Section 1: Patentability
Source: gov.uk (2025-04-01)

Sections (1.01 - 1.58) last updated: October 2025.

Section 1: Patentable inventions

1.01

The Patents Act 1977 sets out for the first time to codify what is meant by a patentable invention. Previous legislation up to and including the 1949 Act had merely repeated the stipulation, originally set out in the Statute of Monopolies of 1623, that a patent may be granted only for a manner of new manufacture.

1.02

[Deleted]

1.03

A patent may only be granted if the invention meets the above conditions. The fact that an invention meets the requirements of s.1(1) does not however mean that a patent must be granted, since there are other requirements, as set out in later sections, which must also be complied with.

1.04

s.125(1) is also relevant

“Invention” in this context means that which is specified in a claim. Although the term has a meaning in ordinary speech, in Biogen Inc v Medeva plc [1997] RPC 1 (https://doi.org/10.1093/rpc/1997rpc1)) Lord Hoffmann declined to attempt to define the term more closely, saying that judges “would 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”. It is possible for a specification to contain claims which relate to patentable inventions as well as claims which define inventions which are not patentable or matters which are not inventions. In such a case amendment is necessary, since a patent should be granted only when each claim defines a patentable invention. A claim will generally be held to be bad if anything falling within its scope is not patentable.

1.05

The term “a patentable invention” is defined by setting out four conditions, all of which must be satisfied in order for an invention to qualify for the grant of a patent. Since they are expressed as positive requirements the onus is upon an applicant to demonstrate compliance when faced with a reasonable challenge. The manner in which each of the conditions (a), (b) and (c) is to be assessed is set forth in ss.2, 3 & 4 respectively. The fourth condition involves certain things which, for purposes of the Act, are not to be regarded as inventions (see 1.07 to 1.51.7) (#ref1-07) and certain inventions for which a patent will not be granted see 1.52 - 1.57 (#ref1-52)

1.06

s.130(7)-s.91 is also relevant

The tests set out in s.1(1) and further elaborated in s.1(2)-(4) and ss.2-4 are so framed as to have, as nearly as practicable, the same effects in the UK as the corresponding provisions of the EPC; these are Articles 52-57. (More particularly, EPC aa.52(1) to (3) and 53 correspond to s.1(1) to (4)). Hence, although not binding on the Office, decisions on patentability given by EPO Boards of Appeal are of persuasive value in interpreting ss.1-4 (see 0.07-09 (https://draft-origin.publishing.service.gov.uk/guidance/manual-of-patent-practice-mopp/manual-of-patent-practice-introduction/#ref0-07), 1.09 (#ref1-09) and 130.30-33 (/guidance/manual-of-patent-practice-mopp/section-130-interpretation/#ref130-30)).

Excluded subject matter

1.07

Section 1(2) of the Act defines certain categories of “things which are not to be regarded as inventions”, as Jacob LJ puts it in paragraph 12 of Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7 (http://www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html) (Aerotel/Macrossan). The normal meaning of “invention” is therefore qualified by the removal of these categories. Jacob LJ also considered that there is no overarching principle behind the inclusion of these particular categories, and no guidance on whether they are to be construed broadly or restrictively. In particular, they noted that, as the exclusions are not expressed as exceptions, the general principle that exceptions should be interpreted restrictively does not apply to them.

1.08

The current practice in dealing with excluded matter under s. 1(2) is derived from the judgment of the Court of Appeal in Aerotel/Macrossan (see 1.09.1 (#ref1-09-1), 1.18 (#ref1-18), 1.20 (#ref1-20), 1.33-1.33.1 (#ref1-33), 1.34.1 (#i)). This judgment considered all previous authorities on the matter, and – having been endorsed in numerous subsequent decisions – is to be treated as a definitive statement of how the law on patentable subject matter is to be applied in the UK.

Relationship with the EPC and decisions of the EPO

1.09

As discussed above (see 1.06) (#ref1-06) decisions of the EPO Boards of Appeal are of persuasive value; furthermore where the EPO Boards of Appeal have formed a settled view of European patent law, this will generally be followed by the UK courts (see 0.08 (/guidance/manual-of-patent-practice-mopp/manual-of-patent-practice-introduction/#ref0-08)) and 130.30-31 (/guidance/manual-of-patent-practice-mopp/section-130-interpretation/#ref130-30)).

1.09.1

However in Aerotel/Macrossan (http://rpc.oxfordjournals.org/content/124/4/117.abstract), the Court of Appeal analysed EPO Boards of Appeal decisions on the question of excluded matter and concluded that practice was not yet sufficiently settled to enable the Court to depart from precedent UK case-law (see 1.11). This was reiterated in Symbian Ltd’s Application [2009] RPC 1 (https://doi.org/10.1093/rpc/rcn033) (Symbian) (see paragraph 46) and HTC v Apple (see 1.09.2 (#k)), and it remains the case until the UK courts conclude otherwise.

1.09.2

In an attempt to address whether case-law concerning excluded matter is settled, and derive uniformity of application of European patent law, the President of the EPO referred four questions on the patentability of computer programs to the Enlarged Board of Appeal in October 2008 (G3/08) (PDF, 247KB) (http://www.epo.org/law-practice/case-law-appeals/pdf/g080003ex1.pdf). However, the Board concluded that the referral was inadmissible because the decisions referred to were not considered to be “divergent”, and declined to answer the questions beyond determining their admissibility. This led to the Court of Appeal reaffirming its view that practice was not yet settled in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 (http://www.bailii.org/ew/cases/EWCA/Civ/2013/451.html) at paragraph 44. The assessment of whether an invention relates to an excluded category as such should therefore continue to follow the test set out in the decision in Aerotel/Macrossan.

1.09.3

As the Office is bound by the judgments in Aerotel/Macrossan and HTC v Apple (http://www.bailii.org/ew/cases/EWCA/Civ/2013/451.html), it cannot choose to depart from the Aerotel/Macrossan test in order to adopt EPO practice even if that practice becomes settled – such a departure can only be made by the courts. This is emphasised in Dell Products LP’s Application (BL O/321/10) (https://www.ipo.gov.uk/pro-types/pro-patent/pro-p-os/p-challenge-decision-results-bl?BL_Number=O/321/10), amongst others.

1.09.4

However, as Birss J stated in paragraph 9 of Lenovo (Singapore) PTE Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat) (https://www.bailii.org/ew/cases/EWHC/Patents/2020/1706.html), “although in methodological terms the approach in the UK and the approach in the EPO may look different, in practice they reach the same result, at least usually.” This reinforces what was previously expressed at paragraph 11 of Symbian Ltd’s Application [2009] RPC 1 (https://doi.org/10.1093/rpc/rcn033), that “as a matter of broad principle, it seems to us that the approaches in […] the great majority of cases in this jurisdiction and in the EPO, are, on a fair analysis, capable of reconciliation”. Furthermore in HTC v Apple (http://www.bailii.org/ew/cases/EWCA/Civ/2013/451.html), Kitchin LJ, at paragraph 41, stated that “…in terms of result […] it seems to me that whichever route is followed, one ought to end up at the same destination”. The result of EPO Boards of Appeal decisions on cases with similar facts may therefore be persuasive, even though the approach taken by the EPO should not itself be followed (see 130.31 (/guidance/manual-of-patent-practice-mopp/section-130-interpretation/#ref130-31)). A number of older decisions of the EPO Boards of Appeal – including Vicom Systems Inc T0208/84 [1987], IBM/Data processing network T0006/83 [1990] and IBM/Computer-related invention T0115/85 [1990] – were used to inform the Aerotel test, as well as other later guidance such as the AT&T signposts (see from 1.36 (#ref1-36)).

General Principles

Balance of probabilities

1.10

The Court of Appeal, in paragraph 5 of Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7 (http://rpc.oxfordjournals.org/content/124/4/117.abstract) (Aerotel/Macrossan), made it clear that assessing excluded matter involves a question of law which should be decided during prosecution of the patent application. The position is therefore assessed fully by patent examiners before grant, and objections are not to be dropped simply because the applicant asserts that the invention relates to non-excluded subject matter. The question of excluded matter is decided on the balance of probabilities, taking into account all of the evidence available. However, as it is a question of law, it is not something on which applicants are entitled to the benefit of the doubt, in the way they would be in relation to questions of pure fact (such as the date of a particular disclosure, or the scope of the common general knowledge).

Using past decisions

1.11

The Office is bound to follow the decisions of the UK courts, per the English common law doctrine of binding precedent, which states that courts and tribunals must abide by the decisions of higher courts. Therefore, the Office must follow the interpretation of the Act and the practice set out in such judgments, and apply the legal principles arrived at by the judges in those cases.

1.12

However, examiners must exercise caution in relying on the specific facts of any court judgment as support for an objection, as each case must be judged on its merits, and the facts of the individual case are certain to be different. As Pumfrey J stated in paragraph 186 of Research In Motion UK Ltd. v Inpro Licensing SARL [2006] EWHC 70 (Pat) (http://www.bailii.org/ew/cases/EWHC/Patents/2006/70.html), “The test is a case-by-case test, and little or no benefit is to be gained by drawing analogies with other cases decided on different facts in relation to different inventions.” Although the test being referenced was not the Aerotel test, the principle remains the same. Birss J, in paragraph 17 of Lantana v Comptroller-General of Patents [2013] EWHC 2673 (Pat) (http://www.bailii.org/ew/cases/EWHC/Patents/2013/2673.html), noted that “[s]imply because it is possible to construct a generalised category which includes both the claimed invention […] and a previous decision in which a claim was held to be patentable, does not help. It shows that such things can be patentable in some cases but does not show that the invention in this case is patentable.”

1.12.1

The Office is not bound to follow the practice of the EPO Boards of Appeal for the reasons detailed above (see 1.09.1) (#test)

1.12.2.

Hearing decisions issued by the Office are non-binding, but can be persuasive in establishing an argument.

Substance over form

1.13

When determining if an invention falls foul of the exclusions, it is critical that the examiner consider the substance of the invention rather than the form of claim provided, by looking beyond the strict literal wording of the claims. For example, when a claim is directed to a computer program, the examiner must look at what the computer program will do when run, as established in paragraph 49 of Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks [2008] EWHC 85 (http://www.bailii.org/ew/cases/EWHC/Patents/2008/85.html) RPC 14 (http://rpc.oxfordjournals.org/content/125/4/339).

1.14

If the substance of an invention falls within one of the excluded categories, however, then no form of claim will circumvent an objection. If a claim is directed to a computer, but the substance of the invention is a business method running on that computer, it will still be excluded. In paragraph 44 of Aerotel/Macrossan (http://www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html), Jacob LJ noted that “If an inventor claims a computer when programmed with his new program, it will not assist him if he alleges wrongly that he has invented the computer itself, even if he specifies all the detailed elements of a computer in his claim.”

1.15

It is not the nature of a single embodiment of an invention which is important when determining whether it is excluded, but the nature of the central idea or invention which is embodied in the claims. To determine this, the invention claimed should be assessed and construed as a whole to see whether it comprises an advance that lies in a non-excluded field. However, as Floyd J observed in paragraph 23 of Kapur v Comptroller-General of Patents [2008] EWHC 649 (Pat) (http://www.bailii.org/ew/cases/EWHC/Patents/2008/649.html), if there are embodiments of a claim that fall within excluded subject matter, the fact that the claim is wide enough to encompass embodiments that are not excluded under s. 1(2) will not be sufficient to save it. The exclusion “will still bite to the extent that excluded subject matter is claimed”.

1.15.1

In his judgment in Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks [2008], RPC 14 (https://www.bailii.org/ew/cases/EWHC/Patents/2008/85.html), Kitchin J. held (at paragraph 51) that in a case where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable, then, in principle, a claim to the program itself should also be allowable. However, they added that the program claim must be drawn to reflect the features of the invention which would ensure the patentability of the method which the program is intended to carry out when it is run. Thus, following the conclusions of Astron Clinica, claims to a computer program or a program on a carrier are allowable where corresponding method and apparatus claims (or notional such claims if none exist) are/would be allowable on application of the Aerotel/Macrossan test. (A claim to a computer program stored on a carrier such as a compact disc is sometimes referred to in the US as a Beauregard claim.) However, merely including claims to a program or a program on a carrier will not make an otherwise excluded invention patentable. As Fox LJ said in Merrill Lynch’s Application [1989] RPC 561 (https://doi.org/10.1093/rpc/1989rpc561) (page 569):“it cannot be permissible to patent an item excluded by section 1(2) under the guise of an article which contains that item - that is to say, in the case of a computer program, the patenting of a conventional computer containing that program. Something further is necessary.”

In Macrossan’s Patent Application [2006] EWHC 705 (Ch) (http://www.bailii.org/ew/cases/EWHC/Patents/2006/705.html), Mann J (at paragraph 42) rejected submissions by the applicant that adding a product step onto an otherwise excluded claim was enough to render it patentable. This was upheld by the Court of Appeal in Aerotel/Macrossan. Similarly, in Bloomberg LLP and Cappellini’s Applications [2007] EWHC 476 (Pat) (http://www.bailii.org/ew/cases/EWHC/Patents/2007/476.html), Pumfrey J stated (at paragraph 9) that “[a] claim to a programmed computer as amatter of substance is just a claim to the program on a kind of carrier. A program on a kind of carrier, which, if run, performs a business method adds nothing to the art that does not lie in excluded subject matter”.

Claims to a computer program for generating a system or for producing a product (for example claims of the form: ‘a computer program comprising computer-readable code for generating a system as claimed in X’ or ‘storage medium having encoded thereon code for making a system as claimed in Y’ or ‘machine readable medium having software thereon to produce the item of claim Z on a 3D printer’) may avoid exclusion if, following the guidance of Astron Clinica (http://www.bailii.org/ew/cases/EWHC/Patents/2008/85.html), the computer program would cause an otherwise patentable process to be performed when run. In any case, care should be taken to ensure that such claims comply with other sections of the act including clarity, support, and sufficiency see s14 (/guidance/manual-of-patent-practice-mopp/section-14-the-application).

Interaction between the exclusions

1.16

The contribution made by an invention does not need to fall solely within a single excluded category for the invention to be excluded. As stated in paragraph 34 of Raytheon Company v Comptroller General of Patents, Designs and Trade Marks [2007] EWHC 1230 (Pat) (http://www.bailii.org/ew/cases/EWHC/Patents/2007/1230.html) , where a contribution falls wholly within two or more exclusions, invention would still be excluded. In paragraph 27 of Symbian Ltd’s Application [2009] RPC 1 (https://doi.org/10.1093/rpc/rcn033), the Court of Appeal remarked obiter that one effect of the computer program exclusion is to prevent other excluded material becoming patentable merely by use of a computer in its implementation (although see 1.31 (#n) for the interaction with the mental act exclusion). Thus, for example, a business method implemented on a conventional computer system or network would be excluded as both a method for doing business and a computer program as such. Birss J expressed a similar view in paragraphs 32-36 of Halliburton Energy Services Inc’s Applications [2012] RPC 12 (https://doi.org/10.1093/rpc/rcs019).

