Patentable inventions

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1.-(1) A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say -
  • (a) the invention is new;
  • (b) it involves an inventive step;
  • (c) it is capable of industrial application;
  • (d) the grant of a patent for it is not excluded by subsections (2) and (3) or section 4A[1] below;
and references in this Act to a patentable invention shall be construed accordingly.

(2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of –
  • (a) a discovery, scientific theory or mathematical method;
  • (b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
  • (c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
  • (d) the presentation of information;
but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.

(3) A patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality.

(4) For the purposes of subsection (3) above exploitation shall not be regarded as contrary to public policy or morality only because it is prohibited by any law in force in the United Kingdom or any part of it.

(5) The Secretary of State may by order vary the provisions of subsection (2) above for the purpose of maintaining them in conformity with developments in science and technology; and no such order shall be made unless a draft of the order has been laid before, and approved by resolution of, each House of Parliament.

Notes:
Manual of Patent Practice

Interpretation:
s130(7): s1(1) to 1(4) are to have the same effect as Articles 52(1) to (3) EPC. The courts' recommended approach goes further than this, as for example stated by Jacob LJ in Aerotel / Macrossan:

  • "Although s.1(2) pointlessly uses somewhat different wording from that of the EPC no-one suggests that it has any different meaning. So we, like the parties before us, work directly from the source" (paragraph 6).

Definition of "invention":
Genentech Inc.'s Patent [1989] R.P.C. 147, 264 (Mustill L.J.):
  • "You cannot invent water, although you certainly can invent ways in which it may be distilled or synthesised".

Biogen v Medeva [1997] RPC 1, 42 (Lord Hoffmann):
  • "This is obviously right and in such a case it may seem pedantic to say that water fails the condition in paragraph (a) of section 1(1) because it is not new. Unfortunately, most cases which come before the courts are more difficult. Judges would therefore be well advised to put on one side their intuitive sense of what constitutes an invention until they have considered the questions of novelty, inventiveness and so forth".

CFPH's Application [2005] EWHC 1589 (Deputy Judge Peter Prescott QC):
  • "How, then, does the law define what is an ‘invention’? The answer is that nobody has ever come up with a satisfactory, all-embracing definition and I do not suppose anybody will".

EPO Boards of Appeal decisions are persuasive, but not binding on English courts.

Patentable subject matter:
Lux Traffic Controls v Pike Signals [1993] RPC 107 (per Aldous J):
  • "something more than excluded matter is required to enable an invention to be patented. That something extra is a technical contribution to the art"
  • "s. 1(2) of the Act comprises a non-exhaustive catalogue of matters or things which are not patentable. Although not specifically mentioned, I believe a method of controlling traffic as such is not patentable, whether or not it can be said to be a scheme for doing business"

Macrossan's Application [2006] EWHC 705 (Ch)– automated production of legally compliant documents for establishing a company; substance of the invention is a computer program (para 33); new approach after CFPH etc.

The Court of Appeal judgment of Aerotel v Telco [2006] EWCA 1371, on 27 October 2006 endorsed the new approach in the form of a four step test (suggested by the Patent Office), which was used by the UK Patent Office as from 3 November 2006 (see practice notice), the test being:
  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

The relevance of the fourth step, which tended to be used as a 'backstop' by the IPO, was reviewed by the Court of Appeal again in Symbian's Application, [2008] EWCA Civ 1066, after the IPO had refused Symbian's application relating to a computer program for addressing dynamic link libraries. The IPO appealed against their decision being overturned in the Patents Court (Symbian's Application, [2008] EWHC 518 (Pat)). In the Court of Appeal, Lord Neuberger considered (at para37) that the right starting point was the decision of the EPO technical board in Vicom, T208/84, and confirmed that the previous binding decisions of the Court of Appeal, in Merrill Lynch, Gale & Fujitsu should not be departed from. At paras 49-52,

