Shopalotto.Com Ltd, Re Patent Application GB 0017772.5

Factual and Procedural Background

This opinion concerns an appeal against a decision by the Deputy Director acting for the Comptroller General, who ruled that a patent application for a computer apparatus configured to provide an Internet-playable lottery was excluded from patentability under section 1(2)(d) of the Patents Act 1977. The claim described a general purpose computer programmed to provide a web server facilitating a lottery game involving brand selection by players, random brand selection, and prize awarding based on matching selections. The appeal challenges the exclusion of this claim from patentability.

Legal Issues Presented

1. Whether the claimed computer apparatus constitutes patentable subject matter or is excluded under section 1(2)(c) and (d) of the Patents Act 1977 as a program for a computer or a scheme for playing a game "as such".
2. How to interpret the exclusions in the Patents Act 1977 in light of Article 52 of the European Patent Convention, particularly the meaning and scope of the phrase "as such".
3. Whether the claimed invention makes a technical contribution beyond a computer program as such, sufficient to confer patentability.
4. The applicability and relevance of historical rulings on games and apparatus claims to the present statutory framework and European Patent Convention.

Arguments of the Parties

Appellant's Arguments

• The claim is directed to a game apparatus conceptually akin to a board game, which should be patentable according to the note of Official Ruling 1926(A) related to apparatus for playing games.
• The invention involves apparatus comprising components configured to play a lottery game, which should satisfy the definition of an invention under prior patent statutes.

Respondent's Arguments

• The Official Ruling from 1926 is not a valid guide to the interpretation of the Patents Act 1977, which must be construed in light of the European Patent Convention.
• The claimed invention is excluded from patentability as it relates to a computer program and a scheme for playing a game "as such".
• The claim does not make a technical contribution beyond the programmed computer operating in a new way and thus falls within excluded subject matter.

Table of Precedents Cited

Court's Reasoning and Analysis

The court began by identifying the statutory exclusions under section 1(2)(c) and (d) of the Patents Act 1977, which exclude schemes, rules or methods for playing games and computer programs "as such" from patentability. The court emphasized that these provisions must be interpreted in light of Article 52 of the European Patent Convention, which similarly excludes certain subject matter only "to the extent that a patent application relates to such subject matter as such".

The appellant’s reliance on a 1926 Official Ruling was rejected as not applicable to the 1977 Act, particularly given the European context. The court acknowledged the difficulty in defining "invention" and noted that the exclusions are a heterogeneous group with different policy rationales.

Central to the analysis was the established two-stage test: first, determine what the inventor has contributed to the art beyond a computer operating in a new way; second, assess whether this contribution lies within excluded matter or constitutes a technical contribution. The court explained that merely programming a computer to operate in a new way does not solve a technical problem and thus does not confer patentability if the contribution lies solely in excluded subject matter.

The court recognized the importance of common knowledge in the field, noting that at the priority date, the use of general purpose computers and the Internet was notorious, and thus no formal novelty search was necessary to assess contribution.

Applying this analysis to the claim, the court found no contribution beyond the provision of web pages to users, and any enhancement of brand messaging was considered a method of doing business, which is excluded. Therefore, the claim did not make a technical contribution sufficient to overcome the exclusions.

Holding and Implications

The appeal was DISMISSED WITH COSTS.

The court upheld the decision that the patent application was excluded from patentability under section 1(2)(d) of the Patents Act 1977, as the claimed invention related to excluded subject matter "as such". The ruling confirms the application of the contribution approach in assessing computer-implemented inventions and clarifies that claims to games played via the Internet, implemented on general purpose computers, do not constitute patentable technical contributions if their novelty lies solely in excluded matter. No new precedent was established beyond reinforcing existing principles and the interpretative framework aligned with the European Patent Convention.