Not an exhaustive list

1.17

The phrase “among other things” indicates that the list of excluded matters is not exhaustive (Gale’s Application [1991] RPC 305 (https://doi.org/10.1093/rpc/1991rpc305) at p. 324; Lux Traffic Controls Ltd v Pike Signals Ltd and Faronwise Ltd [1993] RPC 107 (https://doi.org/10.1093/rpc/1993rpc107) at p. 138; Chiron Corporation v Murex Diagnostics [1996] RPC 535 (https://doi.org/10.1093/rpc/1996rpc535) at p. 606). In Lux v Pike (https://doi.org/10.1093/rpc/1993rpc107) Aldous J observed that although not specifically listed, a method of controlling traffic as such is not patentable, whether or not it can be said to be a scheme for doing business. This suggests that the exclusion of section 1(2) may also apply to other matters which are essentially abstract or intellectual in nature, but which do not fall clearly into the list of excluded matters. Yet, to date, the UK Courts have not held any matter to be excluded as “among other things”.

1.17.1

Any matter which is wholly abstract or intellectual in nature is likely to fail step 3 of Aerotel as being a mental act as such and fail step 4 of Aerotel since it is not technical in nature. For example, in Kostuj’s Application (BL O/028/12) (https://www.ipo.gov.uk/pro-types/pro-patent/pro-p-os/o02812.pdf) the hearing officer decided that a method of developing a golf swing without a club was excluded as a mental act as such (on top of being a method of playing game as such and a method of doing business as such). The hearing officer went on to decide that even if the invention did not fall squarely within any one or combination of these excluded matters, then invention was very closely analogous to them so would be caught under the phrase “among other things”. Consideration may also be given to whether such abstract or intellectual matters are capable of industrial application as required by section 1(1)(c).

Relationship of excluded matter to novelty and inventive step

1.17.2

In Lantana v Comptroller-General of Patents [2014] EWCA Civ 1463 (http://www.bailii.org/ew/cases/EWCA/Civ/2014/1463.html) the Court of Appeal reiterated that the requirements of s.1(1) and s.1(2) are separate, and that claims to novel and inventive subject matter may still be excluded. In paragraph 19 of the judgment Arden LJ held: “I see no mandate in section 1 of the PA 77 for holding that it is sufficient that there is an inventive step. It is deliberate legislative policy to exclude certain matters from patentability even if they would otherwise be patentable”. This was reaffirmed in paragraph 70 by Kitchin LJ, who stated that “[t]here is no inconsistency between an acceptance that an invention […] is new and inventive and a finding that the contribution it makes falls solely within excluded subject matter”. The judge continued by remarking that “the former requires […] an assessment of whether it forms part of the state of the art or is merely an obvious step away from it”, while exclusion relates to assessing whether the contribution falls solely within excluded categories.

The Aerotel/Macrossan test

1.18

The Aerotel/Macrossan test (often referred to as the ‘Aerotel test’) is set out in paragraph 40 of the judgment in Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 2007 RPC 7 (http://rpc.oxfordjournals.org/content/124/4/117.abstract) (Aerotel/Macrossan). It provides a framework for the examiner to assess, and decide upon, the issue of excluded matter. As stated in 1.08 (#ref1-08), Aerotel/Macrossan is considered to be the definitive statement of how the law relating to excluded matter is to be applied. The Aerotel test is therefore the principal tool to be used when dealing with excluded matter cases, and encompasses all previous tests within it.

The test comprises four steps. In Comptroller-General of Patents, Designs and Trade Marks v Emotional Perception AI Ltd [2024] EWCA Civ 825 (https://caselaw.nationalarchives.gov.uk/ewca/civ/2024/825?query=%5B2024%5D+EWCA+Civ+825&from_date=None&to_date=None&party=&judge=), the Court of Appeal expressed (at [31]) that the four steps of the Aerotel test are:

(1) Properly construe the claim.

(2) Identify the actual contribution (although at the application stage this might have to be the alleged contribution).

(3) Ask whether it falls solely within the excluded matter.

(4) If the third step has not covered it, check whether the actual or alleged contribution is actually technical.

1.18.1

It was stated by Jacob LJ in paragraph 47 of Aerotel/Macrossan that the test is a re-formulation of, and is consistent with, the previous “technical effect approach with rider” test established in Merrill Lynch’s Application [1989] RPC 561 (https://doi.org/10.1093/rpc/1989rpc561) and followed by Gale’s Application [1991] RPC 305 (https://doi.org/10.1093/rpc/1991rpc305) and Fujitsu’s Application [1997] RPC 608 (https://doi.org/10.1093/rpc/1997rpc608). The Court considered it, in paragraph 48, to be “a structured and more helpful way of re-formulating the statutory test.” Therefore, as Kitchin LJ notes in paragraph 44 of HTC v Apple [2013] EWCA Civ 451 (http://www.bailii.org/ew/cases/EWCA/Civ/2013/451.html) the structured approach of the Aerotel test is followed in order to address whether the invention makes a technical contribution to the art, with the rider that novel or inventive purely excluded matter does not count as a “technical contribution”.

Step 1 – construing the claim

1.19

As the court stated in Aerotel/Macrossan (http://www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html), the examiner must first “decide what the monopoly is before going on to the question of whether it is excluded”. There are no special considerations with regard to claim construction; the normal principles apply (see 14.111-14.120 (/guidance/manual-of-patent-practice-mopp/section-14-the-application/#ref14-111), 125 (/guidance/manual-of-patent-practice-mopp/section-125-extent-of-invention/#ref125)) are applied. In construing that claim examiners should be mindful of all that falls within the scope of the claim since it is possible for a claim to encompass both an embodiment that makes a technical contribution and an embodiment that is excluded (see 1.15 ((#ref1-15)) in which case the claim will fall as being excluded.

Step 2 – identifying the contribution

1.20

Jacob LJ outlined the considerations to be applied when identifying the contribution made by the claims in paragraph 43 of Aerotel/Macrossan – the critical factors for the examiner to consider are emphasised:

The second step – identify the contribution - is said to be more problematical. How do you assess the contribution? Mr Birss submits the test is workable – it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended.

Paragraph 44 states that, at application stage, the contribution may be taken to be that alleged by the inventor, although this cannot be conclusive; as Jacob LJ states, “[i]n the end the test must be what contribution has actually been made, not what the inventor says they have made”. Additional guidance regarding the interpretation of this paragraph was provided in IGT/Acres Gaming Inc, Re [2008] EWHC 568 (Pat) (http://www.bailii.org/ew/cases/EWHC/Patents/2008/568.html) paragraphs 23-24, which states that the examiner is not bound to accept what the applicant says, and is entitled to determine whether the alleged contribution is known or obvious, typically by performing a search.

1.20.1

Therefore, knowledge of the prior art will play a role in assessing the contribution; as Lewison J noted in paragraph 8 of AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat) (http://www.bailii.org/ew/cases/EWHC/Patents/2009/343.html), the examiner should have “some notion of the state of the art”. This does not necessarily mean however that the contribution is defined by what is new and inventive in the claim (see 1.21) (#ref1-21). That proper consideration of the prior art can make a difference to the outcome is best illustrated by Aerotel Ltd v Wavecrest Group Enterprises Ltd & Ors [2008] EWHC 1180 (Pat) (http://www.bailii.org/ew/cases/EWHC/Patents/2008/1180.html). This case involved the same patent as Aerotel/Macrossan; however, Wavecrest was able to show that the contribution argued in the earlier case was known, by providing evidence that the ‘special exchange’ which formed the essential part of the new arrangement of hardware (see 1.34.1 (#ref1-34-1)) was actually within the common general knowledge. The Patents Court therefore reassessed the contribution and found that it related to how the special exchange was used and programmed, so that it fell solely within the business method and computer program exclusions.

1.20.2

When assessing the contribution, examiners may consider prior art falling in the section 2(3) field, following the judgment of the Patents Court in Nokia v Oppo [2023] EHWC 23 (Pat) (see § 278) (https://www.bailii.org/ew/cases/EWHC/Patents/2023/23.html).

1.20.3

A formal search is not required for the examiner to be able to assess the nature of the contribution. As stated by Birss J in paragraph 17 of Lenovo (Singapore) PTE Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat) (https://www.bailii.org/ew/cases/EWHC/Patents/2020/1706.html), “it cannot be formally necessary to conduct a prior art search before taking this sort of point [on excluded matter]. It would not be wrong to do that, but the Comptroller need not do so. Some cases may be such that no reference to prior art at all is needed to see that the subject matter is unpatentable and in that kind of case, the extra cost and trouble of a search would be wasted. Others, like this one, can be addressed based on prior art which the examiner was aware of without having to undertake a formal search.” Peter Prescott QC (sitting as a Deputy Judge) in CFPH LLC [2005] EWHC 1589 (Pat) (http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html) at paragraph 96 stated that examiners are “entitled to make use of their specialist knowledge” to identify the contribution and are not bound to rely on prior art searches. Pumfrey J stated in Shopalotto.com Ltd’s Application [2006] RPC 7 (https://doi.org/10.1093/rpc/2006rpc7) at paragraph 12 that certain features may be “so notorious that a formal search is neither necessary nor desirable”, and that examiners are “entitled to use common sense and experience” to make that determination. Examiners should therefore use their own judgement to determine whether to perform a search, and may accordingly use the provisions of section 17(5)(b) if appropriate (see 17.94-17.101 (/guidance/manual-of-patent-practice-mopp/section-17-search/#ref17-94))

What has been added to human knowledge

1.21

As Jacob LJ stated in Aerotel/Macrossan (http://www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html) this is the summation of what the contribution is, and all of the other factors (see xx-xxxx-xxxx) (#ref1-21) weigh in to making this determination. The starting point for that assessment is the claims. It may be helpful to consider what makes the invention novel (see 1.20.1 (#ref1-20-1)); however, it is then necessary to place that in its proper context and ensure that the effects of the invention are taken into account. It is not correct to eliminate everything in the claim that is known to arrive at that which is unknown, and then to conclude that the unknown part must be the contribution; i.e., as the Court of Appeal in Genentech [1989] RPC 205 (https://doi.org/10.1093/rpc/1989rpc205) put it, it is not the case that “an invention is unpatentable if the inventiveness was contributed only by matters excluded under section 1(2)”. This approach – which is sometimes referred to as “Falconer reasoning”, from its originator; or, less formally, “salami-slicing” – was expressly rejected by the Court of Appeal in that decision. Birss J, in Lenovo (Singapore) PTE Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat) (https://www.bailii.org/ew/cases/EWHC/Patents/2020/1706.html) at paragraph 16, summarised matters thus; “invention can lie in a new combination of old features and so, while identifying an individual feature as disclosed in prior art is a relevant thing to do, it will always be necessary to consider it in the context of the invention as a whole before reaching a conclusion.” In Lantana v Comptroller-General of Patents [2014] EWCA Civ 1463 (http://www.bailii.org/ew/cases/EWCA/Civ/2014/1463.html) paragraph 64, Kitchin LJ set out the importance of considering the proper context of an invention when assessing the contribution, accepting “[a] submission that it is the claim as a whole which must be considered when assessing the contribution which the invention has made, and that it is not permissible simply to cut the claim into pieces and then consider those pieces separately and without regard to the way they interact with each other”. However, at paragraph 65, Kitchin LJ qualified this by observing: “[n]evertheless, I also have no doubt that, approached in this way, it is the actual contribution to the art which the invention has made which must be considered.”

1.21.1

The courts have consistently found that, where claims recite standard hardware, such conventional apparatus does not form part of the contribution. This is often the case in computer program inventions – an application relating to a computer program cannot be saved simply by claiming conventional computer hardware programmed in a particular way. Jacob LJ remarked on this in paragraph 44 of Aerotel/Macrossan (http://www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html), and specifically rejected the use of standard hardware when determining the contribution of the Macrossan application in paragraph 73.

1.21.2

What constitutes a technical contribution can change over time. Therefore the view that, once a technical contribution is made, that same contribution will always be technical may not apply. In paragraph 16 of Lantana v Comptroller-General of Patents [2013] EWHC 2673 (Pat) (http://www.bailii.org/ew/cases/EWCA/Civ/2014/1463.html), Birss J addressed this point, noting that “[t]he fact that in the IBM case [T6/83] the method of communication between programs and files […] was held patentable in 1988 does not mean that any method of communicating between programs and files […] necessarily involves a technical contribution today”. This was endorsed by Arden LJ in paragraph 43 of the Court of Appeal judgment Lantana v Comptroller-General of Patents [2014] EWCA Civ 1463 (http://www.bailii.org/ew/cases/EWCA/Civ/2014/1463.html).

Substance not form

1.21.3

This is the application of the general principle (see 1.13-1.15.1 (#ref1-13)) – the examiner must look beyond the literal wording of the claims to identify the contribution, and consider the central idea embodied in the claims. Recasting the claim in a different way, e.g. by claiming apparatus instead of method steps, will not usually alter the contribution.

Additional factors

1.21.4

Considering the additional factors that Jacob LJ in Aerotel/Macrossan thought relevant to identifying the contribution:

the problem said to be solved: an invention usually solves a problem; the problem and its solution are almost always relevant to the assessment of the contribution; an explicit statement may be included in the description, but not always – it may simply be derived from the nature of the invention

how the invention works may be simply the definition of the features of the invention in the claims, but it is often more useful to consider in terms of what the invention does as a matter of practical reality

finally, the advantages of the invention are normally closely linked to the problem being addressed, in the sense that the advantage is often that the problem is resolved. All of these factors may assist in identifying the contribution, rather than defining it themselves

Step 3 – ask whether the contribution falls solely within the excluded matter

1.22

The assessment carried out at step 3 is a critical part of the Aerotel test. How that assessment is made, and whether a particular contribution falls within one of the exclusions, will depend on the individual exclusion, and so is covered in greater detail under the specific categories in 1.25 - 1.51.7 (#ref125). In general, examiners should bear in mind that the third step does not require determining whether the contribution falls solely within the excluded subject matter categories as they are listed in section 1(2), but rather whether it falls solely within excluded subject matter as such. The “as such” qualification therefore narrows what is excluded – inventions may appear to fall solely with the excluded categories, but are not excluded as such. This is particularly true in the case of computer programs and discoveries, and this was recognised in Merrill Lynch’s Application [1989] RPC 561 (https://doi.org/10.1093/rpc/1989rpc561).

Step 4 – check if the contribution is technical

1.23

The fourth step is a necessary step, as Jacob LJ stated in paragraph 46 of Aerotel/Macrossan (http://rpc.oxfordjournals.org/cgi/content/abstract/124/4/117), and was included in the test on the basis that it was required, in light of the earlier decision of the Court of Appeal in Merrill Lynch’s Application [1989] RPC 561 (https://doi.org/10.1093/rpc/1989rpc561). In Merrill Lynch (page 569, lines 2-10), the necessity of making this assessment was characterised as follows:

…it cannot be permissible to patent an item excluded by section 1(2) under the guise of an article which contains that item – that is to say, in the case of a computer program, the patenting of a conventional computer containing that program. Something further is necessary. The nature of that addition is, I think, to be found in the Vicom case where it is stated: “Decisive is what technical contribution the invention makes to the known art”. There must, I think, be some technical advance on the prior art in the form of a new result (e.g. a substantial increase in processing speed as in Vicom)

1.23.1

[deleted]

Interaction between steps 3 and 4

1.24

Whilst the steps will often be considered separately, the examiner may already have addressed the question posed in step 4 in answering step 3, as determining whether the contribution falls solely within excluded matter may require assessing whether there is a relevant technical contribution, particularly with regard to the computer program exclusion. The Court of Appeal in Symbian Ltd v Comptroller General of Patents [2009] RPC 1 (https://doi.org/10.1093/rpc/rcn033) ruled that the question of whether the invention makes a technical contribution has to be addressed when considering the computer program exclusion, although whether that takes place at step 3 or 4 is not critical. That the fourth step is applied if the third step has not already covered it is made clear in the statement of the Aerotel test given by the Court of Appeal in Comptroller-General of Patents, Designs and Trade Marks v Emotional Perception AI Ltd (https://caselaw.nationalarchives.gov.uk/ewca/civ/2024/825?query=%5B2024%5D+EWCA+Civ+825&from_date=None&to_date=None&party=&judge=) [2024] EWCA Civ 825, see 1.18 (#ref1-18).

