This document provides an introduction to patents presented at a seminar on the Patent Box. It discusses what a patent is, the conditions for obtaining a patent including novelty, inventiveness and utility. It describes the person skilled in the art and prior art. It also outlines where to apply for patents, the patent application process, and the role of patent agents. The introduction aims to provide context for the subsequent presentations on the Patent Box and commercializing intellectual property.

1. 0
The Patent Box
and R & D Credits
Friday 12 July 2013
12:00 – 14:30
Liverpool in London, Royal Mint Court
Jane Lambert
Barrister
4-5 Gray’s Inn Square
Gray’s Inn
London
WC1R 5AH
+44 (0)20 7405 5252
+44 (0)79 6637 3922
Jlambert@4-5.co.uk
www.4.5.co.uk

2. 1
Welcome!
On behalf of the IP, Media and
Technology Group of 4-5 Gray’s Inn
Square, I should like to welcome you to
our seminar on the Patent Box which we
are running with our colleagues from
Atlas Tax Chambers and our good
friends from BDO and Broudie Jackson
Canter.
I should like to tell you a little about our
chambers and, in particular, about our
IP, Media and Technology Group.
Our chambers have achieved pre-
eminence in chancery, commercial, local
government and public law and planning
with practitioners like Richard Yorke QC,
Elizabeth Appleby QC, Michael Beloff QC
and Jeremy Sullivan QC. Now we are
developing expertise in IP and tax.
Although several members of our
chambers had been in important
copyright and breach of confidence
cases, we had never done much patent
or technology work before February.
Now it is one of our fastest growing
practice areas. My interest lies in
software implemented inventions but I
also advise on mechanical, electronic
and other inventions. My former pupil,
Dr. Alex Khan, who conducted his
research at Birmingham University
medical school, can cover biotechnology
and chemical patents and plant varieties.
We advise on difficult points of law, draft
complex instruments, negotiate in non-
contentious as well as contentious
matters and, of course, represent clients
before all courts and tribunals including
the Patents Court, Patents County Court,
Intellectual Property Office hearing
officers and Boards of Appeal. I and
other Members of our Group have
published books, contributed articles and
keep blogs on all areas of IP and
technology law.
We are particularly glad to share space
and facilities with Atlas Tax Chambers.
It makes us one of the few sets (if not
the only one) with expertise in tax as
well as IP. Having such expertise in one
place is very useful for those who are
setting a new business or developing a
new technology. Our colleagues include
Anne Fairpo, one if the authorities in IP
and taxation Unfortunately, Anne is in
the USA just now but our colleague,
Joseph Howard, who has experience of
all areas of tax law, is present.
Today we have an excellent programme
for you. After a short introduction to
patent law from me, Howard Veares, Tax
Director, Corporate International Tax
Services at BDP LLP, will outline the
Patent Box and R & D credits
concessions. He will explain the
conditions and how best to take
advantage of them. Howard will be
followed by Michael Sandys, Head of
Intellectual Property and Commercial
Law at Broudie Jackson Canter. Michael
will talk about licensing, joint ventures
and commercialization of intellectual
property. There will then be a short
question and answer session after which
we hope you will stay for a light lunch.
After this seminar we will upload the
presentations and handouts to our
Patent Box website which we shall
continue to update from time to time.
In time we hope this will become a
useful resource for both tax and IP
practitioners.
I hope you enjoy this event and I look
forward to getting to know you better.
□

3. 2
Programme
12:00 Registration
12:15 Jane Lambert Welcome and Introduction to
Patents
12:25 Howard Veares The Patent Box and R & D
Credits
12:45 Michael Sandys Licensing and
Commercialization
12:55 Jane Lambert,
Howard Veares,
Michael Sandys,
Joseph Howard
Questions and Answers
13:00 Lunch and Networking

4. 3
Introduction to Patents
What is a patent?
A patent is a monopoly of a new
invention.
If the invention is a product, the patent
confers the exclusive right to make,
dispose of, offer to dispose of, use,
import or keep the product whether for
disposal or otherwise.
If the invention is a process, the patent
confers the exclusive right to use the
process or offer it for use. The patent
also confers the exclusive right to
dispose of, offer to dispose of, use or
import any product obtained directly by
means of that process or keep any such
product, whether for disposal or
otherwise.
Conditions of the Monopoly
The monopoly is a reward for disclosing
the invention in a manner which is clear
enough and complete enough for the
invention to be performed by a person
skilled in the art.
The Person Skilled in the Art
This is an expression that is used in
several contexts in patent law. The
“person skilled in the art” is sometimes
also called the “skilled addressee”. He
or she can be an individual or a team.
Essentially, it means a person or team
with the skills, knowledge and
experience to make or use the invention.
What is meant by “the art” is discussed
below under “novelty”.
Why do Governments grant Patents?
Patents are granted to incentivize
innovation.
Inventors could be rewarded by cash or
benefits in kind as in the former Soviet
Union but that would be an expensive
and not particularly efficient way of
promoting innovation.
In free enterprise economies like Britain
we leave it to the market to reward
invention by granting patentees a
chance to recoup their expenses and
perhaps a little more by giving them the
monopolies described above. Those
monopolies can last for up to 20 years
from the date of application for the
patent.
Qualifications for a Patent
Patents are granted for inventions that
are:
(a) new;
(b) inventive;
(c) useful; and
(d) not excluded from patentability.
Novelty
An invention is new if it does not form
part of the “state of the art”.
Essentially the “state of the art” (which
is sometimes also called “the prior art”)
in relation to an invention includes all
matter (whether a product, a process,
information about either, or anything
else) which has at any time before the
application for a patent for the invention
been made available to the public
anywhere in the world by written or oral
description, by use or in any other way.
Actually, the statutory definition is
slightly broader than that but for present
purposes it is enough. The important
words are “all matter”, “made available
to the public” and “by written or oral
description, by use or in any other way.”
Much of that “matter” is disclosed in
patents or applications for patents that
are made to the world’s patent offices1
but it is not limited to such disclosure.
It can include articles in technical or
scientific journals even if they are not
widely read or circulated, and are
written in languages that are not widely
spoken, in the UK.
The prior art can include matter that is
unpublished so long as it is made
1
The biggest of which are the US Patent and Trademark
Office, the Japan Patent Office, the State Intellectual
Property Office of China, the Korea Intellectual Property
Office of South Korea and the European Patent Office.

