Many designers spend months and even years working on a development, only to encounter numerous barriers and hurdles raised by the Patent Office when trying to patent it.
In many scenarios, the issue with the patent application is that the claimed concept does not fall within the legal definition of an invention. This is given by Section 1(2) of the Patents Act, which can be summarised as follows:
- Scientific theories/discoveries and mathematical methods are unpatentable
- Aesthetic creations (e.g. literature, music and drama) are unpatentable
- Rules for games, business methods, schemes and rules, and computer programs are unpatentable
- The presentation of information is unpatentable
In particular, it is not possible to obtain a patent which is directed purely to an algorithm (clause (a) above); copyright generally covers aesthetic creations (clause (b) above); and clauses (c) and (d) are reasonably self-explanatory.
As an aside, a nice ‘presentation of information’ may be protected by a registered design instead.
Schemes, Rules and Methods – Applying UK Law
It is clause (c) above which often gives applicants the most problem, and is more often than not the reason for refusal of individual applicants’ patent applications. 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 is derived from the judgement of the Court of Appeal in Aerotel Ltd v Telco Holdings Ltd and Macrossan’s Application. This judgement provides a four-step test for determining what is excluded subject-matter.
The four-step test is as follows:
(1) properly construe the claim
In other words, what does the claim actually mean, when translated out of legalese?
(2) identify the actual (or alleged) contribution
In other words, what does the invention do?
(3) ask whether it falls solely within the excluded subject matter
Is the claim as a whole excluded under the above provisions? In other words, are you outright claiming a computer programme, for instance?
(4) check whether the actual (or alleged) contribution is actually technical in nature
If the technical features were stripped out of the claim to expose the underlying inventive concept, would the claim then fall into an excluded matter category?
In most circumstances, this Aerotel/Macrossan test is used to frame a Patent Examiner’s objections to a particular claim in a patent application.
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.
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’? 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) above?
This is most difficult to assess for clause (c) of Section 1(2), 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 should 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.
Applying Aerotel/Macrossan to your invention
If you have a pending patent application with a Section 1(2)(c) rejection raised against the claims, what can you do?
(1) Recast the claims to highlight the technical matter. Often UK Patent Examiners can attempt to pick apart a claim into component parts which are well-known in order to exclude them from consideration. It’s worth remembering that this is not necessarily the correct approach to take.
If the technical components have been combined in a clever way to solve a problem which would otherwise fall within an excluded category, there may be ways to get around the objections.
(2) Consider whether the claim category can be changed. If you have claimed a method of doing something, should you instead be claiming the apparatus that performs the method? This may add the technical characteristics which will help you to demonstrate patentability.
(3) Is the Examiner correct? Sometimes, objections can be raised which are not completely accurate, for example, if an Examiner has not fully understood the core inventive ‘nugget’ of your idea. Clarifying claims can help in this regard.
If you have received an objection to your pending application, then it’s worthwhile consulting with a patent attorney to see how we might be able to help you achieve your goals.
For ideas which are still gestating, it would be worth speaking to a patent attorney prior to filing a patent application. Lack of disclosure, and therefore lack of clarity, is a big factor in receiving objections on the grounds of excluded subject matter. We are experienced in writing patent applications with lots of options for fall-back positions, should the invention be more abstract than most. After all, a patent is potentially a twenty-year investment, and therefore it’s worthwhile getting it correct from day one!