available telephone was allowed (in re Aerotel) whereas an automated method of acquiring the documents necessary to incorporate a company was ruled non-patentable. This does not come to me as a surprise.

There is a well-written

discussion of the Decision on the

IPKat Blog.

In the court Decision there is also a brief remark concerning a certain Decision of the German Federal Supreme Court ("Bundesgerichtshof", "BGH"):

"[...] Two cases of the German BGH were brought to our attention. The first was Sprachananlyseeinrichtung (language analysing device) 11th May 220 X ZB 15/86 GRUR 200 1007, 454 OJ EPO 8-9/2002. The headnote accurately states the holding:

'(a) An apparatus (computer) which is programmed in a specific way has technical character. The applies even if texts are edited on the computer.

(b) For the purpose of assessing the technical character of such an apparatus it is not relevant whether the apparatus produces a (further) technical effect, whether technology is enriched by it or whether it makes a contribution to the state of the art.'

For reasons we confess we do not fully understand the BGH considered that the case was not concerned with the computer program as such exclusion. It therefore did not find it necessary to consider the EPO case law on the point.

Significantly, in the more recent case of Jesco Schwarzer 28th September 2004 17 W (pat) 31/03, the BGH appears to have some reservations about Sprachananlyseeinrichtung, refusing to extend it to the image processing system of the claim because it was basically a claim to mathematical method as such even though it would implemented by a computer. Most significantly, however, the BGH declined to follow Hitachi (see para 3.2.2.). [...]"

Well, but the Decision 17 W (pat) 31/03 appears not to originate from BGH but from the Federal Patent Court ("Bundespatentgericht").

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Patent Attorney Axel H Horns' Blog on Intellectual Property Law.

Wednesday, November 01, 2006

New UK Case Law on Patentability of CIIs (cont'd.).

VPP