5. 4
available to the public. Thus, an
unpatented product that is on sale or
accessible for inspection somewhere in
the world forms part of the prior art.
If matter that should have been taken
into account is discovered after the
patent has been granted, the patent can
be revoked on the ground that the
invention was not new or that it was
obvious. This can be a problem as no
search of the prior art can ever be good
enough.
Inventive
The invention must involve an “inventive
step”. An invention is taken to involve an
“inventive step” if it is not obvious to a
“person skilled in the art”, having regard
to any matter which forms part of the
state of the art
This is another reference to the “person
skilled in the art,” that is to say the
person or team with the skills,
knowledge and experience to make or
use the invention.
Such a person or team is not expected
to know everything in the prior art but
he, she or, indeed, they are supposed to
have some general knowledge that is
shared by everyone with the skills,
knowledge or experience to make or use
the invention.
Identifying the “persons skilled in the
art” and their common general
knowledge are often issues in
determining whether an invention
involves an inventive step.
Another issue is determining whether
the invention really was obvious without
the benefit of hindsight. Simplicity is not
the same as obviousness but viewed
from a point in the future a simple step
may appear to have been an obvious
one. Courts and patent offices have to
be very careful not to confuse the two.
Utility
The Patents Act 1977 says that an
invention must be “capable of industrial
application if it can be made or used in
any kind of industry, including
agriculture.” That does not mean that
the invention has to be in use just
capable of use. The inventions of the
retired patent examiner, Arthur Pedrick,
and his cat Ginger such as their “photon
push-pull radiation detector for use in
chromatically selective cat flap control
and 1000 megaton earth-orbital peace-
keeping bomb” 2
are capable of industrial
application but most have never been,
and are unlikely ever to be, used.
Not excluded from Patentability
S.1 (2) of the Patents Act 1977, which is
derived from the European Patent
Convention (“EPC”) that is about to
celebrate its 40th
anniversary this year,
declares that the following (among
other things) are not inventions for the
purposes of the Act:
“(a) a discovery, scientific theory or
mathematical method;
(b) a literary, dramatic, musical or
artistic work or any other aesthetic
creation whatsoever;
(c) a scheme, rule or method for
performing a mental act, playing a game
or doing business, or a program for a
computer;
(d) the presentation of information.”
Since much of the economy of the UK
and most other advanced economies is
based on software, the exclusion of
programs for computers presents serious
problems. Fortunately, the exclusion is
modified by a proviso that “the foregoing
provision shall prevent anything from
being treated as an invention for the
purposes of this Act only to the extent
that a patent or application for a patent
relates to that thing as such”. The words
“as such” make it possible for software
implemented inventions (as opposed to
software per se) to be patented. Over
the years the courts have generated a
vast volume of case law on computer
programs and other excluded matter.
The latest decision is HTC Europe Co Ltd
v Apple Inc [2013] EWCA Civ 451 (3
May 2013)3
which I blogged in “Software
Patents: HTC Europe Co Ltd v Apple Inc”
2
GB1426698 (A)
3
http://www.bailii.org/ew/cases/EWCA/Civ/2013/451.html