[When applying the Aerotel/Macrossan test in an examination report, examiners may find it useful to use clause RC4.]

Applying the Aerotel/Macrossan test to specific to exclusions

1.25

In all cases of excluded matter, the test in Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7 (http://rpc.oxfordjournals.org/content/124/4/117.abstract) (Aerotel/Macrossan) is the starting point, no matter which exclusion is being relied upon. However, when applying the test, the individual exclusions have specific principles which derive from case law both before and after Aerotel/Macrossan. These can inform how the examiner assesses one or more of the steps of the test; however, they should always bear in mind that the case should be judged on its own merits (see 1.12 (#ref1-12)).

1.25.1

That a contribution may fall within the scope of more than one exclusion and remain excluded see 1.16 (#q) should also be kept in mind. Objections may be raised covering multiple exclusions, and examiners are encouraged to raise all relevant exclusions, so that the applicant is not surprised by an additional objection at a later stage.

Section (a) - Discoveries, scientific theories and mathematical methods

1.26

When considering the patentability of biotechnological inventions with regard to these particular exclusions, section 76A(1) should also be consulted (for discoveries in particular, see 76A.06 (/guidance/manual-of-patent-practice-mopp/section-76a-biotechnological-inventions/#ref76A-06))

Discoveries & scientific theories

1.27

The established view on when this exception applies was summarised by Peter Prescott QC (sitting as a Deputy Judge) in paragraph 34 of CFPH LLC [2005] EWHC 1589 (Pat) (http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html):

It is well settled law that, although you cannot patent a discovery, you can patent a useful artefact or process that you were able to devise once you had made your discovery. This is so even where it was perfectly obvious how to devise that artefact or process, once you had made the discovery [… The law] objects only when you try to monopolise your discovery for all purposes i.e. divorced from your new artefact or process. For that would enable you to stifle the creation of further artefacts or processes which you yourself were not able to think of.

This line of reasoning, stemming from, amongst others, the decision in Hickton’s Patent Syndicate v Patents & Machine Improvements Co Ltd (1909) 26 RPC 339 (https://doi.org/10.1093/rpc/26.13.339), was used by Lewison J in Tate & Lyle Technology v Roquette Frères [2009] EWHC 1312 (Pat) (http://www.bailii.org/ew/cases/EWHC/Patents/2009/1312.html) , where a claim, whose contribution was found to be the explanation of the underlying workings of a previously known method of manufacturing a sugar substitute, was refused as a discovery as such (see also 2.14.1 (/guidance/manual-of-patent-practice-mopp/section-2-novelty/#ref2-14-1)).

1.27.1

In Genentech Inc’s Patent [1989] RPC 147 (https://doi.org/10.1093/rpc/1989rpc205), the Court of Appeal held that the discovery of an amino acid sequence for the substance tPA led to a valid claim when incorporated into a conventional manufacturing process for the manufacture of tPA. Similarly, in Kirin-Amgen v Hoechst Marion Roussel [2005] RPC 9 (https://doi.org/10.1093/rpc/2005rpc9), the House of Lords held that a DNA sequence of a gene was not an invention on its own, but if it were necessary to isolate and extract it, then a process developed for this purpose and the material when obtained by this process could both be patentable (see also 76A.05 (/guidance/manual-of-patent-practice-mopp/section-76a-biotechnological-inventions/#ref76A-05)).

1.28

This principle also applies to scientific theories – practical applications which rely on the theory may be patentable; the theory itself would not be. For example, in the two related cases of Blacklight Power, BL O/076/08 (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl.htm?BL_Number=o%2F076%2F08&submit=Go+%BB) saw an application for modelling atoms based on a new theory of electron states refused (in part) as relating to a scientific theory, whereas in BL O/114/08 (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl.htm?BL_Number=o%2F114%2F08&submit=Go+%BB), an application for a practical application of that theory (a plasma reactor and a laser utilising the effects derived from the theory) was not considered to be excluded (although it was refused for lack of industrial applicability).

Mathematical methods

1.29

In Vicom Systems Inc T0208/84 [1987], the EPO Board of Appeal defined a mathematical method as one which “is carried out on numbers and provides a result in numerical form”. A mathematical method was therefore merely an abstract concept prescribing how to operate on the numbers, and a claim directed solely to the mathematical method was excluded from patentability as a result of its abstract nature.

1.29.1

However, if an invention provides a technical contribution, it may avoid exclusion even though the underlying idea may reside in a mathematical method; a claim to a method of enhancing digital images by software processing that implemented a mathematical method was considered to provide such a contribution in Vicom and allowed. As Lewison J observed in paragraph 17 of AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat) (http://www.bailii.org/ew/cases/EWHC/Patents/2009/343.html) when the board in Vicom considered whether the claim was excluded as being a mathematical method, they “concluded that it was not because the mathematical method which underlay the invention was being used in a technical process which was carried out on a physical entity by technical means.” Thus, where the contribution made by an invention relates to the practical application of the mathematical method to a technical process, it will not be considered a mathematical method as such. In Halliburton Energy Services Inc’s Applications [2012] RPC 12 (https://doi.org/10.1093/rpc/rcs019) both a method of designing a drill bit using computer simulation and a method of simulating drilling a directional wellbore were found not excluded although each involved mathematics. In paragraph 72 Birss J held: “Although obviously some mathematics is involved, the contribution is not solely a mathematical method (on top of being a computer program) because the data on which the mathematics is performed has been specified in the claim in such a way as to represent something concrete (a drill bit design etc.)”. The outcome in Halliburton is consistent with the EPO Enlarged Board of Appeal’s decision in G01/19 (Pedestrian Simulation) OJ EPO 2021 A31 (https://www.epo.org/en/boards-of-appeal/decisions/g190001ex1), which was concerned with the operation of the EPO’s problem-solution approach for assessing the inventive step of computer-implemented simulations.

1.29.2

The presence of real data taken from a physical entity in a claim relating to a mathematical method, for example a method of modelling, simulation or prediction of a real world system, does not necessarily imply that a corresponding invention will avoid exclusion. WesternGeco Ltd ’s Application (BL O/135/07) (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl.htm?BL_Number=o%2F135%2F07&submit=Go+%BB), a method for processing real-world geophysical data by mere abstract manipulation of the data was held by the hearing officer to be a mathematical method as such; however, it was felt that the application of this processed data to determine parameters relating to physical properties of the Earth’s interior, so that an improved seismic image could be produced, did not fall wholly within the exclusion as a result of the decision in Vicom.

1.29.3

Such inventions might therefore avoid exclusion if they contribute to non- excluded fields. For example, whilst a claim directed to monitoring and identifying the position of people and packages in a transportation network was refused as a mathematical method (as well as a computer program and method for doing business) in Innovation Sciences Pty Limited (BL O/315/12) (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl.htm?BL_Number=o%2F315%2F12&submit=Go+%BB) ; in Waters Investments Limited ’s Application (BL O/146/07) (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl.htm?BL_Number=o%2F146%2F07&submit=Go+%BB), a contribution comprising a method of analyzing samples by an analytical technique which uses chromatography and spectrometry followed by a sequence of data analysis techniques (i.e. a mathematical method) to give particular results, although including some steps that could be said to fall within excluded matter, was found to lie in the technical field of sample analysis using chromatography and spectrometric techniques, and so was not excluded.

1.29.4

In Gale’s Application [1991] RPC 305 (http://rpc.oxfordjournals.org/content/108/13/305.abstract)the applicant had devised a new and better algorithm for calculating square roots and claimed it on a read only memory (ROM). In holding the invention to be excluded, Nicholls LJ stated on page 328: “Mr. Gale has devised an improvement in programming. What his instructions do, but it is all they do, is to prescribe for the CPU in a conventional computer a different set of calculations from those normally prescribed when the user wants a square root”. Nicholls LJ also held that the instructions did not embody a technical process and did not solve a technical problem within a computer. Thus, carrying out a mathematical method by a program will not, in general, be enough to avoid exclusion. Similarly, an improvement in programming or an improved algorithm will not generally be enough to avoid exclusion unless there is something more to it in the form of a technical contribution (see from 1.35.5 (#ref1-135)).

1.29.5

Many computer-implemented inventions and particularly inventions involving computer simulation and artificial intelligence (“AI”) relate in some way to a mathematical method. If a computer-implemented mathematical method is applied to a technical process or if it solves a technical problem within a computer, it will likely not be excluded (see from 1.35.5 (#ref1-135) for more detail on assessment of computer implemented inventions).

Section (b) – aesthetic creations

1.30

If an article is distinguished from the prior art solely by its design, ornamentation or colour, then it will be excluded if this has a purely aesthetic function, but if the distinction has a technical effect then this could save it from the exclusion. For example, if a serving tray were characterised solely by having a particular embossed pattern on its surface, then it would fall within the exclusion, but if it were found that this particular pattern had non-slip attributes unexpectedly superior to those normally associated with embossment, this could provide a patentable feature.

1.30.1

Similarly, the means of obtaining a purely aesthetic effect may be patentable if it is characterised by non-excluded features, such as the technical structure of an article or the technical steps in a process. For example, a fabric may be provided with an attractive appearance by means of a layered structure not previously used for this purpose, in which case a fabric incorporating such a structure might be patentable.

1.30.2

An example of an aesthetic effect being obtained by technical means is found in Epoch Company Ltd v Character Options Limited [2017] EHWC 556 (IPEC) (https://caselaw.nationalarchives.gov.uk/ewhc/ipec/2017/556?query=Epoch+Company+Ltd+Character+Options+Limited). The invention was a toy comprising decorative beads made of water-soluble resin which could be arranged into a pattern or image in a tray. Spraying water on the beads caused them to become sticky and fuse together. After being allowed to dry, the beads were melded together creating a decorative article displaying the pattern or image. The beads were transparent and polyhedral which made them appear to glitter in the light. Hacon HHJ acknowledged the contribution included an aesthetic effect imparted by the claimed fusible bead toy but held that the claimed invention was not excluded as an aesthetic creation as such (see [51]). The effect was not achieved solely by the creation of an aesthetic design or group of designs.

Section (c) – mental act, playing a game, business methods, and computer programs

Mental act

Interpreting the mental act exclusion

1.31

The correct interpretation of the mental act exclusion was decided by the High Court in Kapur v Comptroller General of Patents, Designs and Trade Marks [2008] EWHC 649 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2008/649?query=%5B2008%5D+EWHC+649). Floyd J held that the mental act exclusion only applies if a claim actually covers a purely mental implementation of the claimed invention (see [19] and [20]). Later, in Halliburton Energy Service’s Inc’s Application [2012] RPC 12 (https://academic.oup.com/rpc/article/129/4/297/1592768), Birss J confirmed that the purpose of the mental act exclusion is to make sure that patent claims cannot be performed by purely mental means and that is all (see [63]). The exclusion will not apply if there are appropriate non-mental means in the claim.

1.31.1

Following these judgments, examiners should only raise an objection under the mental act exclusion if a claim actually covers a purely mental implementation of the claimed invention. If a claim cannot be infringed by mental acts as such, then its subject matter is not caught by the exclusion. It follows that examiners should not raise any objection under the mental act exclusion if a claimed invention includes appropriate non-mental limitation(s). In those circumstances, it will not be possible to infringe the claim by mental acts alone, and the invention will not comprise a method for performing a mental act.

Examples of applying the mental act exclusion

1.31.2

In Kapur v Comptroller General of Patents, Designs and Trade Marks [2008] EWHC 649 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2008/649?query=%5B2008%5D+EWHC+649) the invention concerned a computer-implemented document management system. Floyd J considered the possibility the claimed invention would cover manual implementations in which the documents took physical form, akin to a book management system in a library. The court held that the physical handling of physical documents is not a mental act, so the mental act exclusion did not apply to such manual implementations (see [37]). However, when the claim was interpreted to cover computer implementations, the court held the invention was excluded as a program for a computer as such (see from 1.35 (#ref1-35) in relation to computer programs).

1.31.3

In the absence of any non-mental limitation, a method of designing something is excluded as mental act. For example, in Halliburton v Smith [2006] RPC 2 (https://academic.oup.com/rpc/article/123/2-3/25/1625718?searchresult=1), Pumfrey J held that claims for methods of designing drill bits for drilling rock were directed purely to the intellectual content of a design process (see [217]). The claims were not limited to a computer program, for example. Thus, the claims were excluded as schemes for performing a mental act. Pumfrey J also indicated an amendment to include an appropriate non-mental limitation, for example a manufacturing step of the sort made in T 0453/91 IBM/Method for physical VLSI-chip design, would likely overcome the mental act objection.

1.31.4

In Halliburton Energy Service’s Inc’s Application [2012] RPC 12 (https://academic.oup.com/rpc/article/129/4/297/1592768), the High Court considered the patentability of another method of designing drill bits for drilling rock formations. Birss J held that the claimed invention was limited to a simulation process carried out on a computer, so it was in fact a claim to a computer-implemented method (see [65]). This was an appropriate non-mental limitation which meant the claimed method could not be performed by purely mental means, so the invention could not fall within the mental act exclusion (see [70]).

1.31.5

In Nokia v Oppo [2023] EWHC 23 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2023/23?query=Nokia+Oppo) the High Court rejected an argument that an invention involving a device for allocating preamble sequences for an access procedure in a mobile communication system was excluded as a mental act. Meade J held the invention had real world technical effects such as reduced power usage and better data rates (see [284]), so it was not merely a mental act (see [287]). The invention was also more than a computer program as such (see from 1.35 (#ref1-35) in relation to computer programs).

Games

1.32

The patentability of schemes, rules or methods for playing a game was considered by the Patents Court in Shopalotto.com Ltd’s Application [2006] RPC 7 (https://doi.org/10.1093/rpc/2006rpc7), where the application related to a computer lottery game played over the internet. The Court held that the patentability of games should be assessed using the general approach for excluded matter, putting it in line with the other exclusions. Following Aerotel/Macrossan, this means that the patentability of games should be assessed using the Aerotel test. Patentability of games was also considered in IGT v The Comptroller-General of Patents [2007] EWHC 1341 (Ch) (http://www.bailii.org/ew/cases/EWHC/Patents/2007/1341.html) which concerned four applications relating to gaming apparatus, specifically casino-based systems using slot-machines. In each case, Warren J held that the claims as construed related to known apparatus upon which a game was played. The contribution in each case therefore lay in the rules or methods used to play the game, and fell solely within the excluded category. See also 1.16 (#ref1-16) and 1.25.1 (#ref1-25-1) for discussion of the interaction between the different exclusions.

