Patent strategy: excluded matter, commercial goals, and thinking globally
This article explores patent strategy, and how to use excluded patent matter to your advantage. It will make you think about your global commercial goals, consider the differences in the patent laws in different countries, and the mindset you should have when approaching your first patent filing to protect a new development.
UK and European patent attorneys are trained to avoid the traps of excluded subject matter, including for example business methods, software (essentially raw code), mental acts, and aesthetic creations. Under Section 1(2) of the UK Patents Act 1977 and Article 52 of the European Patent Convention (EPC), these are typically non-starters.
So why would a savvy applicant as part of their patent strategy include claims that are likely to be objected to? Because sometimes, the goal isn’t just to win in the UK or Europe – it’s to play a global game.
6 Excluded Matter Questions Answered Plus A Conclusion:
- Why consider excluded matter as part of my strategic alignment across jurisdictions?
- With excluded matter, how can I tactically use divisional/continuation patent applications?
- Can excluded matter be used to frame the invention to the Examiner?
- What about using excluded matter as a defensive disclosure and prior art creation?
- Can including excluded matter help with procedural leverage and examiner dialogue?
- What are the drafting strategies when including excluded matter claims?
- Conclusion: File Smart, Think Global
Strategic Alignment Across Jurisdictions
Patent law is territorial. What’s excluded in one jurisdiction may be perfectly patentable in another.
- In the US, software, business methods and medical methods can be patentable under 35 U.S.C. §101, especially if framed with technical implementation and tied to a specific technological improvement.
- In China, software inventions are patentable if they solve a technical problem using technical means.
- In Korea, the bar for technical contribution is often lower than in Europe, particularly for AI and data processing inventions.
Including excluded matter claims in a UK or EP application helps maintain consistency across a global patent family. Even if those claims are dropped later, they serve as a placeholder for jurisdictions where they are allowable.
Example:
A medtech company develops a novel method of diagnosing a particular disease using a novel sensor apparatus. In the UK or Europe, whilst the apparatus may be patentable, the diagnostic method or process is unambiguously excluded subject-matter.
However, there may be value in maintaining claims directed towards the excluded matter (i.e. the method or process) regardless, since such claims could be patentable in other jurisdictions, such as in the USA and this could be a huge market for the patent owner.
Divisional Applications: A Tactical Reserve
Even if excluded matter claims are rejected, they can form the basis of a divisional application, especially if the invention evolves or if a different claim strategy becomes viable.
This is particularly useful in fast-moving fields like:
- Fintech
- Healthtech
- AI and machine learning
- User interface design
Example:
A claim to a method of generating personalised health recommendations might be excluded in the UK and Europe. But if the applicant later develops a specific wearable device that implements the method, a divisional patent application could be filed with claims focused on the technical implementation.
By keeping the excluded matter in the original application, the applicant preserves the priority date and the freedom to pivot when dividing their application.
Shaping the Narrative of the Invention
Even if excluded matter claims are ultimately rejected, they can help frame the invention. They signal the inventive concept and provide context for allowable claims.
This can influence:
- How the examiner interprets the technical claims
- The scope of the invention as understood during prosecution
- The drafting of future amendments
Example:
An AI-based online product recommendation engine might be excluded if claimed as a method of “suggesting products” to a user. But if the broader claim is included alongside a claim to a specific neural network architecture, the examiner may better understand the technical contribution even though the broadest possible claim cannot be permitted to grant.
In this way, excluded matter claims act as narrative scaffolding. They may not survive, but they help build the structure.
Defensive Disclosure and Prior Art Creation
Filing excluded matter claims ensures that the subject matter is disclosed and dated. This can prevent or inhibit others from patenting similar ideas in more permissive jurisdictions. In effect, you’re creating prior art to form hurdles and obstacles to block potential competitors, even if you don’t get claims granted yourself to the excluded matter features.
This is especially useful for:
- Protecting business logic or software workflows
- Blocking competitors from claiming similar systems abroad
- Establishing a public record of innovation
Example:
A start-up develops a novel pricing algorithm for ride-sharing. They know it won’t be patentable in the UK and Europe, but they include the algorithm in their European patent filing anyway. Even if the patent examiner argues that it is excluded matter, the disclosure in the published patent application becomes prior art, potentially blocking a competitor from patenting the algorithm in the USA.
Procedural Leverage and Examiner Dialogue
Sometimes, excluded matter claims are useful simply as a conversation starter. They allow you to:
- Test the boundaries of what the examiner considers technical
- Negotiate amendments
- Explore alternative claim formats
This is particularly relevant in borderline cases, where the invention sits on the edge of what’s considered technical.
Example:
A claim to a method of organising digital files might be excluded. But during prosecution, the applicant could argue that the method improves computer performance or user interaction, potentially reframing it as a technical solution.
Without the excluded matter claim, that conversation might never happen.
Drafting Strategies for Excluded Matter Claims
What would I suggest are reasonable considerations if probing the boundaries of what may be excluded matter or otherwise.
- Use layered claim sets. Include broad claims that may be excluded, alongside narrower claims with technical features so that the whole claim set doesn’t collapse.
- Use dependent (secondary) claims to add technical context. Even if the independent (main) claim is excluded, the dependent claims may survive, or provide sufficient clarity to help overcome abstract matter objections.
- Coordinate across territories. It’s helpful to ensure your claim strategy aligns with jurisdictions where excluded matter is patentable.
Conclusion: File Smart, Think Global
Filing excluded matter claims in UK or European applications as part of your patent strategy isn’t about wishful thinking (for the most part!); it’s about having strategic foresight.
Whether you’re protecting software, business logic, or user interfaces, these claims can serve as:
- Anchors for international alignment
- Signals to examiners
- Springboards for future filings
- Shields against competitor patents
When contemplating a global IP patent strategy, what’s excluded in one jurisdiction may be the key to success in another. And sometimes, the best way to win the game is to play a few moves ahead.
To learn more about how Albright IP can help you secure, protect, and commercialise your ideas, contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you.