6. 5
on 13 May 2013. 4
A copy of that article
is appended.
Where does one go for a Patent?
Patents are granted by national or
regional patent offices for countries,
occasionally groups of countries and
sometimes even parts of countries.
There is no such thing as a world patent
or even an EU patent though there may
soon be a unitary patent for the whole of
the EU less Spain and Italy.
If an inventor wants a patent for the UK
he or she can go to the UK Intellectual
Property Office (“IPO”) in Newport5
or
the European Patent Office (“EPO”) in
Munich6
. Despite its name the EPO is
not an EU institution. It was set up
under the EPC. The parties to that
convention include all the 28 members
of the EU but also several important
countries like Norway, Switzerland and
Turkey which are not members of, and
may never join, the EU. The EPO
examines applications for, and grants,
patents for inventions on behalf of the
governments of its contracting parties.
Patents granted by the EPO are known
as “European patents” and European
patents granted for the UK are called
“European patents (UK)”. European
patents (UK) are treated in the UK for
nearly all practical purposes exactly like
patents granted by the IPO. Applicants
for European patents can apply for
patents for one country alone, even
Monaco or San Marino, some of the
countries7
or indeed all the contracting
countries.
If an inventor wants a patent for
countries outside Europe he r she must
apply to the patent office of the country,
region or territory concerned. My blog
lists most of the leading patent offices.
It used to be necessary to make
separate applications to each of the
world’s patent offices which duplicated
4
http://nipclaw.blogspot.co.uk/2013/05/software-patents-
htc-europe-co-ltd-v.html
5
http://www.ipo.gov.uk/
6
http://www.epo.org/
7
Usually a group of big countries like France, Germany,
Italy, the Netherlands, Spain, Sweden, Switzerland and
the UK.
each other’s efforts in determining
novelty, inventiveness and utility but it
is now possible to make a single
application to many national patent
offices simultaneously through an
international agreement called the
Patent Co-operation Treaty (“PCT”) 8
.
The initial searches and examination are
conducted centrally. If an application
survives that first stage it is passed on
to individual patent offices around the
world to determine whether the
application complies with additional
national requirements.
How to apply for a Patent
The British requirements are set out in
s.14 of the Patents Act 19779
and the
Patents Rules 2007. 10
A number of documents have to be filed
with the IPO of which the most
important is “the specification.” The
specification describes the invention in
the context of the prior art and explains
to a “person skilled in the art” how it
may be performed. As I have said
above, the disclosure must be
sufficiently clear and complete for it to
be performed by the skilled addressee. If
it is not, the patent may subsequently
be revoked. The specification must also
list in one or more numbered paragraphs
called “the claims” the monopoly that
the applicant seeks. Very great care
must be taken in drafting the claims. If
they are drawn too narrowly the patent
may be circumvented. If they are drawn
too broadly the claim may be invalid.
Patent Agents (Attorneys)
It is for that reason also advisable to
consult a patent agent11
when making a
patent application. Most patent agents
have first degrees in a natural science,
engineering or some other technical
discipline and many have advanced
degrees in one of those disciplines as
well as specialist training in IP law. They
are regulated by the IP Regulation Board
8
http://www.wipo.int/pct/en/texts/articles/atoc.htm.
9
http://www.ipo.gov.uk/patentsact1977.pdf.
10
http://www.wipo.int/pct/en/texts/articles/atoc.htm.
11
Many patent agents in the UK prefer to be called “patent
attorneys”.

7. 6
(“IPReg”) 12
under the Legal Services
Act 200713
. They represent inventors
and others before the IPO, EPO and
sometimes other patent offices. They
can qualify to conduct litigation and
present cases before the Chancery
Division as well as the Patents and
Patents County Courts. Their
professional body is the Charted
Institute of Patent Attorneys (“CIPA”)14
.
The CIPA website has a searchable
database of registered attorneys and
member firms and our chambers can
also introduce clients to firms with which
we have worked satisfactorily in the
past.
What happens to the Application?
After the application is received by the
relevant patent office it is examined to
make sure that everything is in order.
That is to say, that the correct
documents have been received, they
have been filled in properly and that any
fees that may be due have been paid.
The filing of the application itself gives
the applicant priority over other
applications or patents for similar
inventions because any grant is
backdated to the date of the application.
Although no action can be taken for the
infringement of a patent until after it has
been granted damages for infringement
can be backdated to the date of
application.
The applicant then has up to a year to
decide whether he or she wants to
pursue the patent application. If so, the
application is then examined by an
official known as “the examiner” to see
whether the application is new,
inventive, useful and falls outside any
exclusions. If the examiner spots a
problem with the application he or she
may draw it to the attention of the
applicant or his agent. Sometimes the
problem can be resolved by
correspondence. If not, the applicant can
appeal against an examiner’s decision to
a tribunal (which in the IPO is known as
“a hearing officer”) who considers the
parties’ evidence and arguments. If the
12
http://ipreg.org.uk/
13
http://www.legislation.gov.uk/ukpga/2007/29/contents.
14
http://www.cipa.org.uk/pages/home
application survives the examiner’s
objections is published it on the internet
and the patent office’s journal where it
can be read by members of the public.
Anybody can make representations on
the application. These are considered by
the examiner and the applicant. If the
application passes such further scrutiny
it proceeds to grant. Particulars of the
invention and the claims from the
specification are entered onto a register
of patents and the applicant (who is now
called “the proprietor” or “patentee”)
receives a certificate of grant
How to make Money from a Patent
It has to be emphasized that a patent is
no lottery ticket. Peter Bissell15
used to
begin his presentations by stating that
most patents on the register are never
worked, most of those that are, never
cover their costs, and of the few that do,
only a tiny proportion ever make serious
money for their proprietors. Many of the
patentees who do make money do so by
manufacturing the invention themselves.
Others license third parties to make the
invention. Patentees are encouraged to
grant licences to anyone who wants
them by reduced renewal fees and other
incentives. Such licences are known as
“licences of right”. Although the scope
for compulsory licensing has been
limited by TRIPS16
patentees may be
ordered to grant licences if their
inventions are not worked properly.
Michael Sandys will talk more about
licensing and commercialization in his
presentation.
Infringement
A patent is infringed if anyone other
than the patentee does any of the things
mentioned in the first three paragraphs
of these notes in relation to a patented
invention without the patentee’s
permission. The infringer need not have
been aware of the patent or even of the
invention. If he makes, sells, imports,
keeps a product, or uses a process that
15
Co-author of “A Better Mousetrap, the Business of
Invention”
16
Agreement on Trade-Related Aspects of Intellectual
Property Rights,
http://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm

