Amanda MacNaughton is a JD candidate at Osgoode Hall Law School, and is currently enrolled in Professor Ikechi Mgbeoji’s Patents class, in Fall 2011. As part of the course requirements, students are asked to write a blog on a topic of their choice.
Halloween came early for those seeking computer related patents in the UK. The treat stems from a recent High Court decision, which ruled that examiners should take a narrow view of the mental act exclusion, broadening the types of computer related software eligible for patentability.
Under section 1 of the UK Patent Act 1977, a patent may only be granted if the invention is new; involves an inventive step; and is capable of industrial application. The Act also excludes the following (among other things) from the definition of invention: anything which consists of a discovery, scientific theory or mathematical method; a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever; a scheme, rule or method for performing a mental act, playing a game, or doing business, or a program for a computer; and the presentation of information.
In the High Court case Halliburton, a world leader in products and services for the oil and gas sector, challenged the assessment of four patent applications rejected by the UK Intellectual Property Office (IPO). Since the four applications were based on similar issues, the court focused solely on one pertaining to a method of designing a drill bit using computer finite element analysis to determine the optimal drilling parameters. The final result of this invention is outputted to a resource (such as a computer printer) and does not include a mechanical step.
The IPO argued that the invention was a method of performing a mental act and that UK law interpreted this exclusion broadly encompassing any method that is theoretically capable of being performed in the mind of a person. Furthermore, the invention was excluded from patentability as a computer program, because the technical details listed in the claim about how the computer simulation is performed cannot amount to distinguishing features for the purpose of patentability of computer programs under UK law, and also as a mathematical method.
In the end, the court determined that the invention is patentable despite using computer software. Judge Birss QC clarified that recent jurisprudence has clearly established that an invention that makes a contribution to the art, which is technical in nature, is patentable even if it is implemented entirely on a computer and even if the way it works is entirely as a result of a computer program operating on that computer. With respect to the breadth of the mental act exclusion, in paragraph 63 of the decision Judge Birss QC stated “the correct scope of the mental act exclusion is a narrow one. Its purpose is to make sure that patent claims cannot be performed by purely mental means and that is all. The exclusion will not apply if there are appropriate non-mental limitations in the claim.” Thus, allowing the appeal and reaffirming that computer implemented inventions are indeed patentable if they perform a function.
Following the decision, the IPO has now posted a practice notice informing applicants that examiners will now be taking a narrow view of the mental act exclusion. Such that, future claims relating to computer implemented inventions will not be automatically be considered excluded from patentability as a mental act.
The decision has many implications for patent applications in the UK. First, the decision may bring the IPO’s position on excluded subject matter closer to that of the European Patent Office despite using different tests. More broadly, the decision and updated guidance may bring the scope of patentability closer to that of other jurisdictions (like US, Japan, and Canada) where computer implemented software patents are more widely available. The judgment may also result in clearer patent application claims. Judge Birss QC remarked in the decision that patent applicants may have avoided referring to computers in their claims for fear of rejection, making claims more complicated than required. The decision will hopefully result in greater comfort in the use of computer related claims and improve efficiency in the approval process. Overall, the IPO policy shift helps clarify the metal act exclusion and could result in a greater number of computer related patent approvals.
