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Re Gale court of appeal (civil division), unreported, 13 December 1990
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RE GALE COURT OF APPEAL (CIVIL DIVISION), Unreported, 13 December 1990 The Court of Appeal has restored a decision of the Principal Examiner in refusing to allow electronic circuitry, in the form of a read-only memory device, to proceed to grant. This reverses the judgement of Alders J in the patents court, which had held that Section 1(2) of the Patents Act 1977 did not preclude a claim to a ROM, since this could not be said to relate to the program, or the functional steps as such, which would otherwise be excluded from patentable subject matter by Section 1(2) - See report by R J Hart in [ 1 9 9 0 - 9 1 ] 2 CLSR 34. The courts argued that the Patents Act 1977 was introduced to give effect to the European Patent Convention. However, the Act did not merely enact the statutory provisions necessary for the Convention to take effect in this country. It also had a harmonisation objective. Accordingly, when construing Section 1 of the Act, the courts must have regard to the legislative intention with which those subsections were framed. This was to bring UK law as closely in line as possible with Article 52 of the European Patent Convention. Section 1(2) comprised a nonexhaustive catalogue of matters or things, starting with "a discovery" which, as such, could not be declared as inventions. But when applied to a product or process, capable of industrial application, the matter stood differently. In the context of a program for a computer, it was inappropriate, as Justice Aldous had done, to draw a distinction to a claim relating to a disc containing a program and a ROM with particular circuitry. The disc or ROM was no more than an artefact in which instructions were physically embedded - " I f the disc or ROM, considered as a disc or ROM, is in all respects conventional, a claim can no more be made for the disc or ROM incorporating those instructions than a claim for a patent could be made for a conventional compact disc on which a particular new piece of music is
being recorded... Likewise, with a disc or ROM which records or reproduces a new set of instructions, if those instructions are recorded on a conventional disc, or are stored in a ROM using conventional methods" the position was the same. To decide otherwise, said the court, would be to exhort form over substance. Nevertheless, the courts did not find their decision easy. Parker L J, for example, declared that, in the course of argument, it appeared to him, from time to time, that the contentions in favour of patentability should be accepted in preference to those against. The former derives support from dicta or decisions, both of courts in this country and of boards of appeal established under the European Patent Convention. However, in the final analysis, Section 1(2) could not be circumvented. Once it was accepted that neither a disc nor a computer, into whose memory a program had been inserted, could be patented, it must follow that a silicon chip, embodying the program in its circuitry, could not be patented either.
BRITISH BROADCASTING CORP v BRITISH SKY BROADCASTING LTD (formerly British Satellite Broadcasting Ltd), Chancery Division, The Times, 22 January 1991 The Chancery Division has held that no breach of copyright took place when British Satellite Broadcasting (BSB), now British Sky Broadcasting, used excerpts of World Cup matches. There was no dispute that the BBC were the lawful holders of the copyright in its World Cup broadcasts. BSB also accepted that the use it had made of those broadcasts had, prima facie, infringed the copyright. However, it relied, as a defence, on the fair dealing provisions of the Copyright Designs and Patents Act 1988, in particular Section 30(2). This laid down that fair dealing with a work, for the purpose of reporting current events, does not infringe any copyright in the work, provided that it is accompanied by a sufficient acknowledgement. For this reason, BSB denied that its use of the broadcasts was an infringement. In holding that BSB was entitled to show the footage that it did, the
court was keen to point out that no justification existed today for limiting the fair dealing defence so as to apply only to the reporting of current events in a general news program. Section 30(2) was designed by Parliament to erode that monopoly by permitting fair dealing with the copyright work for the purpose of reporting current events. There was no reason to think that anarchy or disorder in the broadcasting industry would follow if specialist news reports, as well as general news reports, were permitted to take advantage of a fair dealing defence.
