The Court of Appeal went on to apply the Genentech ruling to computer programs in two cases: first, Re Merrill Lynch’s Application [1989] RPC 561 and then in Re Gale’s Application [1991] RPC 305, CA. Merrill Lynch was initially decided at about the same time as Genentech. Whitford J’s first instance judgment in that case was not followed by Falconer J in Merrill Lynch, but when Genentech went to the Court of Appeal Whitford J’s judgment was upheld, rather than the court following the reasoning of the lower court in Merrill Lynch, which had been decided in between. However, the Court of Appeal managed to achieve this without casting doubt on Falconer J’s actual decision, since an appeal from it was then pending. When that appeal came up, the Court of Appeal endorsed the approach already taken in Genentech, namely that the s1(2) prohibition was limited to inventions related to the matters specified in the subsection, and modes of using them in a process or in relation to an artefact were patentable. Fox LJ (for the court) also derived support from the Vicom decision in the European Patent Office (below), but still managing to uphold Falconer J’s decision (though not his reasoning).

doi:10.4324/9781843142928-44

Chapter

The Court of Appeal went on to apply the Genentech ruling to computer programs in two cases: first, Re Merrill Lynch’s Application [1989] RPC 561 and then in Re Gale’s Application [1991] RPC 305, CA. Merrill Lynch was initially decided at about the same time as Genentech. Whitford J’s first instance judgment in that case was not followed by Falconer J in Merrill Lynch, but when Genentech went to the Court of Appeal Whitford J’s judgment was upheld, rather than the court following the reasoning of the lower court in Merrill Lynch, which had been decided in between. However, the Court of Appeal managed to achieve this without casting doubt on Falconer J’s actual decision, since an appeal from it was then pending. When that appeal came up, the Court of Appeal endorsed the approach already taken in Genentech, namely that the s1(2) prohibition was limited to inventions related to the matters specified in the subsection, and modes of using them in a process or in relation to an artefact were patentable. Fox LJ (for the court) also derived support from the Vicom decision in the European Patent Office (below), but still managing to uphold Falconer J’s decision (though not his reasoning).

Chapter

The Court of Appeal went on to apply the Genentech ruling to computer programs in two cases: first, Re Merrill Lynch’s Application [1989] RPC 561 and then in Re Gale’s Application [1991] RPC 305, CA. Merrill Lynch was initially decided at about the same time as Genentech. Whitford J’s first instance judgment in that case was not followed by Falconer J in Merrill Lynch, but when Genentech went to the Court of Appeal Whitford J’s judgment was upheld, rather than the court following the reasoning of the lower court in Merrill Lynch, which had been decided in between. However, the Court of Appeal managed to achieve this without casting doubt on Falconer J’s actual decision, since an appeal from it was then pending. When that appeal came up, the Court of Appeal endorsed the approach already taken in Genentech, namely that the s1(2) prohibition was limited to inventions related to the matters specified in the subsection, and modes of using them in a process or in relation to an artefact were patentable. Fox LJ (for the court) also derived support from the Vicom decision in the European Patent Office (below), but still managing to uphold Falconer J’s decision (though not his reasoning).

ABSTRACT

The position seems to me to be this, Genentech decides that the reasoning of Falconer J is wrong. On the other hand, it seems to me to be clear, for the reasons indicated by Dillon LJ, that it cannot be permissible to patent an item excluded by s 1(2) under the guise of an article which contains that item – that is to say, in the case of a computer program, the patenting of a conventional computer containing that program. Something further is necessary. The nature of that addition is, I think, to be found in the Vicom case where it is stated: ‘Decisive is what technical contribution the invention makes to the known art’. There must, I think, be some technical advance on the prior art in the form of a new result (eg a substantial increase in processing speed as in Vicom).