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Patent Office not Playing

Written by Christina King on 20 June 2007

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A patent application submitted to the UK Intellectual Property Office entitled “A Gaming Device
Having a Progressive Award Funded through Skill, Strategy, or Risk Dependent Gaming Event”, has been refused on the basis that it does not meet the requirements for patentability.

The specific reason for its refusal is that it was viewed to fall within the excluded fields set out in s1(2) of the Patent Act, in particular s1(2)(c) being “a scheme, rule or method for …
playing a game …”

The approach referred to in determining whether an application falls within the excluded fields stems from the Court of Appeal decision in Aerotel Ltd v Telco Holdings Ltd and Macrossan’s Application [2006] which set out the following 4 steps:

“a) Properly construe the claim.

b) Identify the actual contribution (or, the alleged contribution will do at the application stage)

c) Ask whether it falls solely within the excluded subject matter.

d) Check whether the actual or alleged contribution is actually technical in nature.”

Step four is only necessary if the invention which is the subject of the application passes the first three steps.

In respect of the third requirement the Hearing Office stated that “the operation set out in the formulation is concerned with the way gambling games are played and the way awards are deployed, to make the games more attractive and compelling for players. The invention therefore appears to be excluded because it relates to a scheme rule or method for playing a game. If it may be argued that the invention relates to the strategic arrangement of games and awards rather than to a game as such then it might more properly be excluded as a scheme, rule or method for doing business, but it seems to me that it falls quite clearly within one or the other, or both of these exclusions.”

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