  • "In deciding whether the Application reveals a "technical" contribution, it seems to us that the most reliable guidance is to be found in the Board's analysis in Vicom and the two IBM Corp. decisions, and in what this court said in Merrill Lynch and Gale. Those cases involve a consistent analysis, which should therefore be followed unless there is a very strong reason not to do so. As explained above, although they use the same language, some of the subsequent decisions of the Board suggest a rather different analysis but they are mutually inconsistent and have been doubted in Aerotel. Of the subsequent decisions of this court, Fujitsu suggests the same analysis on the face of it, but, in truth, it may represent a departure in the opposite direction to the subsequent decisions of the Board, and Aerotel itself is not in point on this central issue.
  • The fact that "the boundary line between what is and what is not a technical [contribution]" is imprecise (as Nicholls LJ said in Gale, and as was echoed by Aldous LJ in Fujitsu) may be attributable to three causes, which are not mutually exclusive. First, national tribunals and the Board may still be at an intermediate stage of working out and identifying the precise location of that line; secondly, the problem may be inherent and never wholly satisfactorily soluble; thirdly, there are competing views based on different philosophies (the "open source movement represents one extreme, that of companies such as the present applicant, the other). The uncertainty is well demonstrated by the elusiveness of the meaning of "technical", the change of attitude manifested in the more recent decisions of the Board, the contrasting outcomes in Vicom and Fujitsu, and indeed the possible reconsideration of the correct view of computer program patents in the United States (see Professor John Duffy: Death of Google's Patents? Patently-O Patent Law Blog, July 21st, 2008).
  • These considerations reinforce our view that, at least in this court at this stage, we should try to follow previous authority, we should seek to steer a relatively unadventurous and uncontroversial course, and we should be particularly concerned to minimise complexity and uncertainty. These aims are not necessarily mutually consistent, but, on this occasion, we believe they are achievable, namely by following the analysis adopted by the Board in Vicom and the two IBM Corp. cases, and of the Court of Appeal in Merrill Lynch and Gale.
  • These considerations also manifest the difficulty of formulating a precise test for deciding whether a computer program is excluded from patentability, and suggest that it could be inappropriate to accept either of the rival simple propositions (summarised at [17] above) advanced by the parties here. Bearing in mind the multifarious features of computer programs and the unpredictable developments which will no doubt occur in the IT field, we believe that it would also be dangerous to suggest that there is a clear rule available to determine whether or not a program is excluded by art 52(2)(c). Each case must be determined by reference to its particular facts and features, bearing in mind the guidance given in the decisions mentioned in the previous paragraph."

The effect of this judgment was to cause the IPO to issue a revised practice notice. It is arguable as to whether IPO practice has in fact changed as a result of this, but the effect has apparently been to bring the fourth step into more prominence when carrying out the Aerotel test, as evidenced by more recent IPO decisions such as O/009/09 (eSpeed) and O/016/09 (Schlumberger Holdings).

Relevant Practice Notices issued by the UK-IPO:
Patents Act 1977: Patentability of games - now partially superceded by the new four step test
Patentable Subject Matter - after Aerotel v Telco
Patentable subject matter (7 February 2008) - after Symbian
Patent applications relating to methods of doing business
Patentability of computer programs

Relevant Patent Office Decisions:
Pre-Aerotel:
O/057/06 Sun Microsystems - s1(2)(c); technical effect of computer program (Java Bytecode) after CFPH.
O/226/06 Sony Electronics, Inc. - computer programs for P2P networking.
O/066/06 ARM Limited - software compiler

Post-Aerotel:
O/010/07 Sony UK Ltd - metadata structures for video files (IPKat commentary)
O/377/06 Nintendo - kart racing game (IPKat commentary)

In January 2007, nine decisions were issued by the UK Patent Office, all of which were assessed in accordance with the Office's views of the Aerotel/Macrossan 4-step test. A summary of these decisions is provided here (also printed in the March 2007 CIPA Journal).

Computer program product claims
According to the hearing officer in the UK-IPO decision WesternGeco Limited's Application (O/137/07), claims to computer program products were not permitted in the UK, in accordance with paragraph 14 of the practice notice on Patentable Subject Matter (see IPKat commentary). This apparently directly contradicted the EPO approach (see decision T 154/04), which was to allow computer program product claims in which the program performs a patentable method, i.e. one exhibiting a "further technical effect" (after T 1173/97).

The UK-IPO approach was confirmed by the decision in Astron Clinica Ltd & ors' Applications (O 185/07). Following Jacob LJ's judgment in Aerotel, the hearing officer stated:
  • "Although there is no direct guidance in Aerotel as to how program claims should be treated, the requirement to consider the scope of the monopoly in step one of the test, coupled with the direct comparison between the contribution and the excluded fields, suggests that such claims should be excluded. The Oneida judgment appears to confirm this" (para 32).

This approach was judged to be wrong on appeal to the High Court (Patents Court) in Astron Clinica [2008] EWHC 85 (Pat) (25 Jan 2008), in which Kitchin J determined that Aerotel/Macrossan did not specifically consider the situation of such claims, and the approach in the EPO decisions in T 1173/97 should be taken, i.e. if a computer-implemented method claim was allowable then a computer program product claim specifically directed to a program for carrying out that method was also allowable. Following this, the IPO issued a further practice notice confirming that claims to computer programs, where the program claim made a reference to an allowable method claim, would be allowed.
  1. ^ "or section 4A" inserted by Schedule 2, part 1 of the Patents Act 2004, as commenced by The Patents Act 2004 (Commencement No. 4 and Transitional Provisions) Order SI 2007 No. 3396 (from 13 December 2007).