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ISSUE 1 2014 MASCHIO & SOAMES IP LTD Recent UK IPO decisions
Marc Morgan
Two recent UK decisions emphasise the need to keep in mind the current jurisprudence concerning patentability when drafting patent applications.
Computer software enjoys copyright protection automatically in the UK but this does not prevent attempts to protect the underlying methodology by patents. In Research In Motion’s patent GB2495384, a screen based device which changes the delete function direction according to the set language, was indicated to be potentially allowable subject to amendment. The examined claims included the wording “wherein the direction identifier indicia is configured to indicate between the first function and the second direction responsive to a selection of the backspace function and the delete function and is in accordance with the current operating language of the keyboard.” Using the Aerotel test, the contribution to the art was held to fall under the presentation of information exclusion from patentability. Accordingly, the applicant agreed to amend the claims and the application was remitted to the examiner for further examination.
In Sainsbury’s application GB2493336 heavy water was encountered. The claimed method of issuing money off vouchers was found to be solely a business method with no technical effect and the patent application refused.
What was most apparent from the Sainsbury’s case was the need to formulate a technical problem that the invention addresses and which lies outside of areas excluded from patentability. In our view, this should be considered when deciding to file an application and should be emphasised at the patent drafting stage.
Sainsbury’s application
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