8. 7
falls within any of the claims, he
infringes the patent.
The question that usually arises is
whether the infringer’s product or
process falls within one or other of the
claims. That in turn depends on how the
claims are to be interpreted. It must be
remembered that the specification,
including the claims, are addressed to
the “person skilled in the art”. It will
therefore be written in a way that can be
understood readily by such a person.
Sometimes technical language or
shorthand is used which may have a
completely different meaning to the
skilled addressee than to the general
reader. The judge’s job is to construe
the claims without reference to the
allegedly infringing product or process.
He or she has to put him or herself in
the position of the skilled addressee, a
process that is sometimes called
“donning the mantle”. For European and
British patents there is a Protocol to the
EPC and a massive body of case law to
help with such interpretation.
Essentially the judge reads the claims by
reference to the body of the specification
and any drawings that may be annexed
to it. Typically he or she will identify
and list the “features” or “integers” of
each claim and then look at the allegedly
infringing product or process to see
whether it shares those features. If it
does the patent is said to have been
infringed at least in respect of that
claim. If not, the patent is not infringed.
In most cases, the alleged infringer will
deny infringement and argue that the
patent is invalid and should never have
been granted. The usual grounds of
invalidity are that the invention was not
new or that it was obvious. That usually
requires a trawl of the prior art by the
alleged infringer that is a great deal
more diligent than that carried out by
the inventor and indeed the examiner
before the patent was granted.
However, there are other grounds of
invalidity. A good example of a case
where nearly every ground was
considered is Mr. Justice Birss’s decision
in Lizzanno Partitions (UK) Ltd v
Interiors Manufacturing Ltd [2013]
EWPCC 12 (11 April 2013) 17
which I
blogged in Construction of Patents -
Lizzanno Partitions (UK) Ltd v Interiors
Manufacturing Ltd on 17 June 201318
. A
copy of that article is also appended.
Enforcement
Patent infringement is not yet an offence
in the UK though it is in some other
countries and there are many who would
like to create such an offence here. 19
Consequently, it is up to the patentee to
enforce his or her patent which, in
England and Wales, means bringing
proceedings in the Patents or Patents
County Courts.
In The Enforcement of Patent Rights20
the
Intellectual Property Advisory Committee
(“IPAC”) 21
compared the cost of a
patent infringement action in the Patents
Court and Patents County Courts with
the costs in the USA, France, Germany
and the Netherlands. They found that
the average costs in the Patents Court
were £1 million, between £150,000 and
£250,000 in the Patents County Court
and between US$2 and 4 million and
upwards in the USA. By contrast the cost
in France, Germany and the Netherlands
was no higher than €50,000 and could
be as low as €10,000 in the Netherlands.
Litigation in the Patents Court is still
expensive but the costs in the Patents
County Court are now capped at
£50,000 for the trial on liability and
£25,000 for the inquiry as to damages
or account of profits. Also, there is a
maximum figure for the recoverable
costs at each stage of the litigation. 22
17
Agreement on Trade-Related Aspects of Intellectual
Property Rights,
http://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm
18
http://www.ipo.gov.uk/patentsact1977.pdf
19
Clause.13 of the Intellectual Property Bill would create
an offence of deliberate copying a registered design. The
concept of a registered design is very close to that of a
patent and in the USA registered designs are actually
called “design patents”.
20
http://webarchive.nationalarchives.gov.uk/+/http:/www.hm-
treasury.gov.uk/d/contra_vision_ltd_336_p4_163kb.pdf
21
HMG’s high level advisory committee on IP
22
See Jane Lambert New Patents County Court Rules 31
Oct 2010 NIPClaw
http://nipclaw.blogspot.co.uk/2010/10/new-patent-county-
court-rules.html

9. 8
Even with the cap, these are quite
considerable sums and individual
inventors and small and medium
enterprises (“SME”) would do well to
consider IP insurance.23
How we can help you
First and foremost we are advocates. We
can represent you or your clients on IP
issues before any court, administrative
tribunal or arbitrator. That includes
 the Patents Court, Patents County
Court and Intellectual Property list of
the Chancery Division in the Rolls
Building;
 the Chancery Division and chancery
county courts in Birmingham, Bristol,
Caernarfon, Cardiff, Leeds, Liverpool,
Manchester, Mold, Newcastle upon
Tyne and Preston; and
 IPO hearing officers and appointed
persons; and the
Court of Appeal and the Supreme Court.
Secondly, we are specialist advisors on
such matters as patentability of software
implemented inventions, validity of
patents and the construction of claims.
Working with our tax specialist
colleagues, we can advise on and draft
documents for licensing, joint venture
and other transaction.
Finally, we and our colleagues are often
consulted by entrepreneurs, inventors
and private equity, angel and other
investors under the public access
scheme. Such clients often need advice
from patent and trade mark attorneys,
solicitors, accountants and other
professionals and sometimes seek our
guidance. We tend to refer them to
practitioners with whom we have worked
well in the past. We can therefore be a
source of work as well suppliers of
services.
Should you wish to know more contact
John Lister or Steve Broom on 020 7404
5252.
23
See Jane Lambert “Intellectual Property Litigation: The
Funding Options”10 Apr 2013 NIPClaw
http://nipclaw.blogspot.co.uk/2013/04/intellectual-property-
litigation.html and Jane Lambert “IP Insurance Five Years
On” 23 Oct 2010 NIPC Inventors Club
http://nipcinvention.blogspot.co.uk/2010/10/ip-insurance-
five-years-on.html
Notes

