Binding, but not to be followed blindly: some fresh air for Aerotel

Virtual reality has evolved from a paradox to a well-understood expression in colloquial English, but that wasn't much comfort for Really Virtual. In Really Virtual Co Ltd v UK Intellectual Property Office [2012] EWHC 1086 (Ch), John Baldwin QC, sitting as a Deputy Judge of the Patents Court, England and Wales, on 2 May.

"One of the great advantages of the abacus over
the computer", said Brownie, "apart from the fact
that it doesn't crash, is that it always enables
me to retain my user anonymity ..."
Really Virtual sought to patent an invention which consisted of computer software that affected the manner in which a user accessed services on the internet: it provided for the user retaining anonymity from the provider of the services, while the user was at the same time offered services tailored to his personal requirements. It was acknowledged that anonymous web access through the user of a proxy server or an anonymiser service was already known to the prior art -- but Really Virtual's invention differed from the prior art method of using a proxy server because it employed a broker node, which maintained the anonymity of the user by clustering.  The only thing standing in the way of the patent -- apart from possible prior art issues -- was Article 52 of the European Patent Convention:
'(1) European patents shall be granted for any inventions in all fields of technology which are susceptible of industrial application, which are new and which involve an inventive step. 
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:…(c) schemes, rules or methods for performing mental acts, playing games or doing business and programs for computers; 
(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.' 
The UK Intellectual Property Office Hearing Officer rejected the application, concluding that it consisted of a 'program for a such' and did not meet the patentability criteria of Article 52, inorporated into the UK legislation by s.1(2) of the Patents Act 1977. If that wasn't enough, the invention disclosed in the application consisted of a 'scheme, rule or method for ...doing such.'

Really Virtual wasn't happy with this and appealed: the Hearing Officer was wrong to conclude that the invention was excluded under Article 52 because it wasn't technical enough.  He should have looked at how the invention worked: on this basis, if it used a technique in a particular context, there was then a technical effect.  The 'how' in this instance was the technique of clustering, or putting user characteristics into groups, which made the invention patentable. The authorities of Aerotel v Telco Holdings Ltd (see katpost here) and Symbian Ltd v Comptroller-General of Patents (katpost here) were solemnly invoked [if you're really interested, one of the all-time great katposts, by our former and much-admired colleague David Pearce -- a.k.a. the legendary Tufty -- should be perused here].

John Baldwin QC dismissed the appeal.

First, there was the question of what do about all those earlier decisions. After reviewing the chaotic state of case law on the subject, the Deputy Judge concluded that whether an invention is excluded from patentability under Article 52 is not readily amenable to systematic analysis; it's a question of impression, based on a comparative analysis of the facts in earlier cases and the application under review.

The Deputy Judge agreed that the decisive factor was what technical contribution the invention, as defined in the claim when considered as a whole, made to the known art.  Aerotel was a Court of Appeal decision which was binding -- but should not be followed blindly  -- and its application should take into account the guidance given in the authorities identified in Symbian.

Having dealt with the difficult bit (the law), now it was time to apply it to the facts. In doing so, it did appear that the Hearing Officer had got it right.  Since anonymous web access using a proxy server or anonymiser service was conceded to be known, the bit in the patent specification that was said to be new was the provision of tailored services to the anonymised user. This was a nice thing to do, but it couldn't be said to be technical.

How virtual reality works here
Virtuous reality here

A katpat goes to LexisNexis for noting this case, which has yet to make the BAILII website -- and possibly never will. 
Binding, but not to be followed blindly: some fresh air for Aerotel Binding, but not to be followed blindly: some fresh air for Aerotel Reviewed by Jeremy on Thursday, May 17, 2012 Rating: 5


  1. Thank you for the kind comment. It is a pity this decision is not freely available. Does anyone know why certain decisions do not appear on BAILII? Is there anything stopping the IPKat or anyone else from reproducing the judgment in full so we can all read it?

  2. I don't know why some decisions don't get posted on BAILII, but I can confirm that it's the IPKat's policy to post judgments, or at least links to them, wherever they are available. In many cases they have been supplied by counsel or solicitors -- to whom I'm always grateful.

  3. What I am wondering then in this case is whose copyright is preventing the judgment from being more widely distributed?

  4. It's not that simple, David. Some judgments are given extemporaneously and there's no official transcript at all. Other times the judge may want to hold the judgment back till he has had a chance to check it, or to redact [polite word for delete] information that is relevant for the decision as between the parties but should not be given wider circulation, such as commercially or technically confidential data and information belonging to third parties).

    On the whole, the IP judges in England & Wales have been pretty good about making their decisions available -- which is why we tend to notice very quickly those situations in which this doesn't happen.

  5. The decision might end up on the IPSUM database one day. The decison of the patent office which was under appeal is at (long link)


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