1.32.1

In relation to non-computer based games, apparatus which involves a combination of standard game items, such as a board, playing pieces, a random outcome generator (e.g. dice), chance cards and the like, which are united by the nature of the game played will usually be excluded, since the actual contribution lies in the game that the apparatus is used to play. One example is Anderson’s Application (BL O/112/12) (http://www.ipo.gov.uk/pro-types/pro-patent/pro-p-os/p-challenge-decision-results-bl?BL_Number=O/112/12), in which the Hearing Officer held that the contribution lay in a scheme, rule or method for playing a game, and that amending to include the use of known apparatus through which the game could be played did not change the contribution in substance. The application was therefore refused.

Business methods

1.33

The Court of Appeal in Aerotel/Macrossan (http://www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html) expressly rejected the interpretation placed upon this exclusion by Mann J in Macrossan’s Patent Application[2006] EWHC 705 (http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Patents/2006/705.html&query=title+(+macrossan+)&method=boolean) - that a method of doing business should be a way of conducting an entire business, rather than a tool to facilitate business transactions or procedural steps having administrative or financial character - and instead took a wider view of what constitutes a business method. It found that there was no reason to limit the exclusion in the way Mann J had, and confirmed this by looking at the French and German versions of EPC Article 52(2), which are not limited to methods of conducting entire businesses. (The French refers to “economic activities” while the German refers to “business activities”.)

1.33.1

Therefore, the exclusion is to be interpreted as encompassing such tools or steps, and not merely abstract matters or completed transactions. As the Court in Aerotel/Macrossan noted: “whether as an abstract or generalised activity or as a very specific activity, if it is a method of doing business as such it is excluded” (paragraph 68). Double entry bookkeeping was cited in the judgment as an example of a concept that did not involve conducting an entire business or a completed transaction, but nevertheless was clearly a method of doing business.

1.33.2

The expression “doing business” is also not restricted to financial or commercial activities, but embraces administrative, organisational and managerial activities. In Aerotel/Macrossan (http://www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html), it was noted that the idea of having three document trays - “in”, “out” and “too difficult” - was a way of conducting business and no more. In Melia’s Application (BL O/153/92), the Hearing Officer refused a scheme under which prisoners could exchange all or part of a prison sentence for corporal punishment as a business method - the business in question being that of administering punishment. In Cummins-Allison Corp ’s Application (BL O/361/12) (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl.htm?BL_Number=o%2F361%2F12&submit=Go+%BB), the Hearing Officer refused a method of conducting blind balancing on documents associated with a deposit transaction, in which the deposit was displayed only if the received and calculated amounts match, as an administrative process falling solely within the exclusion. Wills’ Application (BL O/089/99) (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl.htm?BL_Number=o%2F089%2F99&submit=Go+%BB), relating to the provision of cards to be held by a school and the parents or grandparents of a child so as to provide an immediate source of accurate, up-to-date information in the event that the child goes missing, and John Lahiri Khan ’s Appn (BL O/356/06) (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl.htm?BL_Number=o%2F356%2F06&submit=Go+%BB), a method of effecting introductions between people wearing a designated device, such as a ring, were both refused under this exclusion. In Hewlett-Packard Development Company ’s Application (BL O/441/12) (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl.htm?BL_Number=o%2F441%2F12&submit=Go+%BB), a method for calculating and modifying the characteristics of an item, such as a magazine, before it is printed – to produce a printed item with an optimised postage weight – was considered to be no more than a method of managing postal changes, and therefore a business method.

1.34

The business method exclusion is generic, as discussed at page 569 of Merrill Lynch’s Application [1989] RPC 561 (https://doi.org/10.1093/rpc/1989rpc561) where Fox LJ rejected a claim to a computerised system for making a trading market:

Now let it be supposed that claim 1 can be regarded as producing a new result in the form of a technical contribution to the prior art. That result, whatever the technical advance may be, is simply the production of a trading system. It is a data-processing system for doing a specific business, that is to say, making a trading market in securities. The end result, therefore, is simply “a method of doing business”, and is excluded by section 1(2)(c). The fact that the method of doing business may be an improvement on previous methods of doing business does not seem to me to be material. The prohibition in section 1(2)(c) is generic; qualitative considerations do not enter into the matter. The section draws no distinction between the method by which the mode of doing business is achieved. If what is produced in the end is itself an item excluded from patentability by section 1(2), the matter can go no further.

Therefore, the fact that an application may provide a better way of conducting business is not relevant. In Halliburton Energy Services Inc’s Applications [2012] RPC 12 (https://doi.org/10.1093/rpc/rcs019), HHJ Birss QC at paragraph 35 noted that the use of a computer to implement a better business method did not confer patentability:

The business method cases can be tricky to analyse by just asking whether the invention has a technical effect or makes a technical contribution. The reason is that computers are self evidently technical in nature. Thus when a business method is implemented on a computer, the patentee has a rich vein of arguments to deploy in seeking to contend that his invention gives rise to a technical effect or makes a technical contribution. For example the computer is said to be a faster, more efficient computerized book keeper than before and surely, says the patentee, that is a technical effect or technical advance. And so it is, in a way, but the law has resolutely sought to hold the line at excluding such things from patents.

1.34.1

Inventions may, however, relate in some way to a business method and yet avoid exclusion. Following the approach of Birss J in Lenovo (Singapore) PTE Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat) (https://www.bailii.org/ew/cases/EWHC/Patents/2020/1706.html), “it is useful to ask: what more is the … invention than a method of doing business?” If the answer to this question is nothing more than a computer program running on a conventional computer system, as was the case in Merrill Lynch discussed above, then the invention is excluded. In Lenovo the invention (which concerned a contactless card payment system) was found to be more than a business method as such. Birss J held that the invention involved “a different physical interaction with the world outside of the computer” that was “technical in character and, in the context of the invention as a whole” it was “not just one of the normal incidents of a conventional computer” (see also 1.38.5). Similarly, Jacob LJ when considering the invention of Aerotel in paragraph 53 of his judgment, considered the then invention to be “more than just a method of doing business as such.” Considering the contribution of Aerotel’s claimed telephone system, they noted that “the [telephone] system as a whole is new. And it is new in itself not merely because it is to be used for the business of selling phone calls.” Even though the telephone system of Aerotel could have been “implemented using conventional computers” Jacob LJ held that “the contribution is a new [telephone] system” because it was “a new combination of hardware” in the form of a telephone system including a “special exchange”. Notably the High Court in Aerotel Ltd v Wavecrest Group Enterprises Ltd & Ors [2008] EWHC 1180 (Pat) (http://www.bailii.org/ew/cases/EWHC/Patents/2008/1180.html) later found the Aerotel patent to be excluded when this “special exchange” was shown to be conventional but for its particular payment scheme (see 1.20.1). Therefore, when assessing whether a particular invention relates to a new system or a ‘new arrangement of hardware’, it should be asked whether the system is new in itself or whether the system is only new due to the business method it performs.

Computer programs

The meaning of ‘program for a computer’

1.35

The definition of ‘a computer’ and ‘a program for a computer’ were set out in Comptroller-General of Patents, Designs and Trade Marks v Emotional Perception AI Ltd [2024] EWCA Civ 825 (https://caselaw.nationalarchives.gov.uk/ewca/civ/2024/825?query=%5B2024%5D+EWCA+Civ+825&from_date=None&to_date=None&party=&judge=) (see [61]). A computer is “a machine which processes information”. A program for a computer is “a set of instructions for a computer to do something”. These two definitions work together, so one can say that a computer is a machine which does something, and that thing it does is to process information in a particular way. The program is the set of instructions which cause the machine to process the information in that particular way, rather than in another way.

The exclusion is not limited to digital computers

1.35.1

Case law with respect to the computer program exclusion has developed largely in the context of digital computers that have a processor to execute programs (software) that are stored in memory. However, for the purposes of the exclusion, computers are not restricted to these types of computers. This was clarified in Emotional Perception (https://caselaw.nationalarchives.gov.uk/ewca/civ/2024/825?query=%5B2024%5D+EWCA+Civ+825&from_date=None&to_date=None&party=&judge=), where an Artificial Neural Network (ANN) was found to be a computer. The weights applied to the neurons of the network were found to be the computer program because the set of weights as a whole instruct the machine to process information it is presented with in a particular way. Thus ANN-implemented inventions are in no better and no worse position than other computer implemented inventions (see [71]). There is no requirement for the program to be written by a human programmer (see [64]), nor is there any requirement for the problem addressed by the program to be tractable to a human programmer (see [65]). How the program came into being is irrelevant (see [66]). An overview of the exclusion in relation to inventions relating to Artificial Intelligence is provided in 1.45 to 1.45.2 (#ref1-45).

1.35.2

Whether the program for a given computer is fixed in a permanent form or not is also not relevant (Emotional Perception (https://caselaw.nationalarchives.gov.uk/ewca/civ/2024/825?query=%5B2024%5D+EWCA+Civ+825&from_date=None&to_date=None&party=&judge=), at [67]). Therefore, ‘hard-wired’ computers such as application-specific integrated circuits (ASICs) are considered to be computers and the computer programs stored thereon are to be assessed for exclusion in the same way as any other computer program.

1.35.3

It follows that other types of computer (e.g. neural networks, analogue computers, quantum computers, etc.) are to be considered as computers for the purposes of the exclusion, and their programs are to be assessed for exclusion in the same way as any other computer program.

The ‘computer’ may be a system of two or more computers

1.35.4

The exclusion is not restricted to the computer being a single computer and can be a “computing arrangement”. Systems operated as a network can be considered a computer for the purposes of the exclusion. This was confirmed in Lantana Ltd v The Comptroller-General of Patents [2013] EWHC 2673 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2013/2673?query=%5B2013%5D+EWHC+2673+%28Pat%29) (see [30]). A discussion regarding how data transfer in computer and telecommunications networks has been considered by the courts is provided in 1.44 to 1.44.6 (#ref1-44).

Requirement for a computer program to make a technical contribution

1.35.5

Where a claim involves the use of a computer program, it does not naturally follow that the claim must be excluded. The fact that what is claimed may be a computer program, or implemented by a computer program, is not determinative (see Symbian Ltd’s Application [2009] RPC 1 (https://doi.org/10.1093/rpc/rcn033)). What needs to be determined is whether the claimed computer program provides a technical contribution. A computer program that provides a technical contribution will not fall under the exclusion, as it is more than a computer program as such.

Assessing the contribution made by programs

1.35.6

The mere presence of conventional computing hardware does not of itself mean the invention makes a technical contribution (and avoids the computer program exclusion) because such hardware will typically not form part of the contribution (Emotional Perception (https://caselaw.nationalarchives.gov.uk/ewca/civ/2024/825?query=%5B2024%5D+EWCA+Civ+825&from_date=None&to_date=None&party=&judge=), at [32]). Similarly, merely specifying that the program subsists on a carrier will not make an otherwise excluded invention patentable (see Merrill Lynch’s Application [1989] RPC 561 (https://doi.org/10.1093/rpc/1989rpc561)).

1.35.7

The contribution of a claim to a computer program must be assessed by reference to the process the program will cause a computer to perform, because the assessment is based on the substance of the invention. 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 (Halliburton Energy Services Inc’s Applications [2012] RPC 12 (https://doi.org/10.1093/rpc/rcs019), at [32]). When determining if a computer-implemented invention falls foul of the computer program exclusion, examiners must look at what the computer program will do when run (Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks [2008] EWHC 85 (Pat) (http://www.bailii.org/ew/cases/EWHC/Patents/2008/85.html).

The AT&T signposts

1.36

There is no precise test for determining whether a computer program is excluded. It is necessary to consider each case on its particular facts and features, to look at the practical reality of what the program achieves, and to ask whether there is something more than just a “better program”. An invention which either solves a technical problem external to the computer or solves one within the computer is not considered to fall under the computer program exclusion.

1.36.1

To help assess whether a claimed invention involving a computer program makes a technical contribution examiners may use the five so-called AT&T signposts (from AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2009/343?query=%5B2009%5D+EWHC+343+%28Pat%29), as restated in HTC v Apple (https://caselaw.nationalarchives.gov.uk/ewca/civ/2013/451?query=%5B2013%5D+EWCA+Civ+451)). The signposts are a distillation of the reasoning and rationale of previous case law.

[If referring to the AT&T signposts in an examination report, examiners may find it useful to use clause RC4A.]

1.36.2

In the following sections, each of the five signposts is discussed to explain, in general terms, its meaning. The case(s) from which each signpost is derived is(are) included in parentheses. In overview, signpost 1 relates to technical effects external to the computer whereas signposts 2-4 relate to technical effects that are internal to the computer. Signpost 5 relates to whether the invention solves a technical problem and applies whether that problem lies inside or outside the computer.

Signpost 1 – whether the claimed technical effect has a technical effect on a process which is carried on outside the computer (from Vicom T 0208/84 (https://www.epo.org/law-practice/case-law-appeals/recent/t840208ep1.html)).

1.36.3

If the contribution made by an invention relates to a technical process (or the solution of a technical problem) lying outside the computer on which it is implemented, then it will meet signpost 1. An invention which would otherwise be patentable should not be excluded from patent protection merely because it is implemented using a computer program. If, ignoring the computer program, it would be patentable, then the fact that a computer drives the invention does not deprive it of patentability. However, if the contribution made by an invention is to a non-technical external process (for example, a process consisting solely of excluded subject matter, such as a business method) and there is no more to it, then it will not meet signpost 1.

Signpost 2 – whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run (from IBM T 0006/83 (https://www.epo.org/law-practice/case-law-appeals/recent/t830006ep1.html) and IBM T 0115/85 (https://www.epo.org/law-practice/case-law-appeals/recent/t850115ex1.html)).

1.36.4

Signpost 2 asks whether a program produces a technical effect “at the level of the architecture” of a computer. According to signpost 2, an effect is said to be at the level of the architecture if it improves the internal workings of a computer “irrespective of the data being processed or the applications being run” by the computer. It is not necessary for an invention to comprise new hardware to meet signpost 2 (see for example IBM T 0006/83 (https://www.epo.org/law-practice/case-law-appeals/recent/t830006ep1.html) and IBM T 0115/85 (https://www.epo.org/law-practice/case-law-appeals/recent/t850115ex1.html) from which signpost 2 was distilled). Thus, the relevance of signpost 2 cannot be dismissed simply because an invention relies on ‘conventional’ hardware. To decide whether an invention meets signpost 2 the critical question is to ask whether the operation of a computer is improved irrespective of the data it processes or the applications it runs. In practice, this means improvements “at the level of the architecture” of a computer may include improvements to the operation of its constituent components (for example processors, memory hierarchies, buses, instruction sets, accelerators, input/output units, etc.) and improvements to its operating system.

1.36.5

If the effect being produced is specific to a particular data set or type of data, or benefits only particular applications, it is likely it will fail to meet this signpost. However, effects limited to processing particular types of data or applications may meet signpost 1 (see 1.36.3 (#ref1-36-3)) or signpost 5 (see 1.36.8 (#ref1-36-8)).

