Shopalotto.com was hoping to patent an online lottery game that
uses brand names instead of numbers.
UK patents, like European patents, are only supposed to be
granted for inventions which are capable of industrial application,
which are new and which involve an inventive step. Schemes for
performing mental acts and computer programs "as such" are among
the exclusions from the scope of patentability.
Shopalotto.com's application was therefore turned down by the
Comptroller General of Patents, Designs and Trade Marks on the
grounds that it fell under one of the exclusions from patentability
set out in the Patents Act 1977.
The Buckinghamshire-based company appealed to the High Court,
arguing that the patent application concerned not just a computer
program, but a new game. It pointed to a Patent Office ruling of
1926 to argue that games are traditionally patentable.
The High Court disagreed, Mr Justice Pumfrey pointing out that
the 1926 ruling could not determine how to interpret the 1977
Act.
According to Judge Pumfrey, the real question to be asked in
determining whether a patent application for a computer program
falls within the exclusions is whether it creates a “relevant
technical effect, or, more crudely, whether there is enough
technical effect.”
The answer, he wrote, can be found by taking the traditional
two-stage approach adopted by the Courts:
“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.”
Mr Justice Pumfrey said Shopalotto.com's application does not
put forward any contribution to the art apart from providing web
pages. The fact that the brand-based game set out in the web pages
allows for brand promotion means that it contains elements of
“methods of doing business” – which are also excluded from the
rules of patentability.
He dismissed the appeal.
