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Thursday, 22 May 2008

That Aerotel patent again -- has it fallen?

A little bird has told the IPKat that the famously controversial Aerotel patent for a telephone system in the UK (see earlier posts here, here , here and here) was revoked earlier this week. Rumour has it that the patent was considered to fall within the non-patentable subject matter under Article 52 of the European Patent Convention and, for good measure, also to have been lacking in inventive step.

Right: the IPKat is all ears ...

Not having seen any corroborative evidence, the Kat wonders if his readers can provide any further detail -- preferably traceable to a reliable source.

11 comments:

MediumFry said...

http://www.mayerbrown.com/news/article.asp?id=4565&nid=5

This seems relevant.

Gerontius said...

run a search for "Aerotel Wavecrest" and you'll get this link at the top:

http://www.mayerbrown.com/news/article.asp?id=4565&nid=5

Which I'm guessing is a reliable source...

Now just have to wait for BAILII to upload the judgment.

Jeremy said...

Thanks, Gerontius and Mediumfry! I ran a search for 'Aerotel' and 'patent' just before I posted - and got nothing of relevance at all.

Anonymous said...

The Aerotel EP application was published as EP1346304.

If you Go into epoline's register plus service (one hell of a URL)
and searh for EP1346304 you'll get the prosecution history of this file.

It looks like a nasty search opinion - but no examination report yet (i.e. has not been rejected yet).

EPOlINE LINK:

http://www.epoline.org/portal/public/!ut/p/kcxml/04_Sj9SPykssy0xPLMnMz0vM0Y_QjzKLN4i3dAHJgFjGpvqRqCKOcAFfj_zcVKBwpDmQ7xmo760foF-QGxpRnu6oCAB5BFBb/delta/base64xml/L3dJdyEvd0ZNQUFzQUMvNElVRS82XzBfOUc!

Anonymous said...

EP1346304 is Macrossan's European patent application, not Aerotel's UK patent which is GB2171877.

Gobhicks said...

Fascinating, for a patent that expired two years two years ago:

REGISTER ENTRY FOR GB2171877

Form 1 Application No GB8600691.3 filing date 13.01.1986

Priorities claimed:
13.01.1985 in Israel - doc: 74048
10.11.1985 in Israel - doc: 76993

Title TELEPHONE SYSTEM

Applicant/Proprietor
ZVI KAMIL, King David Boulevard 14, Tel Aviv, Israel [ADP No. 01147479001]

Inventor
ZVI KAMIL, King David Boulevard 14, Tel Aviv, Israel [ADP No. 01147479001]

Classified to
H4K
H04M

Address for Service
MARKS & CLERK, 57-60 Lincoln's Inn Fields, LONDON, WC2A 3LS, United
Kingdom [ADP No. 00000018001]

Publication No GB2171877 dated 03.09.1986

Examination requested 26.02.1987

Patent Granted with effect from 21.12.1988 (Section 25(1)) with title
TELEPHONE SYSTEM

________________________________________________________________________________

28.04.1999 Application under Section 32 filed on 26.04.1999

20.05.1999 AEROTEL LTD, Incorporated in Israel, 5 Hazoref Street, Holon 58856,
Israel [ADP No. 07140601002]
registered as Applicant/Proprietor in place of
ZVI KAMIL, King David Boulevard 14, Tel Aviv, Israel
[ADP No. 01147479001]
by virtue of deed of assignment dated 12.04.1999. Certified copy
filed on GB2171877

04.01.2005 Notification of change of Address For Service address of
MARKS & CLERK, 57-60 Lincoln's Inn Fields, LONDON, WC2A 3LS, United
Kingdom [ADP No. 00000018001]
to
MARKS & CLERK, 90 Long Acre, LONDON, WC2E 9RA, United Kingdom
[ADP No. 00000018001]
dated 20.12.2004. Written notification filed on GB2400961

01.07.2005 Counterclaim for revocation lodged at the Patents Court on 15 June
2005 (PAT05011)

11.01.2006 Patent expired on 12.01.2006

**** END OF REGISTER ENTRY ****

John Cooper said...

The simple fact is that this decision is based on very relevant evidence not considered in Aerotel v Telco. Key points:

* Aerotel network architecture (para 68 of judgement) identical to prior art (common general knowledge) WATS network architecture (para 94). Both
required user to input ID code, validated by the 'special exchange'
(Aerotel)/"WATS line share equipment" (WATS) before connecting calling party to called party. Only difference was that WATS was a post-payment system (user has an account with service provider and is billed after the event) and Aerotel was pre-payment (user buys credit in advance).

* Pre-payment and post-payment systems were both common general knowledge and immediately obvious commercial alternatives. No technical difficulty adapting WATS for pre-payment ? obvious possibility ? claims 1 (&2) and 9
(&10) obvious over WATS.

* Matsuda prior art reference essentially similar to WATS? claims obvious over Matsuda also, and also over prior used BT AccountCall system and CGK PBXs.

* The courts in Aerotel/Telco knew nothing of any of this, and so believed that a network architecture including Aerotel's special exchange was novel in itself. This was key to the finding of non-exclusion.

* Judged against the relevant prior art/CGK, which includes the network architecture previously believed to have been novel,Aerotel's only contribution was the idea of using pre-payment instead of post-payment in that context. This idea and its implementation consist entirely of
excluded subject matter - business method and computer program.

Anonymous said...

Some interesting spin in the Mayer Brown press release, given that the patent was revoked on different and much more relevant prior art than previously considered:

"Leading international law firm Mayer Brown has successfully argued a landmark patent case, successfully overturning a Court of Appeal decision in the process- something only achieved by one or two lawyers each year."

Different case, different facts, on first read no ground breaking priciples established - what exactly have they "overturned"?

Gerontius said...

I didn't want to comment on the spin in the press release at first, but will do so now I've seen the judgment:

http://www.bailii.org/ew/cases/EWHC/Patents/2008/B4.html

I agree with the anon that they're really trying to beef up their achievement. If the Aerotel patent was going to fall, it was going to fall on prior art.

Just goes to prove a point I've made before - it is inappropriate for UK(I)PO or the EPO to rely solely on excluded subject matter objections without sufficient recourse to the prior art. How can you really determine the contribution (or the technical problem) unless you know what the knowledge of the skilled man was at the time?

Too many decisions have reasoning involving "I don't think this is what the invention is really doing, I rather think it's doing this sort of thing", the "this sort of thing" being a bit generalised and vague and non-technical sounding, so it must be excluded. On the other hand, if you're more precise and say: this prior art has problem X, the invention solves problem X, therefore solving problem X is the contribution, then you've managed to get through the hardest part of the A/M test (what is the contribution?) without too much philosophising. The question of whether solving problem X is a contribution that is excluded or not should then be relatively straightforward.

Anonymous said...

It is inappropriate to rely solely on excluded subject matter objections only if the claims contain technical features of the invention.

In this case the application was not finally revoked because prior art was found for the excluded payment scheme. The newly found prior art related to the technical features.

So I don't see how this case proves your (Gobhicks') point.

(I suppose what you mean is that patent offices should not rely solely on excluded subject matter objections if the claimed invention is in fact not fully excluded. That's a different point though.)

I do agree however that A/M appears to presuppose that the closest prior art is available. (I'm aware it can be applied without it, but if the outcome is "not excluded" that's non-conclusive.)

Anonymous said...

Ouch, I think I just wrote Gobhicks where I should have written gerontius. My apologies!

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