10. 9
Appendix 1
13 May 2013
Software Patents: HTC Europe Co Ltd v Apple Inc
In HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 (3 May 2013), the Court of Appeal (Lord Justices
Richards, Lewison and Kitchin) ventured again into what Lord Justice Lewison described at paragraph [140] of
the Court's judgment as "the minefield of the exclusion from patentability of computer programs 'as such'".
The Appeal
This was an appeal from the judgment of Mr Justice Floyd (as he then was) in HTC Europe Co Ltd v Apple
Inc [2012] EWHC 1789 (Pat) (4 July 2012). The judge found that two of the claims of one of Apple's patents were
invalid because they related to computer programs as such and one of those claims was also invalid for
obviousness. He also found that all the claims of another patent were invalid either for want of novelty or
obviousness. The first of those patents, European patent number 2,098.948, related to computer devices with
touch sensitive screens that are capable of responding to more than one touch at a time. The second, European
patent number 1,964,022, to ways of unlocking computer devices with touch sensitive screens. After the trial
Apple and HTC settled their dispute and HTC took no further part in these proceedings. However, Apple invited
the Comptroller to appear on the appeal "to protect the public interest by intervening to the extent necessary to
prevent invalid patents being restored to the register."
Computer Programs "as such"
Art 52 (2) (c) of the European Patent Convention provides that programs for computers shall not be regarded as
inventions. However, art 52 (3) adds that art 52 (2) shall "exclude the patentability of the subject-matter or
activities referred to therein only to the extent to which a European patent application or European patent relates
to such subject-matter or activities as such."
In Aerotel Ltd. v Telco Holdings Ltd and Others [2007] Bus LR 634, [2006] EWCA Civ 1371, [2007] RPC 7,
[2006] Info TLR 215, [2007] BusLR 634, [2007] 1 All ER 225 the Court of Appeal propounded the following four
step approach to determining whether a software implemented invention was a computer program as such:
"i) properly construe the claim;
ii) identify the actual contribution;
iii) ask whether it falls solely within the excluded subject matter;
iv) check whether the actual or alleged contribution is actually technical in nature."
(Simon Hart, who was involved in Macrossan which has heard at the same time contributed this
article "Patents: Re Macrossan's Application" 5 Apr 2006). The Court of Appeal's approach was criticized by the
Technical Board of Appeal in Duns Licensing Associates LP, T 0154/04 - 3.5.01 though the Court of Appeal
concluded in Symbian v Comptroller-General of Patents [2008] EWCA Civ 1066, [2009] RPC 1, [2009] Bus LR
607 that most of the decisions of the Board and the English Courts were reconcilable (see my article "Software
Patents: Here we go again" 9 Oct 2009).
The first of those steps is straightforward but the second and third tend to elide and the fourth acts as a check on
the previous two. It follows that in practice the question whether a software implemented invention is patentable
boils down to the question: "has the invention made a technical contribution to the known art?" Between
paragraphs [45] and [49] Lord Justice Kitchin identified the following pointers:
"First, it is not possible to define a clear rule to determine whether or not a program is excluded,
and each case must be determined on its own facts bearing in mind the guidance given by the
Court of Appeal in Merrill Lynch and Gale and by the Boards of Appeal in Case T 0208/84 Vicom
Systems Inc [1987] OJ EPO 14, [1987] 2 EPOR 74, Case T 06/83 IBM Corporation/Data
processing network [1990] OJ EPO 5, [1990] EPOR 91 and Case T 115/85 IBM
Corporation/Computer-related invention [1990] EPOR 107.
[46] Second, the fact that improvements are made to the software programmed into the computer
rather than hardware forming part of the computer does not make a difference. As I have said, the
analysis must be carried out as a matter of substance not form.
[47] Third, the exclusions operate cumulatively. So, for example, the invention inGale related to a
new way of calculating a square root of a number with the aid of a computer and Mr Gale sought to
claim it as a ROM in which his program was stored. This was not permissible. The incorporation of
the program in a ROM did not alter its nature: it was still a computer program (excluded matter)
incorporating a mathematical method (also excluded matter). So also the invention
in Macrossanrelated to a way of making company formation documents and Mr Macrossan sought
to claim it as a method using a data processing system. This was not permissible either: it was a

