November 2011 Issue

UK High Court Revisits Excluded Subject Matter with Some Promise for Applicants


UK patent law excludes patenting of certain subject matter, even if the conditions of novelty, inventive step, and industrial applicability are otherwise met.  This part of UK law mirrors that of the European Patent Convention and states that patents shall not be granted for inventions comprising, among other things, computer programs, mathematical methods, mental acts, or business methods, “as such.”  It is the “as such” language that has challenged legal minds in the UK and European Patent Office (EPO) since the law was enacted in the late 1970s.  The presence of one of these excluded categories in a claim is not determinative.  It is necessary to look at the claim as a whole to decide whether or not the invention falls within any of the excluded categories.

The UKIPO and UK courts are required to follow the decisions of the EPO on issues of excluded subject matter.  Issues arose when the UK courts were asked for a decision regarding two applications that appeared to fall in the excluded categories.1  When the UK courts reviewed the EPO decisions, they found discrepancies making it difficult to establish an overriding principle to direct the courts.  As a result, the UK Court of Appeal derived a four-part test for determining whether or not an invention should be refused as excluded subject matter: (1) properly construe the claim; (2) identify the actual contribution; (3) ask whether it falls solely within the excluded subject matter; and (4) check whether the contribution is actually technical in nature.  The UKIPO adopted the four-part test, resulting in the UKIPO using a different standard than the EPO when considering excluded subject matter.

The EPO considers the claim to fall outside the exclusion as long as the claim includes something other than excluded subject matter.  Therefore, in the EPO, as long as something physical exists in a computer program claim, such as a carrier, the exclusion does not apply.  However, under the EPO’s analysis, excluded subject matter cannot establish an inventive step because the EPO does not consider excluded subject matter as contributing to the technical nature of the invention.  Consequently, the EPO routinely refuses claims to improvements in computer-implemented systems as excluded subject matter on the grounds that the only contribution was the improvement in the computer program or mental-act aspect of the invention.

The UKIPO approach focuses on the contribution of the claimed invention as opposed to the words of the claim.  This approach considers the contribution of the claimed invention to the stock of human knowledge.  For example, the contribution of a claim to a new computer program on a carrier is only the new computer program, so the exclusion applies.  This UKIPO practice has been strict so far.

The recent decision of the UK High Court in Halliburton v. Comptroller [2011] EWHC 2508 (Pat), suggests that the UKIPO applies the test too strictly.  This decision considered the exclusion of inventions relating to mental acts.  The Court held that this exclusion must be interpreted narrowly and only found where it is possible to perform the steps of a claim purely mentally, i.e., without the need to perform any nonmental act.  This confirms that a claim that includes something that cannot be performed mentally cannot be refused on this excluded ground alone.

In the Halliburton case, the invention related to a method for designing drill bits for use in oil drilling.  The UKIPO routinely held design as a mental act.  In view of its decision regarding the narrow scope of the mental-act exclusion, however, the Court considered the other excluded categories.  The Court held that the contribution of the invention was a computer-implemented method of bit design, even though the invention was found entirely in the software that controls the design process.  The Court found that circumstance will indicate whether or not the invention is patentable.  The Court provided an example: “when the task carried out by the computer program is not itself something within the excluded categories then it is likely [but not necessarily] that the technical contribution has been revealed and thus the invention is patentable.”  This holding suggests that the UKIPO’s approach is too strict relative to the contribution of computer-implemented inventions and that the task of the computer program should receive more weight.

The UKIPO may appeal this decision, so this may not be the last word on this issue.  However, claim drafters seeking protection in the UK should consider this ruling, making sure to incorporate nonmental acts into the claim.  This should be sufficient for patentability as long as the Halliburton decision remains good law.  But claim drafters should stay apprised of any action in this case that might reimpose the UKIPO’s stricter requirements on excluded subject matter.

1 Aerotel v. Telco / Macrossan’s Application [2007] 


Martin Hyden has over 25 years of experience as a UK and European patent attorney.  He has also passed the USPTO qualifying examination.  He has worked in both private practice and in-house in the UK, USA, Japan, and France, and is now based in Finnegan’s Brussels office, where his practice is focused primarily on patent prosecution and oppositions and appeals from patent office decisions, including representation at hearings and oral proceedings.  He currently has a number of clients for whom he handles prosecution at the UKIPO for computer-implemented inventions in which the question of excluded subject matter is commonly raised.