Patents Act 1977: Patentability of games

Paragraph 4 of this Notice has been superseded by the Practice Notice entitled Patents Act 1977: Patentable subject matter.

1. This notice announces a change to practice at the Office in examining patent applications for inventions relating to games. It follows the judgment of Pumfrey J in Shopalotto.com Limited's Patent Application [2005] EWHC 2416 (Pat).

2. The Comptroller has previously considered the patentability of games in light of Official Ruling 1926(A) (1926) 43 RPC Appendix page i. Under this ruling, an apparatus for playing a game comprising one or more playing pieces and a board marked in a particular manner substantially as shown in drawings accompanying the specification, with the playing piece(s) being moved in accordance with specified rules, was considered to meet the requirements of an invention, subject to any other objections such as lack of novelty.

3. In Shopalotto, Pumfrey J said in paragraph 4:

"The Official Ruling cannot provide a valid guide to the interpretation of the 1977 Act, the more so since the 1977 Act is, as I have indicated, to be interpreted having regard to the provisions of the European Patent Convention".

The Comptroller will therefore no longer use the Official Ruling 1926(A) when assessing the patentability of games.

4. The Shopalotto case concerned a computer game. The approach Pumfrey J used in this context appears to be the same as that set out in the Comptroller's Practice Notice of 29 July 2005 "Examining for Patentability". For example, in paragraph 9, Pumfrey J concludes:

"If there is a contribution to the art outside the list of excluded matter, the invention is patentable, but if the only contribution to the art lies in excluded subject matter, it is not patentable"

He makes a similar point in paragraph 10, where he also stresses that the contribution must be considered as a matter of substance. Accordingly the Comptroller will now apply this approach to games as well.

Enquiries

5. Any enquiries about this notice should be made to:

Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Tel: +44(0)1633 813677
Fax: +44(0)1633 814491

SN Dennehey
Director of Patents
25 November 2005, amended 2 November 2006