11. 10
computer program (excluded matter) for carrying out a method for doing business (also excluded
matter).
[48] Fourth, it follows that it is helpful to ask: what does the invention contribute to the art as a
matter of practical reality over and above the fact that it relates to a program for a computer? If the
only contribution lies in excluded matter then it is not patentable.
[49] Fifth, and conversely, it is also helpful to consider whether the invention may be regarded as
solving a problem which is essentially technical, and that is so whether that problem lies inside or
outside the computer. An invention which solves a technical problem within the computer will have
a relevant technical effect in that it will make the computer, as a computer, an improved device, for
example by increasing its speed. An invention which solves a technical problem outside the
computer will also have a relevant technical effect, for example by controlling an improved
technical process. In either case it will not be excluded by Art 52 as relating to a computer program
as such."
At paragraph [143] of his judgment, Lord Justice Lewison regretted that because the apparently simple words of
art 52 (2) and (3)
"both our courts and the Technical Boards of Appeal at the EPO have stopped even trying to
understand them. However we are so far down that road that "returning were as tedious as go
o'er". Instead we are now engaged on a search for a "technical contribution" or a "technical effect".
Instead of arguing about what the legislation means, we argue about what the gloss means."
He concluded at [147]:
"So the upshot is that we now ignore the words "computer program … as such" and instead
concentrate on whether there is a technical contribution. It is, if I may say so, a singularly unhelpful
test because the interaction between hardware and software in a computer is inherently "technical"
in the ordinary sense of the word. If I buy a software package that malfunctions the software house
will often offer me "technical support". But that is clearly not enough for the software to qualify as
making a "technical contribution". In Symbian this court declined to provide a definition of the right
kind of technical effect; but instead provided a recommended reading list."
From that "reading list" Lord Justice Lewison had distilled the following signposts as to what constituted a
"technical effect" in AT&T Knowledge Ventures LP, [2009] EWHC 343 (Pat), [2009] Bus LR D51, [2009] FSR 19:
"i) whether the claimed technical effect has a technical effect on a process which is carried on
outside the computer;
ii) whether the claimed technical effect operates at the level of the architecture of the computer;
that is to say whether the effect is produced irrespective of the data being processed or the
applications being run;
iii) whether the claimed technical effect results in the computer being made to operate in a new
way;
iv) whether there is an increase in the speed or reliability of the computer;
v) whether the perceived problem is overcome by the claimed invention as opposed to merely
being circumvented."
In this appeal, he substituted
"It would be a relevant technical effect if the program made the computer a better computer in the
sense of running more efficiently and effectively as a computer."
which had been suggested by Mr Justice Mann in Gemstar-Tv Guide International Inc and Others v Virgin Media
Ltd and Another [2009] EWHC 3068 (Ch), [2010] RPC 10 for his own formulation in paragraph (iv), Lord Justice
Kitchin adopted Lord Justice Lewison's revised signposts at paragraph [51] of his judgment.
The Lords Justices applied that analysis to European patent number 2,098.948 did make a technical contribution
to the art and that its contribution did not lie in excluded matter.
Obviousness
Lord Justice Kitchin referred to the Court of Appeal's previous decision in Pozzoli Spa v BDMO SA and
another [2007] BusLR D117, [2007] EWCA Civ 588, [2007] FSR 37:
"(1)(a) Identify the notional 'person skilled in the art'.
(b) Identify the relevant common general knowledge of that person.
(2) Identify the inventive concept of the claim in question or, if that cannot readily be done,
construe it.
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of
the art" and the inventive concept of the claim or the claim as construed.
(4) Ask whether, when viewed without any knowledge of the alleged invention as claimed: do those
differences constitute steps which would have been obvious to the person skilled in the art or do
they require any degree of invention?"
The Court considered whether the trial judge had followed that approach and found that he had. Thus, the
appeal against obviousness failed in respect of both patents.

12. 11
Further Information
The computer program exclusion is one of my special interests and has been for nearly 30 years, If anyone
wants to discuss this case or any of the issues please call me on +44 (0)20 7404 5252 or contact me
through Facebook, Linkedin, twitter, Xing, or my contact page.

13. 12
Appendix 2
17 June 2013
Construction of Patents - Lizzanno Partitions (UK) Ltd v Interiors
Manufacturing Ltd
You might think that this
would be quite different from that
but if you did you'd be wrong. The decision of Mr Justice Birss (as he now is) in Lizzanno Partitions (UK) Ltd v
Interiors Manufacturing Ltd [2013] EWPCC 12 (11 April 2013) is an object lesson in claim construction.
It is also a text book example of the application of the law on novelty, obviousness, insufficiency, added value
and infringement which is why I am going to dissect it at some length now and perhaps use it as a case study in
my "Introduction to Intellectual Property" talk on the 26 June 2013.
The Issues
This was a claim by Lizzanno Partitions (UK) Ltd. ("Lizzanno") for a declaration that the product identified in the
first diagram did not infringe British patent number GB 2 432 617 for a gasket ("the patent") and revocation of
the patent. The patentee (whom the judge referred to as"Komfort") counterclaimed for injunctive and other
relief from infringement. The claim for revocation was based on anticipation, obviousness, insufficiency and
added matter

