EXCLUDED SUBJECT MATTER

What can and what cannot be patented? Any product or process is usually considered to be suitable subject matter for a patent unless it is specifically excluded subject matter and therefore excluded from protection.

The various exclusions from patentability are set out below.  Note that each exclusion only applies to the extent that an application relates to excluded subject matter “as such”.  That is to say, an invention is not necessarily excluded simply because it includes an element which is not patentable.

Although the Patents Act does leave open the possibility of further unmentioned exclusions, this has rarely been relevant in practice.

A DISCOVERY, SCIENTIFIC THEORY OR MATHEMATICAL METHOD

Abstract and purely intellectual ideas are excluded from patentability.  A discovery may be new and may be very significant scientifically and industrially, but you cannot prevent others from taking advantage of that discovery per se.

That said, discoveries, theories and methods often lead to practical inventions, and those inventions are patentable.  Some examples are given below:

• The discovery that a particular known material is heat-resistant is not patentable, but a fireproof safe incorporating the material would potentially be an invention.
• A material which has always existed (undiscovered) in nature is not patentable, but a process to isolate or extract this material may be an invention.  The isolated / purified material itself is also potentially patentable.
• A theory as to how and why a known process works in the way it does is not patentable.  However, a better understanding of the mechanism behind the process may lead to improvements being made.  Those improvements would be patentable subject-matter.
• A mathematical method involving particular operations on a set of numbers to reach another set of numbers is not patentable.  However, an image enhancement system which operates on a digital image to produce an enhanced image is patentable subject-matter, even though a digital image is of course a set of numbers.

A LITERARY, DRAMATIC, MUSICAL OR ARTISTIC WORK OR ANY OTHER AESTHETIC CREATION WHATSOEVER

The wording of this section closely corresponds to the definition of works which are protected by copyright.  Copyright affords a different type of protection, which is seen to be more suitable for works of this nature.  Patents apply to technical inventions, rather than artistic works.

It should be noted that an invention is not excluded simply because its purpose is an aesthetic one.  For example, a firework is not usually intended to serve a “useful” purpose, but the construction of a firework to give a particular visual effect is a technical matter, and may be an invention.  Likewise, a musical instrument is generally used only to perform musical works, but technical improvements which make the instrument sound better may be protected by patents.

It is also worth noting that subject-matter is not excluded only because it is visual.  For example, a squash ball characterised by its blue colour was granted a patent, because the blue colour allowed for enhanced visibility during a game of squash.

SCHEMES, RULES OR METHODS FOR PERFORMING A MENTAL ACT, PLAYING A GAME OR DOING BUSINESS, AND PROGRAMS FOR A COMPUTER

This exclusion, and in particular “programs for a computer”, is probably the most controversial, most contested, and most confusingly unclear of all the categories of excluded subject matter.

Like the firework and the musical instrument examples, which are technical means to an aesthetic end, a technical invention which results in improved business efficiency will not be excluded as a business method.  For example, an improved voice recognition system which speeds up transcription of dictated letters is not necessarily excluded.  However, a business method characterised only by the use of a computer program in carrying out the method will not be allowed due to the combination of excluded categories.

A computer program may be patentable if the program provides a “further technical effect”.  For example, an invention involving computer software and enabling detection of the proper functioning of an anti-lock braking system was granted a patent.  An application, however, for a computer program implementing a fixed-odds betting system, was refused.

The law on patentability of software is still developing, and it is difficult to give general advice.  However, if you believe you have an inventive computer program, get in touch and speak to an attorney.

PRESENTATION OF INFORMATION

Presentation of information is excluded from patentability, whether it is characterised by the content or the arrangement of the information.

Exclusion under this section is usually reasonably clear-cut.  Examples include an “electronic program guide” on a television, which was found to be no more than a rearrangement of information and therefore excluded.  A claim to a signal, encryption or compression scheme will usually be allowable, as long as it is defined in terms of technical features.

A METHOD OF TREATMENT OF THE HUMAN OR ANIMAL BODY BY SURGERY OR THERAPY, AND A METHOD OF DIAGNOSIS PRACTISED ON THE HUMAN OR ANIMAL BODY

The purpose of this exclusion is to ensure that patent law does not interfere with a doctor who treats his patient.  Patents cannot be granted to methods of treatment and diagnosis.  This does not however exclude drugs or medical implements, and pharmaceutical companies are indeed some of the most prolific users of the patent system.

A method of treatment is only excluded if it is by surgery or therapy.  “Therapy” has been held to imply that there must be something wrong with the patient, that is, that the therapy must aim to cure or prevent some disease.   A method of chemical contraception is not considered to be therapeutic, since pregnancy is not a disease.   Likewise, treatments of animals which improve for example the quality of the wool, meat or other products are not excluded, because they are not treating diseases of the animal.

Methods of diagnosis are only excluded if they are performed on the body.  An extra-corporeal method which involves, for example, taking a sample of blood and carrying out tests on the blood sample may therefore be patentable.  In addition, to fall within the exclusion the diagnosis must be of an illness.  A pregnancy test or fitness test may therefore be patentable.

A method of diagnosis must include the deductive step which leads to a diagnosis and a recommended treatment.  A test which measures a particular characteristic of the body (for example, blood pressure) is not in itself a diagnostic method, even if the results are subsequently used by a doctor in reaching a diagnosis.

INVENTIONS CONTRARY TO PUBLIC POLICY OR MORALITY

Patents cannot be granted for inventions the commercial exploitation of which would be contrary to public policy or morality.  This exclusion is in practice very rarely applied, and the bar for a “moral” invention is set very low indeed.  The Patents Act goes on to say that inventions which are illegal in the United Kingdom are not necessarily excluded under this section, and it seems possible that there may be circumstances where the converse is true and an invention is immoral although its use would break no law.

Examples of inventions which are considered to be immoral include anti-personnel mines and cluster munitions, which are also illegal in the United Kingdom.