Williams Powell

British and European Patent and Trade Mark Attorneys

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Williams Powell

11 Staple Inn
United Kingdom

T: +44 207 242 7005

F: +44 207 242 7115

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Recent News:

UK ready for the Unified Patent Court
On 8 February 2018, the final legislation needed for the UK to be ready for the Unified Patent Court was passed.  The Queen and her Privy Councillors signed off the Order which is available here ...
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Brexit to have no effect on UK’s dealings with the EPO
Brexit will have no consequence on the UK in connection with the European Patent Office (EPO), either for applicants or for Patent Attorneys in the UK, as confirmed by the EPO. In its notice dated 25...
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Delays to Opening of Unified Patent Court?
It was understood that UK Government had planned to ratify the UPC agreement in May 2017 so that the Unified Patents Court could open by the end of the year.  However, that timetable now looks li...
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UK Government Preparing to Ratify Unified Patent Court Agreement
On 28 November 2016 the UK government confirmed that it is proceeding with preparations to ratify the Unified Patent Court Agreement (UPCA), which is part of the process required to establish the Unit...
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EPO Added Subject Matter Test is Relaxed
Over the past few years, the assessment by the European Patent Office of any amendments made to an application or patent in connection with the issue of added subject matter has been extremely strict....
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UK Procedures Assist German Patent Litigation
There are two primary schools of thought in patent litigation proceedings in Europe: 1) the unitary trial system followed for example by the UK Courts, where the issues of validity and infringement of...
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We are pleased to report that UKIPO patent examination practice concerning the link between computer programs and mental acts has recently moved closer to that of the EPO.  We have argued for some time that the UKIPO's approach to excluded subject matter was incorrect, unfair and inconsistent with precedents set by the UK Courts. Earlier this month, His Honour Judge Birss QC decided a case in the UK High Court that goes some way to redress these issues.  

The case concerns a UK patent application directed to a computer program for designing a drill bit by simulating drill bit performance (GB2443124A). The UKIPO refused the patent application filed by Halliburton Energy Inc for being a mental act, a mathematical method and a computer program as such. Halliburton appealed to the High Court who overturned the UKIPO's refusal.

In the last 2-3 years, the test applied by the UKIPO in deciding whether something fell into the mental act exclusion was a "broad construction" of the exclusion.  It essentially excluded anything capable of being performed mentally, regardless of how it is claimed. This meant that objections based on this test were routinely raised against computer-implemented inventions, no matter how clever or technical.

In this case, the judge held that the UKIPO's approach was wrong: 

"In my judgment the correct scope of the mental act exclusion is a narrow one.   Its purpose is to make sure that patent claims cannot be performed by purely mental means and that is all.  The exclusion will not apply if there are appropriate non-mental limitations in the claim."

"Approached on the correct, narrow basis, the mental act exclusion is irrelevant in this case.  The claimed method cannot be performed by purely mental means and that is the end of the matter.  Put another way, the contribution is a computer implemented method and as such cannot fall within the mental act exclusion. "

"That does not mean it is necessarily immune from the computer program exclusion but that is a different matter.  Is it more than a computer program as such?  The answer is plainly yes.  It is a method of designing a drill bit.  Such methods are not excluded from patentability by Art 52/S1(2) and the contribution does not fall solely within the excluded territory.  Drill bit design is not a business method, nor a scheme for playing a game nor (as I have held) is this claim a scheme for performing a mental act."

The judge then went on to deal with the other grounds of refusal:

"Is it more than a computer program as such. The answer is plainly yes. It is a method of designing a drill bit."

As to mathematical method, whilst mathematics was involved, "the data on which the mathematics is performed….represent[s] something concrete (a drill bit design)."

Allowing the appeal, the Judge concluded with the statement that "as a matter of law computer implemented inventions are just as patentable in the UK as in the EPO."

The UKIPO have indicated they will not appeal and that Examiners will now apply the narrow approach when considering the mental act exclusion.