CII patenting at the UKIPO and EPO

However—and perhaps most significantly— the decision has confirmed that programmed computers are patentable in the UK. It also highlighted that when assessing the patentability of computer-implemented inventions (CIIs), UK Intellectual Property Office (UKIPO) and European Patent Office (EPO) practice is different, although it is hoped that in both jurisdictions the same conclusion would be reached, albeit with different reasoning.

Patentability

The UK Patents Act and the European Patent Convention (EPC) both require that there must be an “invention” and that for something to be patentable, the invention should be both new and non-obvious. There is no definition of “invention”, but inventions must be “capable of industrial application”, which means that they are technical rather than abstract.

Additionally, specific items are excluded from patentability. These include computer programs, methods for performing mental acts and mathematical methods. These are excluded only if the invention relates to an excluded item “as such”.

The EPO has been much clearer than the UKIPO (and the English courts) in deeming that patent claims drafted to relate to programmed computers and to storage media carrying a program are acceptable subject matter for patents. For many years it has been accepted that for a CII to be patentable, the contribution that the invention makes to the prior art has to have a “technical effect” or display a “technical character”.

The Halliburton decision

In October 2011, the English High Court case Halliburton v Comptroller reviewed the law relating to CIIs and the judge, His Honour Judge Colin Birss, sitting as a judge of the English High Court, confirmed that: “A computer programmed to perform a task which makes a contribution to the art which is technical in nature is a patentable invention and may be claimed as such.”

He accepted that there was a difference between the way English courts, and the UKIPO, approach patentability when compared to the EPO. However, he noted that there was also a difference between the way that English courts and the EPO approach inventive step, and he hoped that the differences would combine in such a way that the same facts in each jurisdiction would result in the same conclusion.

The mental act exclusion

Although Halliburton is particularly helpful in its review of the patentability of CIIs, its immediate effect has been to alter the manner in which the UKIPO treats the mental act exclusion. The case was an appeal from the UKIPO Comptroller General with respect to Halliburton’s patent applications for the design of roller cone drill bits that are used to drill oil wells.

The invention as described and claimed used a computer simulation of the interaction of the drill bit with the material being drilled, so that the design features of the drill bit could be optimised. The claim did not include a manufacturing step, but it did include steps involving making various calculations and making comparisons between two designs.

The Halliburton applications had been refused by the UKIPO on the grounds that the method fell within the mental act exclusion, but the UKIPO used a wide approach to the exclusion.

The wide interpretation of the exclusion, rejected by the judge in the Halliburton case, considers a method to be an excluded mental act if it is capable of being performed mentally regardless of whether, as claimed, it is actually performed mentally. All computers that are programmed to carry out calculations would therefore be excluded because calculations can be performed mentally.

In the Halliburton case, Judge Birss said: “In my judgment 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.”

As the claimed method was a simulation process that was carried out on a computer, the mental act exclusion was, in fact, irrelevant. This is because the claimed method could not be performed by purely mental means.

Furthermore, the computer program exclusion did not bite as the method related to drill bit design. Therefore, the conclusion was that the claims met the requirements for patentability.

The PKTWO decision

Shortly after the decision in Halliburton was published, it was quoted with approval by Mr Judge Christopher Floyd in the PKTWO case. On the general question of the patentability of programmed computers, Judge Floyd suggested that all cases relating to the patentability of programmed computers were highly fact-sensitive.

In Protecting Kids the World Over (PKTWO) Limited v Comptroller, the UKIPO rejected PKTWO’s UK patent application as excluded because the claimed invention related to a computer program and to a method of performing a mental act as such.

However, by the time of the hearing, the UKIPO Comptroller General, following Halliburton, no longer relied on the mental act exclusion. The invention as claimed related to an analysis engine that monitors communications on a computer and, in particular, data packets, so that it can assign a score to the data packet depending on the expressions that the engine finds in them.

An aggregate alert level is assigned to the packet and a notification is sent to a parent by email or SMS message. The parent can then send a remote response command to, for example, shut down the computer on which the data packets are being employed. This is to ensure that children, for example, are not exposed to inappropriate content.

In this case, the claimed invention incorporated the generation of an alarm notification that was more rapid and reliable than in the prior art. If this notification had been, for example, to display information on a screen, it would not be a relevant technical process.

Judge Floyd concluded: “The contribution of … (the claim) … does not simply produce a different display, or merely rely on the output of the computer and its effect on the user. The effect here, viewed as a whole, is an improved monitoring of the content of electronic communications. The monitoring is said to be technically superior to that produced by the prior art. That seems to me to have the necessary characteristics of a technical contribution outside the computer itself.”

Patentability of CIIs: UK versus EPO

In the UK, the contribution that a CII makes to the art is still considered when assessing patentability. When considering a computer program, it is necessary to ascertain what task the program, or programmed computer, actually performs.

In a May 2010 case, the Enlarged Board of Appeal of the EPO considered the patentability of CIIs at the EPO. It decreed that the law had moved on since the Vicom case in 1987. In this case it had been decided that a patentable invention, according to conventional patentability criteria, should not be excluded from protection simply because it was implemented using “modern technical means in the form of a computer program”. What was decisive was the technical contribution that the invention as defined in the claims made over the known art. This was known as the “contribution approach”.

In the May 2010 case, it was made clear that whether subject matter is excluded is always to be decided regardless of the prior art. This means that the contribution approach has been discarded. As a result the EPO decrees that a programmed computer, and a storage medium carrying a program, both have the necessary technical characteristics to be patentable.

Differing approaches at the EPO and in the UK to something as fundamental as patentability are unhelpful, especially as substantive law is supposed to be harmonised. Fortunately, for most practical purposes the end result will be the same, although any arguments that a patent attorney makes during a case will depend on the jurisdiction.