| Aerotel Ltd v Telco Holdings Ltd [2006] EWCA Civ 1371 |
UK four-step test for applying EPC article 52 exclusions (construe claim; identify contribution; ask if solely excluded; check technicality). |
Held to be inconsistent with the EPC as interpreted by the EPO Enlarged Board; steps 2–4 should not be maintained. |
| Bentley Systems (UK) Ltd/Pedestrian Simulation (Decision G1/19) [2021] EPOR 30 |
Endorsed the EPO’s “any hardware” approach; affirmed separation of eligibility (article 52) from novelty/inventive step; endorsed Comvik/Duns principles and “intermediate step”. |
Adopted as the correct interpretation of article 52 for UK law alignment; foundation for overruling Aerotel methodology. |
| Comvik GSM AB (Decision T 641/00) [2004] EPOR 10 |
Inventive step for mixed technical/non-technical claims: only features contributing to technical character can support inventive step; non-technical aims may frame the technical problem. |
Treated as influential for the intermediate filter step, but the Court declined to treat the EPO’s “problem and solution” method as mandated in the UK. |
| Duns Licensing Associates (Decision T 154/04) [2004] EPOR 10 |
Eligibility (“invention”/technical character) is distinct from novelty/inventive step; excluded subject matter is only excluded “as such”; criticism of approaches that mix eligibility with prior art. |
Its principles were treated as approved by G1/19; adopted (save for principle (G)) as guidance for UK eligibility/inventive-step filtering. |
| PBS Partnership/Controlling pension benefits system (Decision T 931/95) [2002] EPOR 522 |
Illustration of EPO “any hardware” approach variants. |
Discussed as part of the historical landscape contrasted with Aerotel. |
| Hitachi/Auction method (Decision T 258/03) [2004] EPOR 548 |
Illustration of EPO “any hardware” approach variants. |
Discussed as part of the historical landscape contrasted with Aerotel. |
| Microsoft/Clipboard formats I (Decision T 424/03) [2006] EPOR 414 |
Illustration of EPO “any hardware” approach variants. |
Discussed as part of the historical landscape contrasted with Aerotel. |
| Gale's Application [1991] RPC 305 |
UK authority on “program for a computer”; ROM-embedded instructions remain a computer program. |
Used to reject a narrow CPU-bound definition and to support that permanence of instructions does not alter their character as a program. |
| Merrill Lynch's Application [1989] RPC 561 |
Referenced as part of domestic authority shaping Aerotel. |
Discussed in explaining how Aerotel developed and why it is now displaced by G1/19. |
| Fujitsu Ltd's Application [1997] RPC 608 |
Referenced as part of domestic authority shaping Aerotel. |
Discussed in explaining the historical domestic approach later rejected. |
| Genentech Inc's Patent [1989] RPC 147 |
Cited (Mustill LJ) for the proposition that the “invention” requirement precedes other patentability requirements. |
Supported the Court’s conclusion that eligibility under article 52 must be addressed separately and first. |
| Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] UKHL 49 |
Policy desirability of uniform EPC interpretation between UK courts and the EPO. |
Applied to justify alignment with the Enlarged Board’s interpretation unless compellingly wrong. |
| Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12 |
Importance of UK law aligning with EPO jurisprudence, especially Enlarged Board decisions. |
Reinforced the approach to follow EPO guidance on EPC interpretation. |
| Human Genome Sciences Inc v Eli Lilly & Co [2011] UKSC 51 |
Strong emphasis on consistent EPC interpretation; circumstances where national courts may diverge; “dialogue” concept. |
Used to frame when departure from EPO is permissible; the Court found no compelling reason to depart from G1/19. |
| Actavis UK Ltd v Merck &Co Inc [2008] EWCA Civ 444 |
Jacob LJ “commodore/convoy” dictum on diverging from EPO jurisprudence only when clearly wrong. |
Cited in the discussion of the weight to be given to EPO decisions. |
| Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066 |
Difficulty for lower courts when domestic precedent conflicts with EPO jurisprudence. |
Used to explain why Supreme Court review was appropriate to resolve the conflict. |
| Actavis Group PTC EHF v ICOS Corpn [2019] UKSC 15 |
Approved domestic approach to inventive step and indicated EPO “problem and solution” is not mandatory in UK courts. |
Relied on to reject the submission that aligning with G1/19 required wholesale adoption of EPO problem-and-solution methodology. |
| Pozzoli SpA v BDMO SA [2007] EWCA Civ 588 |
Established UK framework for assessing inventive step/obviousness. |
Held to remain a legitimate approach notwithstanding adoption of EPO interpretation of article 52. |
| Vicom/Computer-related invention (Decision T 208/84) [1987] 2 EPOR 74 |
No essential distinction between hardware and software embodiments; choice is technical/economic implementation. |
Supported rejection of a “real hardware ANN” vs “emulated ANN” conceptual distinction. |
| Mitsubishi/Sparsely connected neural network (Decision T 702/20) 7 November 2022 |
ANN not excluded from being a computer program merely because training data determine parameters; operation remains determined by programmed structure/learning scheme. |
Used to support the conclusion that machine-learned parameters can still form part of a computer program. |
| [2023] EWHC 2948 (Ch) |
First-instance decision (below) on whether an ANN is a computer program and whether the exclusion applied. |
Its conclusion was not adopted; the Supreme Court rejected the primary reasoning that ANNs are not computer programs. |
| [2024] EWCA Civ 825 |
Decision (below) holding ANNs are computer programs via weights/biases; refusal restored. |
Partly affirmed (ANN as a computer program) but ultimate refusal under article 52 was overturned under the G1/19 interpretation. |