An appeal against a Patent Office decision, not to grant a patent for an online lottery service, has been dismissed by the High Court on the grounds that the patent did not provide any technical contribution apart from a number of web pages.
The appellant, Shopalotto.com proposed to gain patent protection over an online lottery game that draws brand names in lieu of drawing numbers.
Under UK patent law computer programs Âas suchÂ are excluded from patent protection, ergo as the Shopalotto.com application fell under one of the express exclusions of the 1977 Patents Act, the Comptroller General of Patents, Designs and Trade Marks refused the application.
Following the verdict, the complainant filed an appeal with the High Court arguing that the application was for a new game and according to a 1926 ruling, games were within the ambit of patentability.
Â Firstly Mr Justice Pumfrey disregarded the 1926 ruling on the grounds that it could not interpret the 1977 Act. Secondly he addressed the crux of the issue whether a patent application for a computer program created a sufficient amount of Âtechnical effect.Â
The Two-stage Test
In determining the latter question Mr Justice Pumfrey turned to the traditional two-stage test:
ÂFirst, 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 matterÂ he wrote.
Mr Justice Pumfrey took the view that apart from the web pages, the Buckinghamshire-based company had made no contribution to the art.
Moreover as the lotto used brand names instead of numbers, Mr Justice Pumfrey deemed that the invention could also be viewed as a Âmethod of doing business,Â which damningly is also excluded from patentability.