14. 13
His Honour, as he then was, had to decide whether the patent was valid and, if so, whether it had been infringed.
Anticipation
As every schoolgirl knows, a patent can be granted for an invention only if it is a new (see s.1 (1) (a) of
the Patents Act 1977).
"New" for this purpose means that it does not form part of the "state of the art" according to s.2 (1) of the Act and
s.2 (2) helpfully defines the "state of the art" as
"all matter (whether a product, a process, information about either, or anything else) which has at
any time before the priority date of that invention been made available to the public (whether in the
United Kingdom or elsewhere) by written or oral description, by use or in any other way."
Actually there is quite a bit more to s. 2 than that but we don't want to complicate the picture, do we.
If it is found that someone has already made the invention for which a patent has been sought or in many cases
granted them the invention is said to have been "anticipated." In deciding whether an invention has been
anticipated it is necessary to consider whether the patent would have been infringed had the earlier patent been
made after the patent in suit. In General Tire & Rubber Company v Firestone Tyre & Rubber Company
Limited, [1972] RPC 457, the Court of Appeal said:
"If the prior inventor's publication contains a clear description of, or clear instructions to do or
make, something that would infringe the patentee's claim if carried out after the grant of the
patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is
to say, it will have been anticipated. The prior inventor, however, and the patentee may have
approached the same device from different starting points and may for this reason, or it may be for
other reasons, have so described their devices that it cannot be immediately discerned from a
reading of the language which they have respectively used that they have discovered in truth the
same device; but if carrying out the directions contained in the prior inventor's publication will
inevitably result in something being made or done which, if the patentee's patent were valid, would
constitute an infringement of the patentee's claim, this circumstance demonstrates that the
patentee's claim has in fact been anticipated"
Lack of Inventive Step
The "state of the art" is also important when it comes to defining "an inventive step". S.3 (1) provides:
"An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having
regard to any matter which forms part of the state of the art by virtue only of section 2 (2) above ..............."
This provision introduces the "person skilled in the art", No, not Katherine Jenkins though she is indeed very
skilful, very arty and wears lovely dresses (see my rave about her in"Once in Preston Guild" 8 Sep 2012 IP North
West). More typically the "person skilled in the art" is some old buffer in the relevant industry who doesn't have
an inventive bone in his body.. In this case the person skilled in the art was someone specializing in glass
partitions with experience of glass partition installations and the products used to secure glass sheets.
Now it is one thing to get a patent but quite another thing to keep it, The first thing that happens when a patentee
complains of patent infringement is to look for reasons why the patent may not be valid. Lack of an inventive step
(obviousness) and lack of novelty (anticipation) usually come to mind. That leads to a trawl of the world's patent
offices and technical literature to find something like the invention that preceded the application for the patent. It
is usually conducted with considerably more zeal and resources than the examiner who granted the application in
the first place.
Insufficiency
In the Inventor's Bargain 21 Dec 2008 JD Supra I described the bargain that the public makes with inventors: If
an inventor or other owner of an invention teaches the public how to make or use a product or process that did

15. 14
not exist before then that owner will be entitled to a monopoly of the invention for up to 20 years.
The document in which the invention is described is known as "the specification" and s.14 (2) (b) requires it to
contain "a description of the invention, a claim or claims and any drawing referred to in the description or any
claim". S.14 (3) of the Patents Act 1977 requires the specification to disclose the invention " in a manner which
is clear enough and complete enough for the invention to be performed by a person skilled in the art.".
If the specification does not disclose the invention clearly enough and completely enough for it to be performed
by a person skilled in the art. then the patent may be revoked under s.72 (1) (c). Failure to disclose the invention
in such a manner is known as "insufficiency".
Added Matter
S.14 (2) (b) is important when it comes to understanding the concept of "added matter" because s.72 (1) (d)
provides that an invention may be revoked if the matter disclosed in the specification of the patent extends
beyond that disclosed in the application for the patent. In Bonzel v Intervention Ltd [1991] R.P.C. 553 Mr. Justice
Aldous said at page 574:
"The decision as to whether there was an extension of disclosure must be made on a comparison
of the two documents read through the eyes of a skilled addressee. The task of the Court is
threefold:
(a) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and
implicitly in the application.
(b) To do the same in respect of the patent as granted.
(c) To compare the two disclosures and decide whether any subject matter relevant to the
invention has been added whether by deletion or addition.
The comparison is strict in the sense that subject matter will be added unless such matter is clearly
and unambiguously disclosed in the application either explicitly or implicitly."
The difficulty arises because the specification of the invention in a patent application is not usually the same as
the specification of the invention in the granted patent. In the process in which the Intellectual Property Office
decides whether an application for an invention meets the conditions for the grant of a patent known as
"prosecution", the applicant or his or her patent attorney may change the wording of the specification to meet the
objections of the Intellectual Property Office or some other difficulty. The applicant can claim less than he or she
had originally applied for or express his or her claim in different words but he or she cannot claim more. If he or
she does ask for more then, as they were for Oliver Twist, the consequences can be nasty. Maybe not as nasty
as the ire of Mr. Bumble but still pretty bad.
.
Judgment
The judge held that the patent was valid and that it had been infringed.
Isaac
Lizzanmo claimed that US patent application number US20040200167 A1 by Eric Isaac and others ("Isaac") had
anticipated the patent.
This was an application for a patent for an extruded connecting profile the abstract of which was as follows:
"An extruded connecting profile for two panels having peripheral edges includes a first frame
element having a front side and an opposite rear side, the front side being shaped for engaging a
peripheral edge of a first panel of the two panels. A second frame element is also provided having
a front side and an opposite rear side the front side being shaped for engaging a peripheral edge
of a second panel of the two panels. An elastic structure extending between the first and second

16. 15
frame elements is co-extruded with the first and second frame elements and is comprised of a
material having a higher elasticity than the material of the first and second frame elements."
Fig 1 showed the panel when not in use:
Fig 2 when engaged between two panes of glass:
:
Construction of the Patent
In order to decide whether Isaac had anticipated the patent in accordance with the General Tire & Rubber test
and also whether the patent had been infringed for the purposes of the claim for the declaration of non-
infringement and the counterclaim, the judge had to construe the patent.
S.125 (1) of the Patents Act 1977 provides that:
"For the purposes of this Act an invention for a patent for which an application has been made or
for which a patent has been granted shall, unless the context otherwise requires, be taken to be
that specified in a claim of the specification of the application or patent, as the case may be, as
interpreted by the description and any drawings contained in that specification, and the extent of
the protection conferred by a patent or application for a patent shall be determined accordingly."
It is therefore necessary to construe the claims by reference to the specifications and drawings. S.125 (3) gives
the following further guidance:
"The Protocol on the Interpretation of Article 69 of the European Patent Convention(which
Article contains a provision corresponding to subsection (1) above) shall, as for the time being in
force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article."
Thus, patent claims have to be interpreted in accordance with the following Protocol:
"Article 1
General principles
Article 69 should not be interpreted as meaning that the extent of the protection conferred by a
European patent is to be understood as that defined by the strict, literal meaning of the wording
used in the claims, the description and drawings being employed only for the purpose of resolving
an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a
guideline and that the actual protection conferred may extend to what, from a consideration of the
description and drawings by a person skilled in the art, the patent proprietor has contemplated. On
the contrary, it is to be interpreted as defining a position between these extremes which combines
a fair protection for the patent proprietor with a reasonable degree of legal certainty for third
parties.

