Shopalotto.Com Ltd, Re Patent Application GB 0017772.5

For computer-implemented inventions, the court must identify the contribution made by the claimed programmed computer over and above the use of a computer operating in a new way. It must then ask whether that contribution lies solely in excluded subject matter, such as a scheme, method of doing business, game or computer program, or whether it provides a relevant technical contribution or effect. The analysis is substantive and cannot be avoided by presenting excluded matter in a different form, such as software on a carrier. A formal prior-art search is not always necessary where the relevant technical background is notorious. An internet lottery claim was excluded because its contribution lay in providing web pages and reinforcing selected brands, rather than in subject matter outside the statutory exclusions.

Shopalotto.Com Ltd appealed against the Comptroller’s decision that amended patent application GB 0017772.5 was excluded from patentability under section 1(2)(d) of the Patents Act 1977. The claim concerned computer apparatus providing an internet lottery in which players selected brands and received a prize if their selections matched a randomly selected subset.

The appeal raised the scope of the exclusions for schemes, rules or methods of playing games or doing business, computer programs and presentations of information, and the effect of the proviso that exclusion applies only where the application relates to the excluded matter as such.

1. The appeal was dismissed with costs. The amended claim described a general-purpose computer connected to the Internet, programmed to provide a web server and to receive, store, select and compare data.

2. The Official Ruling concerning board games under the earlier patent legislation could not guide interpretation of section 1(2) of the Patents Act 1977. The Act had to be interpreted having regard to Article 52 of the European Patent Convention, as required by section 130(7).

3. The exclusions in Article 52 and section 1(2) are heterogeneous. They do not all share a single underlying policy or necessarily a common lack of technical effect. The relevant question is whether the claimed programmed computer makes a contribution to the art over and above the fact that it is a programmed computer.

4. The analysis has two stages: identify the inventor’s contribution as a matter of substance, and determine whether that contribution lies in excluded matter or instead constitutes a relevant technical contribution or effect. The contribution must be assessed substantively, so that merely changing the form of presentation cannot secure protection for excluded matter, including a computer program on a carrier.

5. A programmed computer operating in a new way is not, without more, a solution to a concrete technical problem. The contribution cannot lie solely in excluded subject matter. A formal novelty search is unnecessary where common sense and experience show that the relevant technical background is notorious. Here, the computer, web-server and Internet features were technically commonplace at the priority date.

6. The claim contributed no matter outside the provision of pages to users suitably equipped to view them. Any further element reinforcing the message of the selected brand or brands was a method of doing business. The Hearing Officer’s conclusion was therefore correct and the application remained excluded.

• High Court (Patents Court): The appeal from the Deputy Director acting for the Comptroller General was dismissed with costs. No citation for the Comptroller’s decision is stated in the judgment.