Signpost 3 – whether the claimed technical effect results in the computer being made to operate in a new way (from Gale’s Application (https://doi.org/10.1093/rpc/1991rpc305)).

1.36.6

Signpost 3 asks whether there is an improved computer in the sense that it is being made to operate in a new way. A computer will not meet signpost 3 merely because it runs a new program. The new program must produce some sort of technical effect which is more than the running of a new program – the computer itself must operate differently than it did before as a result of the program being run.

Signpost 4 – whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer (from Symbian (https://doi.org/10.1093/rpc/rcn033); as reworded in HTC v Apple (https://caselaw.nationalarchives.gov.uk/ewca/civ/2013/451?query=%5B2013%5D+EWCA+Civ+451)).

1.36.7

For the fourth signpost to be met the computer must operate more efficiently and effectively as a result of running the program. Again, this must be the computer as a whole, rather than the individual program. Conversely, if the effect does not apply to the computer as a whole, for example if it is limited to improving a particular application or applications, then it is unlikely to meet signpost 4. However, such effects may still meet signpost 1 (see 1.36.3 (#ref1-36-3)) or signpost 5 (see 1.36.8 (#ref1-36-8)).

Signpost 5 - whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented (from Hitachi T 0258/03 (https://www.epo.org/en/boards-of-appeal/decisions/t030258ep1)).

1.36.8

If an invention can be said to solve a technical problem, then it is likely that at least signpost 5 is met and the invention is a patentable invention. The distinction between solving and circumventing a technical problem in the sense of signpost 5 was explained by Birss J in Lantana Ltd v The Comptroller-General of Patents, Designs and Trade Marks [2013] EWHC 2673 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2013/2673?query=%5B2013%5D+EWHC+2673+%28Pat%29):

“[35] … It makes sense to think of something which is a solution to a technical problem as itself having technical character because it takes that character from the technical nature of the problem to be solved. But if a thing is not solving the technical problem but only circumventing it, then that thing cannot be said to have taken any technical character from the problem.”

Circumventing a technical problem does not guarantee that an alleged invention is excluded, it only implies that the invention cannot derive technical character from the problem being addressed. In circumventing the problem, the invention may instead solve another problem that is technical in nature.

A warning about the signposts

1.36.9

The signposts are merely guidelines and examiners should remember that there is no single or clear rule for determining whether a technical contribution is revealed. Although the signposts provide a useful aid for assessing the technical character of a claimed invention, they were not intended to provide a definitive test. There will be some cases in which they are more helpful than in others and their usefulness does not mean they will be determinative in every case. However, if the claimed invention fails all of the signposts, it will likely be a good indicator that it may be nothing more than a computer program as such. As Birss LJ put it in Emotional Perception (https://caselaw.nationalarchives.gov.uk/ewca/civ/2024/825?query=%5B2024%5D+EWCA+Civ+825&from_date=None&to_date=None&party=&judge=) (see [34]):

“In the right cases – which are often difficult ones and are generally known as “better computer” cases because the invention is said to improve the functioning of the computer system itself – these signposts are very helpful”.

1.36.10

While the signposts are helpful guidelines, examiners should also bear in mind they must follow the decided cases identified in Symbian (https://caselaw.nationalarchives.gov.uk/ewca/civ/2008/1066?query=%5B2008%5D+EWCA+Civ+1066) (at [49]) as forming “the most reliable guidance” on whether program makes a technical contribution (and from which the signposts were originally distilled). This guidance includes the judgments of the Court of Appeal in Merrill Lynch (http://rpc.oxfordjournals.org/content/106/19/561.abstract), Gale’s Application (http://rpc.oxfordjournals.org/content/108/13/305.abstract), and Symbian (https://caselaw.nationalarchives.gov.uk/ewca/civ/2008/1066?query=%5B2008%5D+EWCA+Civ+1066) and the decisions of the EPO Boards of Appeal in Vicom (https://www.epo.org/en/boards-of-appeal/decisions/t840208ep1), IBM T 0006/83 (https://www.epo.org/law-practice/case-law-appeals/recent/t830006ep1.html), and IBM T 0115/85 (https://www.epo.org/law-practice/case-law-appeals/recent/t850115ex1.html).

Examples of how the signposts have been (or would have been) applied

1.37

In paragraphs 1.38 to 1.44.6 (#ref1-38) that follow, various examples of how each of the signposts have been applied by the courts are presented. The cases presented are intended to provide examples in which the respective signpost was (or would have been) found to indicate the presence of a technical contribution or was found to indicate the lack of a technical contribution. As might be expected, not all of the signposts have resulted in examples of both a finding of a technical contribution and a finding of a lack of technical contribution.

Signpost 1 – the program carries out a technical process going on outside the ‘computer’

1.38

Examples of external technical effects are seen in the following decided cases.

Vicom

1.38.1

Signpost 1 is based on the reasoning of the EPO Boards of Appeal in Vicom (https://www.epo.org/law-practice/case-law-appeals/recent/t840208ep1.html). In Vicom (https://www.epo.org/law-practice/case-law-appeals/recent/t840208ep1.html), the technical process lying outside the computer was image processing. The invention in Vicom (https://www.epo.org/law-practice/case-law-appeals/recent/t840208ep1.html) concerned a method of image convolution which involved repeated selection and application of convolution filters using a mathematical error-minimisation technique. The convolution filters had a smaller dimension compared to those used by a known method. When the inventive image convolution was run on a conventional computer it required far fewer calculations to give approximately the same result as the known method. Hence, the invention produced image convolutions with an increase in processing speed compared to the known method when it was executed on a conventional computer.

As the court explained in AT&T/Cvon (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2009/343?query=%5B2009%5D+EWHC+343+%28Pat%29) (see [18]), the Board held that the inventive algorithm in Vicom (https://www.epo.org/law-practice/case-law-appeals/recent/t840208ep1.html) was more than a program for a computer “as such” because:

“… what was claimed was not the computer program at all, but the process of manipulating the images. That process was a technical process and hence made a technical contribution.”

Koch & Sterzel

1.38.2

In Koch & Sterzel T 0026/86 (https://www.epo.org/en/boards-of-appeal/decisions/t860026ep1) the technical process lying outside the computer was controlling an X-ray machine. The invention involved a computer running a computer program that controlled the X-ray tubes of the machine. The contribution lay in ensuring optimum exposure times for radiological imaging while providing sufficient protection against overloading the X-ray tubes. The Board held that the invention provided a technical effect in the X-ray machine, so the invention was not a program for a computer as such. The invention in Koch & Sterzel (https://www.epo.org/en/boards-of-appeal/decisions/t860026ep1) would meet signpost 1.

Halliburton

1.38.3

In Halliburton (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2011/2508?query=%5B2011%5D+EWHC+2508+%28Pat%29) the technical process lying outside the computer was designing drill bits for drilling oil wells to solve technical problems relating to their drilling efficiency and operational life. The invention used computer simulations to model multiple designs of a drill bit (including its cutting elements) using finite element methods. The drilling of earth formations was simulated using the multiple designs to determine an optimised design for the drill bit. Birss J held that the invention was more than a computer program “as such” (see [71]) and that the contribution was technical in nature because:

“[74] Designing drill bits is obviously a highly technical process, capable of being applied industrially … The detailed problems to be solved with wear and ability to cut rock and so on are technical problems with technical solutions. Accordingly finding a better way of designing drill bits in general is a technical problem. This invention is a better way of carrying that out. Moreover the detailed way in which this method works – the use of finite element analysis – is also highly technical.”

Hence, the invention in Halliburton (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2011/2508?query=%5B2011%5D+EWHC+2508+%28Pat%29) made a technical contribution. As well as being a technical process, it solved a technical problem (with drilling efficiency and operational lifespan) lying outside the computer. Halliburton (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2011/2508?query=%5B2011%5D+EWHC+2508+%28Pat%29) would meet signpost 1.

Protecting Kids the World Over (PKTWO)

1.38.4

In Protecting Kids the World Over (PKTWO) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2011/2720?query=%5B2011%5D+EWHC+2720+%28Pat%29) the technical process lying outside the computer was the monitoring of the content of electronic communications. This contributed to the solution of a technical problem concerning inappropriate communication alarms.

The invention was an alert system for monitoring electronic communications data (for example email) for particular words and phrases. The system worked to ensure that users (for example children) were not exposed to inappropriate content or language. Floyd J held that the speed and reliability of the algorithm used for sampling and analysing expressions found in the electronic communications was technically superior to that used in the prior art so was a technical contribution outside the computer (see [34]). This in turn improved the speed and reliability of an alarm notification for alerting a user (for example a parent) to inappropriate communication (see [31]). Accordingly, Floyd J held (see [35]) that the contribution made by the invention in PKTWO (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2011/2720?query=%5B2011%5D+EWHC+2720+%28Pat%29):

“… does not reside wholly within the computer program as such exclusion. I think that conclusion is in accordance with the AT&T (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2009/343?query=%5B2009%5D+EWHC+343+%28Pat%29) signposts. In particular I would say that the invention solves a technical problem lying outside the computer, namely how to improve upon the inappropriate communication alarm provided by the prior art.”

Lenovo

1.38.5

In Lenovo (Singapore) v. Comptroller General of Patents [2020] EWHC 1706 (Pat) (https://www.bailii.org/ew/cases/EWHC/Patents/2020/1706.html) the technical effect outside the computer lay in a different physical interaction with the world outside the computer. The invention solved the technical problem of ‘card clash’ experienced with contactless payment cards at a ‘point of sale’ terminal. Prior art approaches to this problem involved the user having to press a button to choose which card to use or to split the payment between two cards. However, the invention allowed a user to split payment between multiple cards automatically based on preferences that were acquired and stored elsewhere. Birss J held that the result of this automatic feature was that the card clash problem experienced with contactless payment cards was solved without the user having to take any extra physical step at the point they use their contactless cards (see [36]). The invention met signpost 1.

Signpost 1 – examples of non-technical technical processes external to the computer

1.39

Examples of non-technical external processes are seen in the following decided cases.

Merrill Lynch, Macrossan

1.39

The courts have consistently rejected inventions in which a computer is programmed to operate a method of doing business. Clear examples are found in in Merrill Lynch (http://rpc.oxfordjournals.org/content/106/19/561.abstract) (see 1.34 (#ref1-34)) and Macrossan (https://caselaw.nationalarchives.gov.uk/ewca/civ/2006/1371?query=%5B2006%5D+EWCA+Civ+1371) (see 1.33 to 1.33.2 (#ref1-33)). Merrill Lynch (http://rpc.oxfordjournals.org/content/106/19/561.abstract) related to a data processing system for making a trading market in securities and Macrossan (https://caselaw.nationalarchives.gov.uk/ewca/civ/2006/1371?query=%5B2006%5D+EWCA+Civ+1371) involved producing the documents for use in forming a corporate entity such as a company. Neither Merrill Lynch (http://rpc.oxfordjournals.org/content/106/19/561.abstract) nor Macrossan (https://caselaw.nationalarchives.gov.uk/ewca/civ/2006/1371?query=%5B2006%5D+EWCA+Civ+1371) would meet signpost 1 since their contributions lie solely in performing non-technical processes (business methods).

Gale’s Application

1.39.2

In Gale’s Application (https://doi.org/10.1093/rpc/1991rpc305) the contribution lay solely in an improved mathematical method (see 1.29.4). The invention was a new method of calculating square roots performed using binary arithmetic by a computer program for a digital computer. Nicholls LJ held that the invention did not embody a technical process which exists outside the computer (see page 327, lines 51-21) so it was excluded as a computer program as such (see page 328, lines 16-17). Gale’s Application (https://doi.org/10.1093/rpc/1991rpc305) would not meet signpost 1.

Signpost 1 – examples non-technical processes inside the computer

1.39.3

Similarly, where the contribution made by the invention falls solely within the computer program exclusion, and there is no more to it, then it will not meet signpost 1. For example, if an invention does not involve any process being performed outside the computer, then it cannot meet signpost 1, as was the case in Lantana Ltd v The Comptroller-General of Patents [2013] EWHC 2673 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2013/2673?query=%5B2013%5D+EWHC+2673+%28Pat%29) (see discussion at 1.44.4). Further examples of this are seen in Autonomy and Kapur.

Autonomy

1.39.4

In Autonomy (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2008/146?query=%5B2008%5D+EWHC+146+%28Pat%29), one aspect of the claimed invention involved automatic text analysis. The text in an active window of a computer was analysed automatically and a list of links related to that content was generated. This aspect was held to be a paradigm example of what is caught by the exclusion to a program for a computer “as such”.

“[40] In my judgment … automatic text analysis, comparison and results generation is a paradigm example of a case in which the contribution falls squarely within excluded matter, i.e. a program for a computer. The claimed contribution, so far as the first element is involved does not exist independently of whether it is implemented by a computer. On the contrary, it depends on a computer processing or displaying information in an active window, and on a search program to analyse it and to compare and generate results … The only effect produced by the invention is an effect caused merely by the running of the program, which consists of the manipulation of data. It is in short a claim to a better search program.”

The invention in Autonomy (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2008/146?query=%5B2008%5D+EWHC+146+%28Pat%29) (automatic text analysis) would not meet signpost 1.

Kapur

1.39.5

In Kapur v The Comptroller General of Patents, Designs and Trade Marks [2008] EWHC 649 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2008/649?query=%5B2008%5D+EWHC+649+%28Pat%29) Floyd J considered, amongst other things, whether an invention relating to a computer-implemented document management system was excluded as a program for a computer. At [28], Floyd J observed that:

“The storage and manipulation of data of all kinds is the essence of what computers are capable of.”

The actual contribution made by the invention was a program for enabling the storage and retrieval of documents in a computer database in a particular way (see [30]). Floyd J held this did not involve the control of any technical process outside the computer (see [27]). Floyd J also held that the invention was not an improved computer, but an entirely standard computer programmed to handle document storage in a particular way (see [31]). There was no technical effect, and the invention was refused as a computer program as such (see [32]).

Signpost 2 – the program operates at the level of the architecture of the computer

1.40

Signpost 2 is based on IBM T 0006/83 (https://www.epo.org/law-practice/case-law-appeals/recent/t830006ep1.html) and IBM T 0115/85 (https://www.epo.org/law-practice/case-law-appeals/recent/t850115ex1.html).

IBM T 0006/83

1.40.1

In IBM T 0006/83 (https://www.epo.org/law-practice/case-law-appeals/recent/t830006ep1.html) the contribution was an extension for a known “control system” that allowed any application program running on a computer in a network to communicate with (e.g. retrieve data from) another computer in the network. Placing the extension (an improved control function, referred to as “a mirror transaction”) within the control system, so that it could be accessed by any application, was an improvement upon known control systems. For example, in the prior art control system, the programmer was required to implement a communication function individually within each application itself.

The Board noted that the underlying computers and network were conventional (see [4]). However, the Board held (at [5]) that the improved control system was comparable with an operating system of a computer (cf. Symbian, HTC). Thus, the board held that the improved control system was concerned with the “internal workings” of a computer, irrespective of the nature of the data being processed and the application programs processing it (see [5]). The Board held that the invention solved a problem (lying within the computer) that was technical in nature, so it was not excluded matter (see [6]).