17. 16
Article 2
Equivalents
For the purpose of determining the extent of protection conferred by a European patent, due
account shall be taken of any element which is equivalent to an element specified in the claims."
Guidance on the application of s.125 (1) as interpreted in accordance with the Protocol has been provided by the
House of Lords in Kirin-Amgen Inc and others v Hoechst Marion Roussel Ltd and others [2005] RPC 9, [2004]
UKHL 46, [2005] 1 All ER 667, (2005) 28(7) IPD 28049, [2005] RPC 169 and the Court of Appeal in Virgin
Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd[2009] EWCA Civ 1062, [2010] RPC 8. "The key point"
that His Honour identified at paragraph [38] of his judgment "is that construction is concerned with what a skilled
person would understand the author to be using the words to mean."
Applying those principles the judge construed each of the claims of the patent. His findings are to be found
between paragraphs [38] and [61] of his judgment.
Novelty
The judge found two differences between Isaac and the invention as construed above::
 the materials from which the frame was made; and
 the shape.
His reasoning appears between paragraphs [97] and [99]. These were enough to put Isaac outside any of the
claims. As none of the claims would have been infringed by Isaac it followed that the invention had not been
anticipated by that application and that the patented invention was thus "new".
Infringement
On the other hand he found that those claims were broad enough to cover Lizzano's product. Lizzanno had
argued that there were differences between its product and the patent in suit. He rejected that argument
between paragraphs [66] and [78].
Obviousness
In Pozzoli Spa v BDMO SA and another [2007] BusLR D117, [2007] EWCA Civ 588, [2007] FSR 37 had provided
the following guidance for determining whether an invention lacked an inventive step:
(1) (a) Identify the notional person skilled in the art;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and
the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps
which would have been obvious to the person skilled in the art or do they require any degree of invention?
As I mentioned above, the person skilled in the art in this case was "someone specializing in glass partitions with
experience of glass partition installations and the products used to secure glass sheets" rather than Katherine
Jenkins. The common general knowledge of such a person included sealing partition joints with silicon and dry
joints summarized in paragraphs [4] to [10]. There was also a joint for metal surfaces called Unilock MS3000
which is shown in the following photo:

18. 17
The judge held that that also formed part of the common general knowledge of persons skilled in the art and that
it worked very similarly to the patent. Lizzanno argued that if was part of the common general knowledge of
persons skilled in the art and that the use of a similar joint to bind panes of glass would have been obvious.
Indeed, Lizzanno's expert said that he would have done just that.
Judge Birss QC dealt with that point as follows at paragraph [111]::
"Sometimes when one asks the question – if it was obvious why was it not done before – the
answer is because the relevant item of prior art, although part of the state of the art, was not well
known to the skilled people working in the relevant field at the time. However in this case that
answer cannot be given in relation to Unilock because it was part of the common general
knowledge. I am not satisfied that there is a good answer to this question in this case. Glass to
glass partitions with silicone joints or H joints had been in use for a good number of years before
2005. Since the Unilock gasket was part of the skilled person's common general knowledge, if the
invention had been obvious over Unilock then it would have been made years beforehand. The fact
that similar gaskets were well known in draught excluders and other contexts does not help. When
Mr Clasby explained in answer to Ms Jamal's question that as a designer he looked at everything I
am sure he was correctly and fairly explaining what he, as a creative and dare I say it inventive,
designer of partitioning systems actually does. But I do not believe it is the activity of the notional,
uninventive person skilled in the art. I find that claim 1 is not obvious over the Unilock gasket."
So there you have it. It is not enough for a clever chap like Lizzanno's expert to have thought of this invention. It
was whether it would have been obvious to the uninventive geezer known as "the person skilled in the art". In
this case, His Honour held that the use of something like the Unilock MS3000 would not have occurred to the
person skilled in the art. Thus the invention was not obvious and involved an inventive step.
Other Points
The judge rejected the arguments on insufficiency between paragraphs [112] and [134] and added matter
between [82] and [89]. As the arguments on invalidity failed the patent was upheld.
Comment
This case shows the operation of the Patents County Court at its best. The case was argued on 12 Feb 2013 and
one day was enough for complex arguments on validity and infringement and cross examination of two
witnesses. The judge and the two advocates are to be congratulated. As I said above, I will be using this case to
introduce patent law in my talk on 26 June 213 for which there are still some tickets which you can book here, If
you don't want to go to my talk you are still welcome to give me a ring on 020 7404 5252 or fill out my contact
form to discuss the case or patent law generally. You can also follow me on .Facebook, Linkedin, twitter or Xing.