Handling excluded subject matter objections at the UK IPO
There is a general perception that the UK IPO takes a stricter view on excluded subject matter than other patent offices, particularly when it comes to assessing computer implemented inventions and mathematical methods. Last year the UK IPO conducted 56 ex-parte hearings on excluded subject-matter. Only five of these were decided in favour of the patentee. Three of the successful five were handled by Slingsby Partners (a 100% success rate for our firm). Whilst it is true that the UKIPO applies its own test for assessing whether an invention relates to excluded subject matter, in our experience that test can be used to the benefit of the applicant in many situations, providing it is applied correctly.
Under section 1(2) of the Patents Act, “anything which consists of … a mathematical method … or a program for a computer” is not considered to be an invention to the extent that a patent or patent application relates to that thing as such. The UK IPO use a 4-step test to assess excluded subject matter, which is referred to as the “Aerotel/Macrossan test”.
The test comprises the steps:
(1) Properly construe the claim;
(2) identify the actual contribution;
(3) ask whether it falls solely within the excluded subject matter;
(4) check whether the actual or alleged contribution is actually technical in nature.
So, if the invention provides a technical contribution, the exclusion may be avoided. In terms of computer implemented inventions, broadly speaking there are two ways in which an invention may be considered to provide a technical contribution:
(i) A technical contribution may be provided outside of the computer which implements the invention, e.g. the computer may receive real-world data and provide an output which is technical in character (e.g. it may output an image to be displayed, it may
transmit a signal to another device, or it may cause an action to be taken which has a technical effect on a process which is carried on outside the computer, etc.).
(ii) A technical contribution may be provided inside a computer which implements the invention, e.g. the invention may make the computer a better computer, e.g. in the sense of running more efficiently and effectively as a computer.
Our follow-up article, “Excluded subject matter at the UK IPO: tips for succeeding in an ex-parte hearing” explains how our firm successfully applied these tests to persuade the hearing officer that a proper application of the law on excluded subject matter led to a conclusion that our client’s patent applications were allowable.