IBM T 0115/85

1.40.2

IBM T 0115/85 (https://www.epo.org/law-practice/case-law-appeals/recent/t850115ex1.html) was concerned with monitoring interrupts corresponding to events in a computer. An event was (for example) a diskette drawer being opened in a text processing system and the invention provided visual output messages relating to these events. The computer hardware upon which invention was implemented was conventional. The contribution was therefore a new method for decoding the phrases (stored in a series of tables) that were needed to build the output messages.

The Board held that the problem addressed by the invention (automatically giving visual indications about prevailing conditions in the computer) was a technical problem (see [7]). The Board held that the invention solved this technical problem (see [8]). The problem lay within the computer itself, so the invention related to things going on inside the workings of the computer, rather than any form of data processing (see AT&T at [25]).

HTC v Apple

1.40.3

A further example of a better computer meeting signpost 2 is HTC v Apple [2013] EWCA Civ 451 (https://caselaw.nationalarchives.gov.uk/ewca/civ/2013/451?query=%5B2013%5D+EWCA+Civ+451). The invention was concerned with handling simultaneous touch events in multi-touch enabled computing devices. Two kinds of flags were associated with views on a device’s screen. Multi-touch flags indicated a particular view was allowed to receive multiple simultaneous touches. Exclusive touch flags indicated whether a particular view allowed other views to receive touches while it received a touch.

Kitchin LJ held that the invention solved a technical problem lying inside the computer, namely using these flags to deal with simultaneous touch events in multi-touch devices (see [56]). Kitchin LJ held that the inventive solution to this problem concerned the basic internal operation of the device and applied irrespective of the particular application software which it is running for that purpose (see [57]). Lewison LJ agreed, holding that the invention worked at the level of the operating system so that signpost 2 could be found in the invention (see [154]).

Signpost 3 – the computer is made to operate in a new way

1.41

Signpost 3 is based on Gale’s Application (http://rpc.oxfordjournals.org/content/108/13/305.abstract) which is an example of a computer running a new program which does not involve a relevant technical effect.

1.41.1

Gale’s Application (http://rpc.oxfordjournals.org/content/108/13/305.abstract) was a new way of calculating square roots which was sympathetic to the operation of the underlying architecture of the computer. Prior methods of calculating square roots relied on binary division operations which could not be directly provided within binary computers. Conventionally, binary division operations were implemented by combining various binary “add”, “subtract”, “test” and “shift” functions. In Gale (http://rpc.oxfordjournals.org/content/108/13/305.abstract), the inventive method of calculating square roots eschewed division operations, relying instead on multiplication operations. The multiplication operations were inherently easier and faster to implement using the registers of a conventional computer, for example by using binary “shift” operations.

Nicholls LJ held that the program instructions in Gale (http://rpc.oxfordjournals.org/content/108/13/305.abstract) did not solve a technical problem lying within the computer (page 327, line 52 to page 328, line 2). The instructions did no more than prescribe for the CPU in a conventional computer a different set of calculations from those normally prescribed when the user wanted a square root. Nicholls LJ held, therefore, that the instructions did not define a new way of operating a computer in a technical sense (page 328, lines 12-13) and Gale (http://rpc.oxfordjournals.org/content/108/13/305.abstract) was refused as a program for a computer as such.

1.41.2

Unfortunately, there are few (if any) clear examples in decided case law of signpost 3 being applied to show an invention is patentable. Inevitably this means there is some uncertainty about the effect an invention must show to be a positive example of signpost 3. In HTC (discussed under signpost 2 at 1.40.3) Kitchin LJ held that the invention in suit caused the multi-touch device to operate in “a new and improved way” (see [57]), suggesting signpost 3 might apply. However, at [154], Lewison LJ held that it was “doubtful whether the device is made to operate in a new way”.

1.41.3

In Lenovo (https://www.bailii.org/ew/cases/EWHC/Patents/2020/1706.html), Birss J observed that the facts of Aerotel (https://caselaw.nationalarchives.gov.uk/ewca/civ/2006/1371?query=%5B2006%5D+EWCA+Civ+1371) could be an example of signpost 3. In Aerotel (https://caselaw.nationalarchives.gov.uk/ewca/civ/2006/1371?query=%5B2006%5D+EWCA+Civ+1371), a new “special exchange” was implemented by a new application program running on a conventional hardware unit of a wider computer system. Incorporating the new “special exchange” into the otherwise conventional computer system was held to create “a new physical combination of hardware” which was not excluded. Thus, the inclusion of a newly programmed functional unit in a computer may result in the computer being made to operate in a new way as required by signpost 3.

Signpost 4 – the program makes the computer run more efficiently and effectively as a computer

1.42

Clear examples of where signpost 4 is met are found in Symbian (https://caselaw.nationalarchives.gov.uk/ewca/civ/2008/1066?query=%5B2008%5D+EWCA+Civ+1066) (on which signpost 4 is based) and HTC v Apple [2013] EWCA Civ 451 (https://caselaw.nationalarchives.gov.uk/ewca/civ/2013/451?query=%5B2013%5D+EWCA+Civ+451).

1.42.1

Symbian (https://caselaw.nationalarchives.gov.uk/ewca/civ/2008/1066?query=%5B2008%5D+EWCA+Civ+1066) concerned the programming of a dynamic linked library (DLL) for storing functions common to the applications running on a computer’s operating system. In certain circumstances, adding functions to the DLL meant that existing applications using the DLL were unable to link to the added functions correctly, causing a malfunction. The inventive program had an “extension part” for the DLL which ensured that any application could select and link correctly to the desired functions in the DLL.

Neuberger LJ held that the invention was not only a “better computer”, but it also could be said to solve a technical problem lying within the computer (see [54]). For example, Neuberger LJ held that the contribution was a “program which makes the computer operate on other programs faster than prior art operating systems enabled it to do by virtue of the claimed features” (see [59]). It was not a computer program as such because it had “the knock-on effect of the computer working better as a matter of practical reality” and it was technical in nature (see [59]).

1.42.2

Another example of a better computer meeting signpost 4 is HTC v Apple [2013] EWCA Civ 451 (https://caselaw.nationalarchives.gov.uk/ewca/civ/2013/451?query=%5B2013%5D+EWCA+Civ+451) (which is discussed under signpost 2 at 1.40.3). Kitchin LJ held that the inventive use of flags for handing multi-touch events made the computer a better computer in a real practical sense because it was easier for programmers to use (see [58]). Lewison LJ took a similar view holding that the device was running more efficiently and effectively in the sense of signpost 4 because it was easier to program (see [154]).

Signpost 5 – solving technical problems, not circumventing them

1.43

If an invention can be said to solve a technical problem, then it is likely at least signpost 5 is met and the invention is a patentable invention.

1.43.1

The decided case law contains numerous examples of inventions being held to solve technical problems lying outside the computer or lying inside the computer itself. See for example discussion of signpost 1 (1.38 to 1.38.5 (#ref1-38)), the discussion of signposts 2 to 4 (1.40 to 1.42.2 (#ref1-40)) and the discussion of inventions involving data transfer (see 1.44 to 1.44.5 (#ref1-44)).

1.43.2

Conversely, any invention which fails to solve a technical problem is unlikely to be a patentable invention (and is also very unlikely to meet any of the signposts).

Circumventing technical problems

1.43.3

If an invention circumvents a technical problem, rather than truly solving it, then it will not meet signpost 5. A clear example of this is Hitachi T 0258/03 (https://www.epo.org/en/boards-of-appeal/decisions/t030258ep1) on which signpost 5 is based.

1.43.4

In Hitachi T 0258/03 (https://www.epo.org/en/boards-of-appeal/decisions/t030258ep1) the invention concerned an automatic auction method. Before starting the auction, a server computer collected bids from the client computers of the auction’s participants. Each bid included two prices, a “desired price” and a “maximum price”. After collecting the bids, the auction proceeded automatically. An auction price was set and successively lowered (typical of so-called Dutch auctions) until it reached the level of the highest bid or bids as determined by the “desired price”. If there were several identical bids at the “desired price”, then the auction price was increased until only the bidder offering the highest “maximum price” remained. This bidder was then declared the winner of the auction.

The Board rejected an argument that a technical effect resided in overcoming the technical problem of delays in propagating information in prior art online auctions. The Board held that the invention was not a technical solution to the delay problem because it was entirely based on modifying a non-technical auction method. The Board held that:

“Method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed.”

1.43.5

Another example of an invention circumventing a technical problem is found in Lantana Ltd v The Comptroller-General of Patents [2013] EWHC 2673 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2013/2673?query=%5B2013%5D+EWHC+2673+%28Pat%29), which is discussed at (1.44.4 to 1.44.5 (#ref1-44-4)). The court rejected an argument that the inventive method of file transfer by email solved a technical problem relating to continuous network connections. Birss J held that the use of email avoided the technical problems of continuous communications altogether (see [35]). The decision was upheld on appeal in Lantana v Comptroller-General of Patents [2014] EWCA Civ 1463 (https://caselaw.nationalarchives.gov.uk/ewca/civ/2014/1463?query=%5B2014%5D+EWCA+Civ+1463) (see [51] and [68]).

1.43.6

In Renaissance Technologies v Comptroller General of Patents [2021] EWHC 2020 (Pat) (https://www.bailii.org/ew/cases/EWHC/Patents/2021/2020.html), Zacaroli J held, among other things, that signpost 5 was not met by an invention which concerned synchronised financial trading in an electronic trading environment including multiple financial exchanges. The technical problem was identified to be one of latency and congestion in the sending of an electronic signal over a distance, resulting in the signal arriving at different times at different locations (see [25] and [34]). Zacaroli J held that the invention worked around the problems of latency and congestion by moving servers close to the financial exchanges at which the signal was to be received (see [34]).

1.43.7

Examiners should bear in mind that even when an invention circumvents one technical problem, it may in fact be a solution to another technical problem. This point was explained on appeal in Lantana v Comptroller-General of Patents [2014] EWCA Civ 1463 (https://caselaw.nationalarchives.gov.uk/ewca/civ/2014/1463?query=%5B2014%5D+EWCA+Civ+1463), see [51] where by Arden LJ stated that patentability is not always denied where a problem is circumvented rather than solved:

“Circumvention may be the result of truly original linear thinking and may lead to patentability in an appropriate case”.

Solving non-technical problems

1.43.8

If an invention merely solves a non-technical problem (e.g. a business problem) then it is unlikely it will meet signpost 5. A clear example of this is Hitachi T 0258/03 (https://www.epo.org/en/boards-of-appeal/decisions/t030258ep1) where the Board held that the invention could be regarded as the mere automation of the non-technical activity of performing a Dutch auction (see [5.7]). However, examiners should bear in mind that an invention which addresses a non-technical problem may lead to the solution of another problem which is technical in nature.

Data transfer, computer networks, and telecommunications

1.44

Inventions concerning the transfer of data between multiple computers or the operation of a network of several computers avoid exclusion when they make a technical contribution. For the purposes of the signposts, the “computer” may be treated an arrangement of multiple computers or a network of computers (1.35.4). Thus, examiners may use the signposts when considering whether inventions involving data transfer, computer networks, and telecommunications avoid exclusion under section 1(2).

Technical examples

1.44.1

In Gemstar v Virgin [2009] EWHC 3068 (Ch) (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2009/3068?query=%5B2009%5D+EWHC+3068+%28Ch%29), the “transfer patent” (see [174]-[236]), the invention concerned a set top box for receiving and recording television programs and displaying an electronic program guide (EPG). Mann J held that the contribution made by the invention lay in providing an additional facility in an electronic program guide (EPG); namely to control the transfer of an already recorded programme to a secondary recorder (for example a VCR or hard disk) (see [174]). Mann J held that the invention provided a technical effect in the real world (outside a computer) because it involved the initiation of movement of data (both metadata and TV programme content) from one disk to another. Gemstar may be an example of signpost 1.

1.44.2

In Protecting Kids the World Over (PKTWO) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2011/2720?query=%5B2011%5D+EWHC+2720+%28Pat%29) an improvement in the monitoring of the content of electronic communications led to the improved speed and reliability of an alarm notification for alerting a user to inappropriate communication ([see 1.38.4]#ref1-38-4)).

1.44.3

In Nokia v Oppo [2023] EHWC 23 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2023/23?query=%5B2023%5D+EWHC+23+%28Pat%29) the invention was a device for allocating preamble sequences for an access procedure in a mobile communication system. Meade J held that the invention had real-world, external technical effects such as reduced power usage and better data rates (see [269] and [284]), so the invention was more than a computer program as such.

Non-technical examples

1.44.4

In Lantana Ltd v The Comptroller-General of Patents [2013] EWHC 2673 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2013/2673?query=%5B2013%5D+EWHC+2673+%28Pat%29), Birss J refused a patent application for an invention which allowed a user at a “local station” (a computer) to access a file stored in a “remote data storage device” (another computer) via email and the internet because it was a computer program as such. The user of the local computer selected the file they wished to retrieve from the remote computer and, in response, the local computer created an email message containing a machine-readable instruction for retrieving the selected file and sent it to the remote computer over the internet. The remote computer received the email, executed the machine-readable instruction to retrieve the selected file from storage, and sent back an email containing the requested file.

Birss J held that none of the signposts applied. For example, Birss J held that everything the invention did was going on inside the computing arrangement, so the first signpost did not assist (see [31]). The second signpost did not assist because the claimed technical effect did not operate at the level of the architecture in either computer (see [38]). The computer was not operating in a new way per signpost 3 (see [33]). There was no evidence either of the two computers or the network were more efficient and effective as required by signpost 4 (see [40]). Birss J held (see [35]]) that the invention circumvented the technical problems concerning continuous network connections so the fifth signpost was not met (see 1.43.5). The decision was upheld on appeal, see Lantana v Comptroller-General of Patents [2014] EWCA Civ 1463 (https://caselaw.nationalarchives.gov.uk/ewca/civ/2014/1463?query=Lantana+Comptroller-General+Patents+%5B2014%5D+EWCA+Civ+1463).

1.44.5

In Emotional Perception v Comptroller General of Patents [2024] EWCA Civ 825 (https://caselaw.nationalarchives.gov.uk/ewca/civ/2024/825?query=%5B2024%5D+EWCA+Civ+825), Birss LJ held that an invention involving the sending of a music file recommendation to a user over the internet was not technical and was excluded as a program for a computer. The file recommendation was produced by passing music tracks through a specially trained neural network to produce outputs reflecting the semantic qualities of the music. The fact that the recommendation message in Emotional Perception was transmitted over a network did not help (see [77]). What distinguished the invention from conventional file transmission was that it provided a better recommendation, for example a song which the user was likely to enjoy ([77]). This distinction was merely aesthetic, so the file recommendation was non-technical in nature ([79]-[81]). The signposts did not assist (see [82]).

Artificial intelligence

1.45

Inventions involving artificial intelligence are based on models and algorithms such as neural networks, genetic algorithms, machine learning algorithms and other similar techniques. The practical implementation of AI inventions typically relies on computers and computer programs in some way. AI inventions are, therefore, computer-implemented inventions so examiners should assess them in the same way as any other computer-implemented invention. All the guidance contained above in 1.35 to 1.44.5 (#ref1-35) should be followed. The models and algorithms on which AI inventions are based are inherently mathematical in nature, so the mathematical method exclusion should also be considered carefully (see 1.29 to 1.29.5 (#ref1-29).

