The words ‘as such’ in s1(2) have given rise to two different approaches, explored in cases concerning the patentability of computer programs and biotechnological inventions. The leading case on biotechnology inventions is Genentech, which is dealt with below: it is referred to in the following cases on computer software. (a) The application can be considered without the excluded matter. If the application is for a computer with a program running on it, the court must consider whether the machine itself adds anything to the state of the art. If the invention’s novelty and inventiveness resides entirely in the program, no patent will be granted. An example of this approach is found in Re Merrill Lynch’s Application [1989] RPC 561 (CA) in the Patents Court, which concerned a data processing system for making a trading market in securities. The program used a known computer system programmed in a standard language. Claim 1 read:

doi:10.4324/9781843142928-43

Chapter

The words ‘as such’ in s1(2) have given rise to two different approaches, explored in cases concerning the patentability of computer programs and biotechnological inventions. The leading case on biotechnology inventions is Genentech, which is dealt with below: it is referred to in the following cases on computer software. (a) The application can be considered without the excluded matter. If the application is for a computer with a program running on it, the court must consider whether the machine itself adds anything to the state of the art. If the invention’s novelty and inventiveness resides entirely in the program, no patent will be granted. An example of this approach is found in Re Merrill Lynch’s Application [1989] RPC 561 (CA) in the Patents Court, which concerned a data processing system for making a trading market in securities. The program used a known computer system programmed in a standard language. Claim 1 read:

Chapter

The words ‘as such’ in s1(2) have given rise to two different approaches, explored in cases concerning the patentability of computer programs and biotechnological inventions. The leading case on biotechnology inventions is Genentech, which is dealt with below: it is referred to in the following cases on computer software. (a) The application can be considered without the excluded matter. If the application is for a computer with a program running on it, the court must consider whether the machine itself adds anything to the state of the art. If the invention’s novelty and inventiveness resides entirely in the program, no patent will be granted. An example of this approach is found in Re Merrill Lynch’s Application [1989] RPC 561 (CA) in the Patents Court, which concerned a data processing system for making a trading market in securities. The program used a known computer system programmed in a standard language. Claim 1 read:

ABSTRACT

In combination in a data processing system for making a trading market in at least one security in which the system proprietor is acting as principal; said system including means for receiving trade orders for at least one said security from system customers, said trade orders including fields identifying the stock to be traded and characterisation of the trade as a customer purchase or sale, and the number of shares for the transaction; means for retrieving and for storing operative bid and asked prices for said at least one security; means for entering and for storing order qualification parameters, said parameters and said stored prices determining which received orders and qualified for execution; means for storing data characterising position, cost and profit for said at least one security; qualifying means responsive to said received trade orders and said stored prices and order qualification parameters for qualifying a trade order for execution when the received trade order fields do not violate the stored prices and qualification parameters; means for executing each trade order qualified by said qualification means; and post-execution updating means for updating said position and at least one of said stored parameters upon execution of a trade order.