Trade Secrets vs. Patents

This important decision means that there is now a new method by which patent examiners will assess whether or not an invention is patentable. The decision is especially relevant to those wishing to patent 'business methods' or 'computer programs'.

A patent is effectively a legal monopoly for a process or product. When granted a patent, the patent holder will be exclusively allowed to exploit a patented product or process for the life of the patent. When a patent is applied for, the patent examiners must ensure that the product or process which is the subject matter of the patent application meets the test for patentability.

Background: The issue arising in Aerotel Ltd v Telco Holdings Ltd [2006] relates to the patent of a business method. Aerotel believed that Telco had infringed their patent, and sued them. Telco counterclaimed to have Aerotel's patent revoked. Aerotel had their patent revoked by summary judgment on 3 May 2006.

In Macrossan's Application [2006], they applied for a UK patent for a computer program. In the initial application, the UK Patent Office took the view that the subject matter of the patent was unpatentable.

Step One: Properly construe the claim. This new first step is designed to make the examiners establish what monopoly would be created were the patent to be granted.

Step Two: Identify the actual contribution.

Step Three: Ask whether it falls solely within the excluded subject matter. There is a list of matters which will not be afforded patent protection under Article 52(2) of the EPC. If the invention in question falls:-

o If it is held by the patent examiners that it is not technical in nature, then the fourth step would fail.

The Application Of The New Test In The Cases: The Aerotel Appeal: The patent application consisted of two halves.

The Macrossan Appeal: The court held that the patent application was for both a business method and a computer program. The contribution concerns solely excluded subject matter. It is for both a business method and a computer program.

Conclusion: If all four parts of the test are passed, the invention in question is likely to be afforded patent protection.

Intellectual Property - Ground Breaking Decision - Patents - Business Methods - Computer Programs

The Coca-Cola story