1.45.1

Since they are computer-implemented inventions, examiners may use the signposts to help them assess whether AI inventions make a relevant technical contribution. For example, if an AI invention is directed to an external technical process (see 1.36.3 (#ref1-36-3)) or if it forms part of the internal workings of a computer (see 1.36.4 to 1.36.7 (#ref1-36-7)) then it will not be excluded. Likewise, if an AI invention solves a technical problem lying outside, or within, the computer itself, it will not be excluded (see 1.36.8 (#ref1-36-8)). However, if an AI invention is directed to an excluded process (e.g. a business method) and there is no more to it, it is likely to be excluded (see 1.39 to 1.39.5 (#ref1-39)).

1.45.2

Examiners should consult the Guidelines for examining patent applications relating to artificial intelligence (AI) (https://www.gov.uk/government/publications/examining-patent-applications-relating-to-artificial-intelligence-ai-inventions/guidelines-for-examining-patent-applications-relating-to-artificial-intelligence-ai) for further guidance on the examination of AI inventions.

Quantum computing

1.46

As noted in 1.35.3 (#ref1-35-3), the definition of a computer and computer program cover quantum computers and their programs. As a consequence, applications involving programs for quantum computers will be assessed by applying the Aerotel steps along with the guidance of the signposts in AT&T and HTC v Apple.

Quantum computers are analogous to their classical counterparts in that they can be programmable. They can be adapted to implement specific hard computations like classical co-processors (for example in classical-quantum hybrid techniques such as Variational Quantum Eigensolver, VQE). Given these analogies with the classical scenario, the signposts are useful in the quest to find a technical effect or contribution for quantum computer programs.

1.46.1

Following the guidance of the signposts, there are generally no issues of patentability under section 1(2) when a computer program, either quantum or classical, makes a contribution towards a quantum computer operating in a new or improved way. Equally, there are no issues when the computer program results in a technical effect at the architectural level of the quantum computer. In summary, when a computer program is about the physical implementation and/or operation of the hardware, e.g. aspects of superconducting and/or photonic circuits or gates for controlling, processing and measuring qubits it is likely to escape exclusion.

By way of example, programs for quantum computers may escape exclusion when: they are applied to a technical process, i.e. if the program results in a technical effect in a non-excluded area; or the program achieves a technical effect at the core or implementation level of the quantum computer or quantum/classical hybrid systems.

A relevant technical effect may also be found in detecting and correcting errors of the quantum computer. Mitigating a shortcoming of quantum hardware in the current Noisy Intermediate-Scale Quantum (NISQ) era by adapting the program design, e.g. at the logical qubit level and/or by compiling or transpiling, may also result in a relevant technical effect if it does so by overcoming rather than merely circumventing the perceived technical problem (as per signpost v)), e.g. where the problem is short decoherence time and/or noise mitigation.

1.46.2

The office decisions in BL O/130/22 (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl?BL_Number=O/130/22), O/935/22 (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl?BL_Number=O/935/22), O/1193/23 (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl?BL_Number=O/1193/23) are all concerned with programs for quantum computers where there was no technical contribution. Although, they precede the judgment of Emotional Perception they nevertheless use the Aerotel test as a basis for the decision. These decisions highlight that when there is a technical application involving the use of a quantum computer, then there is a relevant technical effect.

The programs for finding electron energy levels in atoms (BL O/130/22 (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl?BL_Number=O/130/22), O/1193/23 (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl?BL_Number=O/1193/23)) and stochastic control processes (O/935/22 (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl?BL_Number=O/935/22)) were all refused.

BL O/130/22 concerns an improved method of determining energy levels of atomic systems in a classical/quantum computing system by iteratively adjusting a trial state. Although the data used by the method represented “something concrete, i.e. the physical quantum state of an atomic system”, the Hearing Officer observed that the point was “whether the data relates clearly enough to something technical in nature, rather than to something physical”. A comparison was drawn with Halliburton in that “both make use of an iterative methodology to produce a result” but in the case of Halliburton the application is “directed towards designing a drill bit, which Birss J found to be technical”. A final remark in the decision is made on saving amendments based on limiting the claims to possible applications: this might not be enough when “the details as to how the invention currently claimed could or would be used for such applications is extremely sketchy”. Again, this was contrasted to Halliburton “where the entire method was specifically focussed on the design of a drill bit”.

in BL O/935/22 ways of operating the hardware that are novel/inventive only because of the specific program requirements were considered not to provide a technical effect beyond what is normally required to execute generic programs. Such ways of operating the hardware fall short of the possible allowable effect of “reconfiguring the computer architecture at the hardware level”.

Quantum computer hardware executes a program by effecting changes to the quantum state of physical qubits, which are then determined by measurement: these operations can be considered to be an example of what is normally required to execute a program on a quantum computer. In BL O/1193/23 the above point was made by analogy to a classical computer operating using electrical changes to transistors.

1.46.3

Compilers and transpilers are widely employed in NISQ-era quantum computation. As far as compilers are concerned, in BL O/066/06 (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl.htm?BL_Number=O%2F066%2F06&submit=Go+%BB) the Hearing Officer observed that:

“the act of compilation in a computer processor is analogous to that of translating from one foreign language to another…In much the same way that it would not be right to grant patents to the process of foreign language translation, so too is it not right to allow patents to the mere compilation of high-level computer languages into application code…”

and equally observed that a compiler can make technical advances in the art when it is not “simply the conversion of one language to another”, e.g. when the contribution

“results in a faster, more accurate compiler… These advantages…are technical advantages, not merely “cosmetic” changes to the way the compiler software operates, how it is written or how it interacts with its interfaces”.

Examples of non-technical compilers are BL O/085/10 (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl.htm?BL_Number=O%2F085%2F10&submit=Go+%BB) (where source code for a second processor was translated from source code for a first processor) and BL O/173/08 (https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl.htm?BL_Number=O%2F173%2F08&submit=Go+%BB) (where two instructions are replaced by a SIMD instruction).

Section (d) - Presentation of information

Scope of exclusion

1.47

Inventions relating to the presentation of information are excluded unless they make a technical contribution. The presentation of information includes both the provision of information and also how the information is expressed (Autonomy [2008] EWHC 146 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2008/146?query=%5B2008%5D+EWHC+146+%28Pat%29) [30]). The provision of information is not confined to the content of the information but also encompasses how it is delivered (Gemstar v Virgin [2009] EWHC 3068 (Ch) (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2009/3068?query=%5B2009%5D+EWHC+3068+%28Ch%29) [56]). The expression of the information relates to how the information is presented, e.g. the font used (Townsend [2004] EWHC 482 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2004/482?query=%5B2004%5D+EWHC+482+%28Pat%29) [8]-[11]).

1.47.1

Presentation of information is not limited to visual information, but also covers other ways of presenting information, such as audio (Garmin v Philips [2019] EWHC 107 (Ch) (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2019/107?query=Garmin+Philips+%5B2019%5D+EWHC+107+%28Ch%29); HTC v Yozmot [2010] EWHC 786 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2010/786?query=%5B2010%5D+EWHC+786+%28Pat%29)) or haptic information (Immersion Corporation BL O/268/07 (https://www.ipo.gov.uk/p-challenge-decision-results/o26807.pdf)). It covers displaying information in a different format, in a different way or in a different quantity (Gemstar (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2009/3068?query=%5B2009%5D+EWHC+3068+%28Ch%29) v Virgin [58]). Choosing where and how to display information is also the presentation of information (Autonomy (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2008/146?query=%5B2008%5D+EWHC+146+%28Pat%29) [45]).

1.47.2

The law of presentation of information was reviewed by the High Court in Gemstar v Virgin (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2009/3068?query=%5B2009%5D+EWHC+3068+%28Ch%29) and subsequently in Garmin v Philips (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2019/107?query=Garmin+Philips+%5B2019%5D+EWHC+107+%28Ch%29). A presentation of information achieves patentability when there is a real-world technical achievement outside the information itself (Gemstar v Virgin (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2009/3068?query=%5B2009%5D+EWHC+3068+%28Ch%29) [57]). This may be realised when there are new technical features in the manner that information is generated or presented (Garmin v Philips (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2019/107?query=Garmin+Philips+%5B2019%5D+EWHC+107+%28Ch%29) [278]). More generally, the actual contribution made by an invention may not be excluded as a presentation of information if it provides a technical solution to a technical problem (Garmin v Philips (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2019/107?query=Garmin+Philips+%5B2019%5D+EWHC+107+%28Ch%29) [281]) or if it provides a technical effect serving a technical purpose (Garmin v Philips (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2019/107?query=Garmin+Philips+%5B2019%5D+EWHC+107+%28Ch%29) [283]). However, if a presentation of information is, in substance, no more than a claim to information content or to its mere delivery, then it will be excluded under s.1(2)(d). In summary, to be a patentable invention, a presentation of information must make a contribution to the known art that is technical in nature.

1.47.3

In both Gemstar v Virgin (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2009/3068?query=%5B2009%5D+EWHC+3068+%28Ch%29) and Garmin v Philips (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2019/107?query=Garmin+Philips+%5B2019%5D+EWHC+107+%28Ch%29), the UK courts quoted sections of the EPO guidelines (as they were at the time) with approval. The EPO guidelines can therefore be considered a useful guide for identifying when a presentation of information may provide a technical effect serving a technical purpose, though it must be kept in mind that the contribution must be considered in its entirety and the essential question is whether that contribution is technical.

Physical apparatus involved in the presentation

1.48

The exclusion cannot be escaped by wrapping up some processes or apparatus within the claim if the contribution of the claim is merely the content of the information. The substance of the matter must therefore be considered rather than merely the form of the claims.

1.48.1

In Townsend BL O/266/03 (https://www.bailii.org/uk/cases/UKIntelP/2003/o26603.pdf), the application related to an advent calendar where further markings are provided on the doors to indicate which of multiple users is intended to open each door. The Hearing Officer found that the characterising feature of the claim was merely the additional indicium, and this merely provided information to the user. The constructional features of the calendar were well known and the calendar was used in the conventional way. This was therefore found to relate to the presentation of information as such and excluded. The decision was upheld on appeal (Townsend [2004] EWHC 482 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2004/482?query=Townsend+%5B2004%5D+EWHC+482+%28Pat%29)).

1.48.2

Similarly, in Crawford [2005] EWHC 2417 (Pat) (https://www.bailii.org/ew/cases/EWHC/Patents/2005/2417.html) the court found that a display system for a bus to indicate whether it is operating in a drop-off only mode of operation was excluded as presentation of information as such. As there was no advance in the visual display units of any kind, the contribution to the art was simply in the nature of the information displayed on the outside of the bus.

1.48.3

In contrast, where the contribution involves a technical effect on the apparatus itself then a claim involving the presentation of information will be patentable. For example, in HTC v Apple [2012] EWHC 1789 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2012/1789?query=%5B2012%5D+EWHC+1789+%28Pat%29) providing visual information about the progression of a ‘slide to unlock’ gesture on a touchscreen device was considered to contribute a real-world technical effect to the device itself in the form of an improved switch (see [241]). Similarly, in RIM BL O/179/14 (https://www.ipo.gov.uk/p-challenge-decision-results/o17914.pdf) the invention related to providing a direction identifier indicia for indicating the function of a virtual key in accordance with the operating language of the keyboard. The hearing officer found that the contribution did not fall solely within the presentation of information because it provided additional functionality to the keyboard of the device.

Information representing functional data

1.49

Representations of data related to the functioning of technical systems are considered to lie outside the presentation of information exclusion. In T 0163/85 (Colour television signal/BBC) (https://www.epo.org/en/boards-of-appeal/decisions/t850163ep1), the EPO Board of Appeal found that a claim to a colour television signal was not excluded as a presentation of information because the signal inherently comprised technical features of the TV system in which it was being used. The board distinguished this from a TV system solely characterised by the information, e.g. moving pictures, modulated upon a standard TV signal, which they considered may fall under the exclusion.

1.49.1

This concept was applied by the EPO Board of Appeal in T 1194/97 (Data structure product/PHILIPS) (https://www.epo.org/en/boards-of-appeal/decisions/t971194ex1) where a record carrier having data recorded thereon was considered analogous to a modulated TV signal. The board considered it appropriate to distinguish in a corresponding way between data which encodes cognitive content, e.g. a picture, in a standard manner and functional data defined in terms which inherently comprise the technical features of the system in which the record carrier is operative. To illustrate the significance of the distinction between cognitive data and functional data, the board pointed to the fact that the complete loss of the cognitive data would have no effect on the technical working of the system, while the loss of the functional data would impair the technical operation or bring the system to a complete halt.

Examples of technical effects

1.50

The contribution made by an invention may not be excluded as a presentation of information if it provides a technical solution to a technical problem or if it provides a technical effect serving a technical purpose (Garmin v Philips (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2019/107?query=Garmin+Philips+%5B2019%5D+EWHC+107+%28Ch%29) [281], [283]).

1.50.1

In Gemstar v Virgin (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2009/3068?query=%5B2009%5D+EWHC+3068+%28Ch%29), there were three patents at issue all related to television electronic programme guides (EPGs). The first allowed the user to select a single channel from a grid of channels in order to display the information related to only that channel in a list format. The purpose was to present the information in a user-friendly way. This was found to have no technical effect and was thus found to be excluded as a presentation of information ([59], [60]). The second patent related to limiting the EPG’s display of programmes on the screen to only those selected as favourites by the user. The whole purpose was to limit information that would otherwise be presented. Again, this was considered to lack any technical effect ([148]). The third patent related to using the EPG to control the transfer of a recorded programme to a secondary recorder. This was found to have a technical effect outside the concept of presenting information ([235]).

1.50.2

The invention in Starsight v Virgin [2014] EWHC 828 (Pat) (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2014/828?query=%5B2014%5D+EWHC+828+%28Pat%29) also related to EPGs, and as with the first two patents in Gemstar (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2009/3068?query=%5B2009%5D+EWHC+3068+%28Ch%29) v Virgin, it was found that a contribution lying simply in the idea of allowing the user to determine whether certain information is presented or not did not provide a technical effect ([202], [203]). However, a contribution lying in the specific methodology by which programme schedule information is restricted and displayed was found to be technical ([204]).

1.50.3

In HTC v Yozmot (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2010/786?query=%5B2010%5D+EWHC+786+%28Pat%29) the invention related to a system where a customised message is transmitted along with a call and played through a special loudspeaker in the receiving mobile phone for the purpose of identifying unknown callers. The judge found that, while the invention involved the audible presentation of information, the contribution had technical character because the invention provided a technical solution to the problem of identifying unlisted or unknown callers ([170]).

1.50.4

In HTC v Apple (https://caselaw.nationalarchives.gov.uk/ewhc/pat/2012/1789?query=%5B2012%5D+EWHC+1789+%28Pat%29) an invention relating to providing visual information about the progression of a ‘slide to unlock’ gesture on a touchscreen device was not excluded as presentation of information because it contributed a real-world technical effect in the form of an improved switch (see [241]).

1.50.5

In Garmin v Philips (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2019/107?query=Garmin+Philips+%5B2019%5D+EWHC+107+%28Ch%29) the claim involved reducing the volume of audio entertainment when the device presents an athlete with real-time performance information. The judge considered this was more than presentation of information because the problem of how to enable the athlete to simultaneously listen to music and to be provided with aural feedback on performance was technical. The solution of combining the aural feedback with the music by a switching mechanism or mixer was thus considered to provide a technical contribution ([290], [291]).

