Re: [Patents] No swpat has ever been upheld in a UK court ?

[James Heald <j.heald@ucl.ac.uk>]

Steve Probert wrote:
> I think you must be referring to Section 91(1)(c) of the Patents Act. 
> However, the wording of this section of the Act is not quite as
> presented in your email. Section 91(1)(c) says "Judicial notice shall be
> taken of .... any decision of, or expression of opinion by, the relevant
> convention court on any question arising under in connection with the
> relevant convention".
>
> This clearly includes the EPO TBA decisions, and equally clearly (by
> virtue of section 130(7)) covers article 52 EPC and its UK equivalent.
> However, "judicial notice" does not necessarily mean that EPO TBA
> decisions are treated as though they were UK case law. It is a complex
> issue; there is a lot of caselaw on the point.
>
> Regards,
>
> Stephen Probert

For example, the UK Office continues to reject the EPO doctrine from 
"Pension Benefits System".

It has also taken a consistently harder view than the EPO of the 
restrictions against "business methods" and "methods for performing 
mental acts".

For example, it is very much harder to get applications for innovations 
in the area of automatic translation, grammar checking etc through the 
UK Office than through Munich.

With regard to improved performance in the implementation of 
mathematical methods, the UK Office is pinned by the decision in "Gale's 
  Application", whereas the EPO isn't.

Of course, a new directive would largely set aside existing case law.

So it is not clear for how long the UK Office would be able to continue 
to reject applications on the basis of the "Gale's Application" result 
if the current Council text were to go through.