Neuberger (excluded subject matter): this is 'a topic which is inherently difficult and on which there is apparently inconsistent authority domestically and in the EPO
Aerotel Ltd v Telco Holdings Ltd
LJ Jacobs: no evident underlying purpose behind provisions to guide their construction. The categories were there, but there was nothing to tell you one way or the other whether they should be read broadly or narrowly. They seem to be a disparate group. Some groups are the result of compromises but we have a miscellaneous ragbag with no clear rationale
DUNS Licensing Associates
Technical Board of Appeal. Mere fact that A.52 list of items - not exclusive, indicates the existence of a exclusionary criterion exclusive to all those items.
Re Halliburton Energy's Patent
Judge Birss: at the heart of the law there is a consistent principle, that the inventor must make a contribution to the art. The contribution must be technical in nature.
VICOM/Computer Related Invention
Generally speaking - invention which would be patentable in accordance with conventional patentability criteria, should not be excluded from protection by the mere fact that for its implementation, modern technical means in the form of a computer program are used. Decisive is what technical contribution the invention as defined in the claim when considered as a whole makes to the known art. Claim to a method of digitally processing images, and to an apparatus. There is no approach to suggest that mere mention of excluded SM must kill the claim,, need something else. If you claim a computer program merely as this, is excluded, if in a machine not a computer program as such, look to technical contribution. Here, method was excluded but the apparatus was patentable.
It is not sufficient to look at the words of the claimed monopoly. The decision as to what was patentable depends upon substance not form. The critical question is whether the invention made a technical contribution... those discoveries and ideas which may have a technical aspect or make a technical contribution are... it is a concept at the heart of patent law. X ray defraction. Shine X-ray - detracts in a certain way depending on its internal structure, adopted VICOM - do not look at words of claim monopoly. Substance not form. Look at technical contribution. Comptroller said vague standard is problematic. PO does not know where it standards - difficult to know in practice.