User interfaces

1.51

User interfaces, and particularly graphical user interfaces (GUIs), enable users to interact with computing devices and enable computing devices to present information to users. Inventions relating to user interfaces will therefore often engage the presentation of information and/or computer program exclusions under section 1(2). As discussed above, in order to be patentable such inventions must provide a technical contribution.

1.51.1

In Gemstar v Virgin (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2009/3068?query=%5B2009%5D+EWHC+3068+%28Ch%29) it was considered that providing a better (or new) user interface was not a technical effect in itself ([59]). The judge stated at [50], “The fact that what the user perceives and interacts with is “better” does not make the advance technical at all … One has to look to see what the effect actually is”, concluding at [59], “what matters is technical effects”.

1.51.2

Over a number of decisions discussed below, the EPO Boards of Appeal have developed a consistent line of reasoning to assist in the determination of whether GUIs provide a technical effect. In Garmin v Philips (https://caselaw.nationalarchives.gov.uk/ewhc/ch/2019/107?query=Garmin+Philips+%5B2019%5D+EWHC+107+%28Ch%29) the High Court agreed that this reasoning provides a useful test when focusing on a feature of the claim which relates to presentation of information, but warned that the actual contribution of the invention must be looked at in its entirety to answer the essential question of whether the contribution is technical.

1.51.3

In T 1143/06 (Data selection system/BT) (https://www.epo.org/en/boards-of-appeal/decisions/t061143eu1) the claim related to displaying files of a database as elements on a screen and moving the elements in accordance with sort statements such that differences between respective data files can be observed on the display as relative movements between the respective elements. The EPO Board of Appeal found this to be non-technical because the effect was merely the impression it makes on the user in being able to more easily evaluate the data files in a database. Lowering the cognitive burden of the user is therefore not considered a technical effect in itself.

1.51.4

In T 1741/08 (GUI layout/SAP) (https://www.epo.org/en/boards-of-appeal/decisions/t081741eu1), the claim related to the specific layout of a GUI that makes it easier for an inexperienced user to input data. The board summarised the applicant’s argument as a chain of effects: the improved layout lowers the cognitive burden on the user; the user therefore responds more quickly; and the computer therefore requires fewer resources. However, in terms of technical effects the board considered this to be a broken chain. The improved layout produces a psychological effect on the user and the user produces a technical effect on the computer, but this is not the same as the improved layout producing a technical effect on the computer. The board went on to consider if the first effect alone provided a technical effect but found it did not. Following the reasoning of T 1143/06 (https://www.epo.org/en/boards-of-appeal/decisions/t061143eu1), the board considered a GUI layout as such to be non-technical and noted that effects related to human perception, including the effects of GUIs, are generally not of a technical nature because they usually depend on personal factors (e.g. culture, gender, age, past experiences, etc.) and are thus subjective. However, the board concluded that if there is something other than the simple choice of what information to display and with what layout to display it, then the displayed information might have a technical effect.

1.51.5

According to the board in T 0336/14 (Presentation of operating instructions/GAMBRO) (https://www.epo.org/en/boards-of-appeal/decisions/t140336eu1), one such technical effect is where the presentation of information constitutes an operation state, condition, or event internal to the underlying technical system prompting the user to interact with it in a continued and/or guided way for enabling its proper functioning. However, if the information is exclusively aimed at the mental activities of the user as the final addressee then it is considered non-technical. In this case the claim related to a process for assisting an operator of a blood treatment machine, wherein operating instructions are displayed for readying the machine for use alongside pictographs representing configurations of the machine correlated to the operating instructions. The board noted that the displayed content constitutes pre-stored static information so the selection of any operating instruction by the operator is not conditional on any instant internal state of the machine, nor does the display of the pictograph provide any details on the current operating state of the machine. The board therefore found that the presentation of information could not credibly support a continued and guided human-machine interaction process and so did not assist the user in performing the technical task of operating the machine. The board concluded that, at most, the displayed information simply aids the user in comprehending or memorising the steps to be taken for setting up the blood treatment machine, but found that this effect was dependent on the personal skills and preferences of the user and therefore pointed away from a technical effect.

1.51.6

This reasoning was followed by the board in T 1802/13 (Brain stimulation/CLEVELAND) (https://www.epo.org/en/boards-of-appeal/decisions/t131802eu1). The contribution related to displaying monitored data and calculated data superimposed on a patient-specific atlas of the brain tissue in order to aid a surgeon during an operation. In determining whether the presentation of information was technical, the board found that the main issue to be established was whether the underlying user interface together with the manner in which cognitive content is presented credibly assists the user in performing a technical task by means of a continued and guided human-machine interaction process. Applied to the facts of the case, the board found that rather than credibly and causally assisting the surgeon in performing the task of neurosurgical operations via a continued and/or guided human-machine interaction process, the presentation of information simply addressed solely the user’s mental process and only aided the surgeon depending on the surgeon’s cognitive capabilities or preferences.

1.51.7

In summary, for GUIs defined by the layout or content of the information presented, there is unlikely to be a technical effect unless the information presented credibly and causally assists the user in performing a technical task as part of a continued and/or guided human-machine interaction process, the effect of which does not depend on subjective factors related to user preference or ability.

Exploitation contrary to public policy or morality

1.52

Sections 1(3) and 1(4) were amended by the Patents Regulations 2000 (SI 2000 No.2037) so that the wording would more closely reflect the wording of article 27(2) of the TRIPS agreement. Section 1(3)(a) had previously stated that a patent would not be granted for an invention whose “publication or exploitation” would “be generally expected to encourage offensive, immoral or antisocial behaviour”. In practical terms, the effect of s.1(3) remains the same, which is to prevent the grant of patent rights for inventions which the general public would regard as abhorrent or from which the public need protection. It provides a reasonably objective test which has to be applied to each invention and its particular set of facts and circumstances. Clearly what is to be regarded as contrary to public policy or morality will vary according to changes in social attitudes and on no account ought examiners to allow their own personal and individual beliefs to colour their judgment on this matter. The decision of Aldous J in the case of Masterman’s Design [1991] RPC 89 (https://doi.org/10.1093/rpc/1991rpc89) under a similar provision of the Registered Designs Act 1949 deals with issues broadly corresponding with those which may arise under s.1(3). The Patents Act 1977 (Isle of Man) Order 2003 (SI 2003 No. 1249) amended sections 1(3) and 1(4) for the Isle of Man.

[Only in the clearest cases should examiners invoke this subsection and then only following consultation with their Group Head. Any genuine doubt should be exercised in favour of the applicant with an appropriate minute being created. ]

1.53

Unlike under the previous s.1(3)(a), the exclusion from patentability is not activated if mere publication of the invention, as distinct from its exploitation, would be contrary to morality. If, however, the specification includes matter the publication or exploitation of which would generally be expected to encourage offensive, immoral or antisocial behaviour, then (irrespective of whether the invention itself is open to objection under s.1(3)) the situation can be dealt with by excision of the offending matter under s.16(2) - see 16.34-16.37 (/guidance/manual-of-patent-practice-mopp/section-16-publication-of-application/#ref16-34).

1.54

a.53(a) EPC is also relevant

The corresponding provision of the EPC (see 1.06) refers to “inventions the publication or exploitation of which would be contrary to ‘ordre public’ or morality”. In the Harvard “oncomouse” case T 315/03 (http://legal.european-patent-office.org/dg3/biblio/t030315ex1.htm) ([2006] 1 OJEPO 15, [2005] EPOR 31) (see also 76A.02.1 and 76A.05), the Board of Appeal endorsed the definitions of “ordre public” and morality provided in Plant Genetic Systems T xx-xxxx-xxxx OJEPO 393 (http://legal.european-patent-office.org/dg3/biblio/t930356ex1.htm) and held that the assessment of these concepts should be made as of the filing or priority date of the application. The concept of “ordre public” was accepted as covering the protection of public security and the physical integrity of individuals as part of society, and encompassed the protection of the environment. In relation to morality, the Board in T 356/93 held that the culture inherent in European society and civilisation should be the basis for determining what behaviour is right and acceptable, and what behaviour is wrong. However, the Board in oncomouse added that in making an assessment of morality, no single definition of morality based on e.g. economic or religious principles represents an accepted standard in European culture, and opinion poll evidence was of little value. For animal manipulation cases, the Board of Appeal in T 315/03 endorsed the guidance provided in its earlier consideration of the Harvard “oncomouse” application (case T 19/90 (http://legal.european-patent-office.org/dg3/biblio/t900019ep1.htm) [1990] 12 OJEPO 476). This case held that the possible detrimental effects and risks had to be weighed and balanced against the merits and advantages aimed at. In particular, the basic interest of mankind to remedy disease had to be set against the protection of the environment of uncontrolled dissemination of unwanted genes and the avoidance of suffering to animals, including the possibility of using non-animal alternatives. In balancing these factors, the Board in T 315/03 allowed claims covering transgenic “mice”, refusing broader claims encompassing rodents (see 76A.02.1 (/guidance/manual-of-patent-practice-mopp/section-76a-biotechnological-inventions/#ref76A-02-1)).

1.55

For biotechnology inventions, in addition to the general exclusion of s.1(3), Schedule A2 of the Patents Act specifies that certain categories of invention are not patentable inventions; these are discussed in 76A.02 - 76A.06 (/guidance/manual-of-patent-practice-mopp/section-76a-biotechnological-inventions/#ref76A-02) and the Examination guidelines for patent applications for biotechnological inventions (https://www.gov.uk/government/publications/examining-patent-applications-for-biotechnological-inventions).

1.56

Section 1(4) is a rider to section 1(3) to make it clear that an act or action prohibited by a law is not to be considered as necessarily the same thing as contrary to public policy or morality. (One reason for this is that a product which could not lawfully be used in the UK may be manufactured lawfully in the UK for export to countries where its use is not illegal). However the existence of a law or regulation may be a material fact to be taken into consideration in determining whether to refuse an application under s.1(3). The nature and probable uses of the invention will need to be considered as well as the exact terms of the prohibition. Thus if the prohibition is directed unconditionally to the very act which the inventor proposes very careful deliberation must be given as to whether to invoke s.1(3). In such cases a useful test is to consider why the prohibition exists. For example it is considered that the Landmines Act 1998 (implementing the Ottawa Convention) and the Cluster Munitions (Prohibitions) Act 2010 (implementing the Convention on Cluster Munitions) were passed because the public in the UK generally now consider the development, manufacture and use of anti-personnel mines and cluster munitions to be immoral. In addition, UK is a signatory to other weapons conventions which prohibit categories of weapon, including the Chemical Weapons Convention and the Biological and Toxin Weapons Conventions; these have been implemented in UK law by the Chemical Weapons Act 1996 and the Biological Weapons Act 1974 respectively. Again, the signing of the conventions and the passage of the legislation indicate that the general feeling of the public in the UK is that the production and use of these weapons is immoral. However, it should be noted that both these Acts recognise that agents capable of use as a chemical or biological weapon may have legitimate purposes. In cases in which an invention can be exploited legally albeit in accordance with stringent regulations, it would be very difficult to argue that s.1(3) applies and the application for a patent refused.

[Patent applications which may relate to weapons which are considered contrary to public policy or morality are dealt with by Security Section. Any concerns about such applications should be raised with them.]

[Where an application relates to an anti-personnel mine or cluster munition; anything which is stated to be a part for such a weapon; a method relating to production, dispersal, concealment or delivery of such a weapon; or anything which appears to be usable only as a part for such a weapon (even if not specifically stated) the examiner should consider whether any patentable matter would remain if all aspects related to such weapons were deleted. The same question should be considered for any application which appears to relate to chemical or biological weapons or their production, dispersal, concealment or delivery. However, it is important to remember that agents capable of use as a chemical or biological weapon may have legitimate purposes. Such agents may therefore be patentable providing they are capable of a legitimate industrial application, and legitimate uses of such agents may also be protected. Patent applications relating to protections against, and treatments to counter, biological or chemical weapons are not excluded under s.1(3).]

[At search stage, if the examiner determines that there is no potentially patentable matter, they should issue a s.18(3) report raising an objection under s.1(3) prior to search (see 17.96.1 - 17.96.4 (/guidance/manual-of-patent-practice-mopp/section-17-search/#ref17-96.1)). If an application has been searched but not granted, the examiner should raise an objection under s.1(3) at the next opportunity.]

[If the application has not yet been published and it contains potentially patentable matter, the examiner should prepare a copy suitable for publication from the originally filed documents, deleting all aspects relating to such prohibited weapons. This matter will not be open to public inspection following publication and should not be kept on the open part of the file. The applicant should be informed that this has been done and that no patent will be granted relating to such matter. The applicant has no appeal against this deletion but can argue that it should be restored before grant. See 16.34-16.37 (/guidance/manual-of-patent-practice-mopp/section-16-publication-of-application/#ref16-34).]

[As it is an offence under both the Landmines Act 1998 and the Cluster Munitions (Prohibitions) Act 2010 to “assist, encourage or induce any other person” to develop, manufacture, use or sell these weapons, certain requests for administrative actions which will have an effect outside the Office will be refused. Administrative actions we will refuse to carry out are: supplying certified office copies, renewing a previously granted patent, and forwarding EP or PCT applications to the relevant authorities. However, if staff are unaware of the nature of the application when they carry out these actions, they are not at risk of committing an offence. If staff do become aware that a case that they are handling relates to an anti-personnel landmine or cluster munition, they should refer the matter to Security Section.]

[The Chemical Weapons Act 1996 and the Biological Weapons Act 1974 do not have equivalent provisions which make it an offence for a person to “assist, encourage or induce any other person” to develop, manufacture, use or sell these weapons. It is therefore not considered that administrative acts (as outlined above) would constitute offences under these Acts. Nevertheless, concerns that either applications or granted patents relate to such weapons should be raised with Security Section.]

Plant and animal varieties, and “essentially biological processes”

1.57

Prior to the Patents Regulations 2000, s.1(3)(b) set out that a patent would not be granted for “any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological process or the product of such a process”. These exclusions remain in place, and are now found, along with others which relate to biotechnological inventions, in Schedule A2 to the Act, introduced by the Patents Regulations 2000 and made under section 76A of the Act, which was also introduced by those Regulations (see 76A.01 - 06 (/guidance/manual-of-patent-practice-mopp/section-76a-biotechnological-inventions/#ref76A-01) and the Examination Guidelines for Patent Applications relating to Biotechnological Inventions in the Intellectual Property Office (https://www.gov.uk/government/publications/examining-patent-applications-for-biotechnological-inventions)).

1.58

The white paper “Patent Law Reform” (Cmnd 6000) noted that the patent system “must evolve in response to changing conditions”. This was done under previous legislation by continually re-interpreting the centuries-old definition of invention as “any manner of new manufacture”. The present Act controls what is to be regarded as an invention for which a patent monopoly may be granted by means of the definitions set out in the foregoing subsections. The present subsection gives the necessary measure of flexibility to this control, whilst reserving to Parliament the authority to approve it. This would be at the instigation of the Secretary of State, who would normally take such action following the established consultative processes.