Shopalotto.com Ltd's Application

JurisdictionEngland & Wales
JudgeMr Justice Pumfrey
Judgment Date07 November 2005
Neutral Citation[2005] EWHC 2416 (Pat)
CourtChancery Division (Patents Court)
Date07 November 2005
Docket NumberCase No: CH/2005/APP/0232

[2005] EWHC 2416 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Royal Courts of Justice

Strand, London, WC2A 2LL

Before

The Honourable Mr Justice Pumfrey

Case No: CH/2005/APP/0232

In the Matter of the Patents Act 1977
And in the Matter of Patent Application
GB 0017772.5 by
Shopalotto.com Limited
Appellant
On Appeal From a Decision of
The Comptroller General of Patents, Designs and Trade Marks

Richard Davis (instructed by Marks & Clerk, Patent Agents) for the Appellant

Colin Birss (instructed by The Treasury Solicitor) for the Comptroller

Hearing date: 23rd June 2005

Mr Justice Pumfrey

Mr Justice Pumfrey:

1

This is an appeal from the decision of Mr H Jones, the Deputy Director acting for the Comptroller General, who decided that patent application GB 0017772.5, as amended, was excluded from patentability under s.1 (2)(d) of the Patents Act 1977. The claim as amended before the Comptroller was as follows:

"1. A computer apparatus configured to provide a lottery playable via the Internet, the apparatus comprising:

a web server configured to provide each of a plurality of players with a web page over the Internet, the web page displaying a set of brands;

receiving means configured to receive over the Internet data representing player selection of a subset of the set of brands;

storage means configured to record the selected subset of brands together with information identifying the player;

selecting means configured to select a subset of brands at random from the set of brands; and

reward means for awarding a prize to a player if that player's selected subset of brands corresponds to the randomly selected subset of brands".

2

The apparatus features of this claim can manifestly be satisfied by a general purpose computer connected to the Internet, the general purpose computer being programmed to provide a web server, and further software conditioning the machine so as to receive, store, select and compare. This is a computer operating in a new way, to permit a user to play in a lottery. The claim accordingly raises the familiar difficulty presented by the exclusions provided by paragraph 1(2)(c) and (d) of the Act, which exclude from patentability a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; or the presentation of information. The scope of the exclusions is limited by the proviso to subsection 1(2) which states that the foregoing provision shall prevent anything from being treated as an invention for the purpose of the Act only to the extent that a patent or application for a patent relates to that thing as such. As the Hearing Officer correctly observed, these provisions are among the provisions designated in s.130(7) as being so framed as to have, as nearly as practicable, the same effect as Article 52 of the European Patent Convention to which they correspond. There is a substantial body of decisions on these provisions emanating from the Technical Boards of Appeal of the EPO to which regard must be had.

3

The Applicant's contentions are straightforward. It is contended that the claim is a claim to a game, conceptually no different from a board game, and is therefore entitled to the benefit of the note of Official Ruling 1926(A) (1926) 43 RPC Appendix page i. This note reads as follows:

"Counter and board games considered in relation to the definition of an invention contained in Section 93 of the Patents and Designs Acts, 1907 and 1919

The question having arisen upon an Examiner's Report, whether a patent for a game of the above character should be refused where the only novel feature (apart from the rules of the game) lies in the particular character of the markings upon the board, the following Ruling was given:—

It may be stated generally that where the claim made in cases such as this is to apparatus for playing a game, comprising one or more playing pieces and a board marked in a particular manner substantially as shown in drawings accompanying the Specification, the playing piece or pieces being moved in accordance with directions furnished in the Specification as to the manner in which the game is to be played, the requirements involved by the definition of an "invention" contained in Section 93 of the Acts will be held to be complied with, and the application will be subject only to such objection as may arise under Section 7 or otherwise in the normal procedure of examination".

4

I have to say that it comes as something of a surprise to me that the practice of the Office in respect of s.1 (2) of the 1977 Act can be said to have been determined by a construction placed upon s.93 of the 1907–1919 Act. The Official Ruling cannot provide a valid guide to the interpretation of the 1977 Act, the more so since the 1977 Act is, as I have indicated, to be interpreted having regard to the provisions of the European Patent Convention.

5

For some reason which must remain shrouded in mystery, the draftsman of s.1 (2) did not follow Article 52 of the European Patent Convention, but departed from it in a manner which might well be thought to be significant, were it not for the provision of s.130(7). It is better, in my view, simply to refer to the Convention, Article 52 of which is as follows:

"Patentable...

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