Just imagine: you have spent years working on a brilliant idea which will make your fortune, only to find that four or five years down the line, the scrooges at the Patent Office refuse to acknowledge the patentability of your invention. What are you to do? Whilst the obvious answer would be to hire an experienced patent attorney to solve the problem and put the application into order, there is always the alternative of a trip to Newport to put your case before a Hearing Officer.
The decisions of the Hearing Officers can be found on the IPO website, and at times read like a Dickensian barrage of misery as applicants attempt to explain how their circumstances should permit exception to the statutory requirements of the UK Patents Act. However, almost without exception, the result is the same as the Hearing Officer summarises the outcome:
The application was refused.
In many scenarios, the issue with the application is that the claimed concept does not fall within the definition of an invention, as laid out in section 1(2) of the Act:
1(2). It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of –
- a discovery, scientific theory or mathematical method;
- a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
- a scheme, rule or method for performing a method act, playing a game or doing business, or a program for a computer;
- the presentation of information;
but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.
It is sub-section (c) which often gives applicants the most grief of these, as it can be difficult to readily assess what constitutes a method for performing a mental act, playing a game or doing business in particular.
The test under UK law, and as is usually wielded with impunity during oral hearings, is that derived from the judgement of the Court of Appeal in Aerotel Ltd v Telco Holdings Ltd and Macrossan’s Application, which provides the four step test for determination of excluded subject-matter:
- properly construe the claim
- identify the actual (or alleged contribution)
- ask whether it falls solely within the excluded subject matter
- check whether the actual (or alleged) contribution is actually technical in nature
In most circumstances, the Aerotel/Macrossan test is used in anger, being used to frame a Patent Examiner’s objections to a particular claim. However, we can use the test as a guideline for determining whether an invention is likely to be excluded from patentability before a patent application is filed.
Exclusion Zone
For an assessment of whether an idea is excluded from patentability, it is best to walk backwards through the Aerotel/Macrossan test.
- Is there a technical contribution to your idea?
This can be a tricky thing to analyse. What makes something ‘technical’? The way to look at this is to assess whether you have any idea as to how your idea might be implemented in practice. If you are only able to describe the way your idea will work in abstract terms, then there is a risk that any patent claim to the idea will fail the Aerotel/Macrossan test.
- Does the idea fall completely into one of the excluded categories specified in section 1(2)?
This is most difficult to assess for section 1(2)(c), where there may be blending between features which are excluded subject-matter, and features which are not. It is always worth attempting to ‘pitch’ your idea to yourself, in a way that encompasses the scope of protection you would want for the idea. If the clever part of your idea is easily categorizable in one of the definitions of section 1(2), then there are likely to be issues with patentability in due course.
- Properly construe the claim and identify the contribution
This requires a claim to have been created which defines the scope of protection which you would like from your patent, and therefore is something that can be addressed by your patent attorney.
If you are able to consider the first two points relating to exclusion from patentability under the UK Patents Act, then we can assist with the preparation of suitable claims which hopefully will put you in as good a position as possible to anticipate and overcome potential excluded subject-matter objections in advance, and/or advise you before applying for a patent whether your idea is likely to face significant obstacles to grant.
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