Editor's Note At the end of February, the European Commission ruled that the operation of EuroSport - the transnational satellite TV channel was contrary to EC competition rules. This decision follows a complaint to the Commission by ScreenSport. The complaint was directed against an agreement by the EuroSport consortium - a group of members of the European Broadcasting Union, Sky Television and News International plc. The Commission found that the effect of this agreement was to limit and distort free competition. It brought together two potential competitors for sports programs, so they cooperated instead of competing, while at the same time denying access to programs for other satellite or cable services. The impact of this ruling is now being considered. R v WHITELEY, COURT OF APPEAL (Criminal Division), The Times, 6 February 1991 The Court of Appeal has upheld the conviction of a computer hacker, who was convicted of criminal damage, under the Criminal Damage Act 1971, after he tampered with files, to which he gained unauthorised access to through the Joint Academic Network (JAN). Using his Commodore Omega 1000 computer, he deleted and added files, put on messages, made sets of his own users and operated them for his own purposes, changed the passwords of authorised users (enabling himself to use the system as if he were they) whiie regularly
RE GALE COURT OF APPEAL (CIVIL DIVISION), Unreported, 13 December 1990 The Court of Appeal has restored a decision of the Principal Examiner in refusing to allow electronic circuitry, in the form of a read-only memory device, to proceed to grant. This reverses the judgement of Alders J in the patents court, which had held that Section 1(2) of the Patents Act 1977 did not preclude a claim to a ROM, since this could not be said to relate to the program, or the functional steps as such, which would otherwise be excluded from patentable subject matter by Section 1(2) - See report by R J Hart in [ 1 9 9 0 - 9 1 ] 2 CLSR 34. The courts argued that the Patents Act 1977 was introduced to give effect to the European Patent Convention. However, the Act did not merely enact the statutory provisions necessary for the Convention to take effect in this country. It also had a harmonisation objective. Accordingly, when construing Section 1 of the Act, the courts must have regard to the legislative intention with which those subsections were framed. This was to bring UK law as closely in line as possible with Article 52 of the European Patent Convention. Section 1(2) comprised a nonexhaustive catalogue of matters or things, starting with "a discovery" which, as such, could not be declared as inventions. But when applied to a product or process, capable of industrial application, the matter stood differently. In the context of a program for a computer, it was inappropriate, as Justice Aldous had done, to draw a distinction to a claim relating to a disc containing a program and a ROM with particular circuitry. The disc or ROM was no more than an artefact in which instructions were physically embedded - " I f the disc or ROM, considered as a disc or ROM, is in all respects conventional, a claim can no more be made for the disc or ROM incorporating those instructions than a claim for a patent could be made for a conventional compact disc on which a particular new piece of music is
being recorded... Likewise, with a disc or ROM which records or reproduces a new set of instructions, if those instructions are recorded on a conventional disc, or are stored in a ROM using conventional methods" the position was the same. To decide otherwise, said the court, would be to exhort form over substance. Nevertheless, the courts did not find their decision easy. Parker L J, for example, declared that, in the course of argument, it appeared to him, from time to time, that the contentions in favour of patentability should be accepted in preference to those against. The former derives support from dicta or decisions, both of courts in this country and of boards of appeal established under the European Patent Convention. However, in the final analysis, Section 1(2) could not be circumvented. Once it was accepted that neither a disc nor a computer, into whose memory a program had been inserted, could be patented, it must follow that a silicon chip, embodying the program in its circuitry, could not be patented either.
BRITISH BROADCASTING CORP v BRITISH SKY BROADCASTING LTD (formerly British Satellite Broadcasting Ltd), Chancery Division, The Times, 22 January 1991 The Chancery Division has held that no breach of copyright took place when British Satellite Broadcasting (BSB), now British Sky Broadcasting, used excerpts of World Cup matches. There was no dispute that the BBC were the lawful holders of the copyright in its World Cup broadcasts. BSB also accepted that the use it had made of those broadcasts had, prima facie, infringed the copyright. However, it relied, as a defence, on the fair dealing provisions of the Copyright Designs and Patents Act 1988, in particular Section 30(2). This laid down that fair dealing with a work, for the purpose of reporting current events, does not infringe any copyright in the work, provided that it is accompanied by a sufficient acknowledgement. For this reason, BSB denied that its use of the broadcasts was an infringement. In holding that BSB was entitled to show the footage that it did, the
court was keen to point out that no justification existed today for limiting the fair dealing defence so as to apply only to the reporting of current events in a general news program. Section 30(2) was designed by Parliament to erode that monopoly by permitting fair dealing with the copyright work for the purpose of reporting current events. There was no reason to think that anarchy or disorder in the broadcasting industry would follow if specialist news reports, as well as general news reports, were permitted to take advantage of a fair dealing defence.
Editor's Note At the end of February, the European Commission ruled that the operation of EuroSport - the transnational satellite TV channel was contrary to EC competition rules. This decision follows a complaint to the Commission by ScreenSport. The complaint was directed against an agreement by the EuroSport consortium - a group of members of the European Broadcasting Union, Sky Television and News International plc. The Commission found that the effect of this agreement was to limit and distort free competition. It brought together two potential competitors for sports programs, so they cooperated instead of competing, while at the same time denying access to programs for other satellite or cable services. The impact of this ruling is now being considered. R v WHITELEY, COURT OF APPEAL (Criminal Division), The Times, 6 February 1991 The Court of Appeal has upheld the conviction of a computer hacker, who was convicted of criminal damage, under the Criminal Damage Act 1971, after he tampered with files, to which he gained unauthorised access to through the Joint Academic Network (JAN). Using his Commodore Omega 1000 computer, he deleted and added files, put on messages, made sets of his own users and operated them for his own purposes, changed the passwords of authorised users (enabling himself to use the system as if he were they) whiie regularly