The patent is more than 20 years old and has therefore expired.
But litigation has continued over alleged infringements while the
patent was in force. Since the patent has been found to be invalid,
the infringement claims fall.
Patent attorneys, lawyers, judges and businesses have often had
trouble determining exactly what inventions are and are not
eligible for patent protection, particularly where the invention
involves software. A 2006 ruling in the Court of Appeal was
designed to settle the issue by clarifying the rules that patent
examiners and judges should apply to assess whether inventions are
for patentable subject matter.
The ruling concerned two unrelated cases that were heard
together, that of Neal Macrossan, who was denied a patent, and that
of Aerotel, which settled out of court before the Court of Appeal
hearing.
The Aerotel patent at the centre of that case has now been
revoked. The High Court has decided the patent is obvious in the
light of prior inventions, and the ground it covers is excluded by
the rule governing what a patent can cover.
When heard together, the Aerotel/Macrossan cases were important
because the hearings produced rulings from the Court of Appeal
which clarified what was 'excluded matter'.
The European Patent Convention (EPC), reflected in UK law in the
Patents Act, says that there is some material which cannot be
patented. Section 52 of the EPC says that "European patents shall
be granted for any inventions which are susceptible of industrial
application, which are new and which involve an inventive
step."
It goes on to list things that shall not be regarded as
inventions:
- discoveries, scientific theories and mathematical methods;
- aesthetic creations;
- schemes, rules and methods for performing mental acts, playing
games or doing business, and programs for computers;
- presentations of information.
The Aerotel/Macrossan rulings clarified how these exclusions
should operate, by introducing a four-step test:
- properly construe the claim
- identify the actual contribution
- ask whether it falls solely within the excluded subject
matter
- check whether the actual or alleged contribution is actually
technical in nature.
The UK Intellectual Property Office, then the UK Patents Office,
said that the rulings would form the basis of future practice. "The
Office takes the view that Aerotel/Macrossan must be treated as a
definitive statement of how the law on patentable subject matter is
now to be applied in the UK," it said within weeks of the
judgment.
The Court of Appeal allowed Aerotel a patent for its telephone
system after a lower court had revoked the patent in granting a
summary judgment for a company called Telco. The Court of Appeal
said the claimed invention amounted to a new combination or
arrangement of hardware and restored Aerotel's patent. The High
Court has now conducted a full hearing on the patent in a different
case and the patent has been revoked once more.
Israeli company Aerotel, which Judge Fysh QC said existed to
license and litigate the patent, sued pre-paid calling card company
WaveCrest for infringement of the patent. WaveCrest
counter-claimed, arguing that the patent was not valid.
"Mr Iain Purvis QC (who appeared with Ms Kathryn Pickard for the
defendants) pointed out that the courts in the Telco case (unlike
this court) had to accept any disputed facts in Aerotel's favour,"
said the Court's ruling. "Moreover, they were not made aware of
alternative ways of making a call which were part of the state of
the art at the priority date and which also differed from the
'conventional' way of making a call referred to by the Court of
Appeal. Had the Court of Appeal he submitted, been aware of the
alternatives to 'conventional' calling at the priority date, it
would not have reached the conclusion it did."
Aerotel's patent dated from 1985 and covered what it said was a
new way of making pre-paid phone calls from any telephone. The High
Court found that the idea behind the patent was not new, in fact it
was obvious to anyone involved in the industry.
It also found that it was not an inventive step when compared
with other innovations in the telecoms field in the 1980s. The
Court heard that British Telecom had a similar system in place,
called AccountCall, at the time.
"I am of the view that there is no degree of invention required
whatever in relation either to an initial decision to arrange for
pre-payment rather than post- payment for the telephone calls made
by AccountCall or to the implementation of such a decision," said
Judge Fysh. "The Patent is therefore in my judgment also invalid on
the ground of obviousness in the light of the use of BT
AccountCall."
The Court also found that the invention covered by the patent
was ineligible for one because it fell within the exclusion
outlined in the EPC.
"The election to solicit pre-pay clientele is unarguably a
'business method'," wrote Judge Fysh. "The consequence in 'computer
terms' forms no part of the invention; it is done with appropriate
software. Moreover, even if it did form part of the invention, it
would therefore only involve the construction of appropriate
computer programs and would also be excluded from
patentability."
