Section 1: Patentability
Sections (1.01 - 1.47) last updated: July 2016.
Section 1: Patentable inventions
The Patents Act 1977 sets out for the first time to codify what is meant by a patentable invention. Previous legislation up to and including the 1949 Act had merely repeated the stipulation, originally set out in the Statute of Monopolies of 1623, that a patent may be granted only for a manner of new manufacture.
|A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say
(a) the invention is new;
(b) it involves an inventive step;
(c) it is capable of industrial application;
(d) the grant of a patent for it is not excluded by subsections (2) and (3) or section 4A below; and references in this Act to a patentable invention shall be construed accordingly
A patent may only be granted if the invention meets the above conditions. The fact that an invention meets the requirements of s.1(1) does not however mean that a patent must be granted, since there are other requirements, as set out in later sections, which must also be complied with.
s.125(1) is also relevant
“Invention” in this context means that which is specified in a claim. Although the term has a meaning in ordinary speech, in Biogen Inc v Medeva plc  RPC 1 Lord Hoffmann declined to attempt to define the term more closely, saying that judges “would be well advised to put on one side their intuitive sense of what constitutes an invention until they have considered the questions of novelty, inventiveness and so forth”. It is possible for a specification to contain claims which relate to patentable inventions as well as claims which define inventions which are not patentable or matters which are not inventions. In such a case amendment is necessary, since a patent should be granted only when each claim defines a patentable invention. A claim will generally be held to be bad if anything falling within its scope is not patentable.
The term “a patentable invention” is defined by setting out four conditions, all of which must be satisfied in order for an invention to qualify for the grant of a patent. Since they are expressed as positive requirements the onus is upon an applicant to demonstrate compliance when faced with a reasonable challenge. The manner in which each of the conditions (a), (b) and (c) is to be assessed is set forth in ss.2, 3 & 4 respectively. The fourth condition involves certain things which, for purposes of the Act, are not to be regarded as inventions (see 1.07 to 1.40.4) and certain inventions for which a patent will not be granted see 1.41-1.46
s.130(7)-s.91 is also relevant
The tests set out in s.1(1) and further elaborated in s.1(2)-(4) and ss.2-4 are so framed as to have, as nearly as practicable, the same effects in the UK as the corresponding provisions of the EPC; these are Articles 52-57. (More particularly, EPC aa.52(1) to (3) and 53 correspond to s.1(1) to (4)). Hence, although not binding on the Office, decisions on patentability given by EPO Boards of Appeal are of persuasive value in interpreting ss.1-4 (see 0.07-09, 1.09 and 130.30-33).
|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) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) 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.
Excluded subject matter
Section 1(2) of the Act defines certain categories of “things which are not to be regarded as inventions”, as Jacob LJ puts it in paragraph 12 of Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1  RPC 7 (Aerotel/Macrossan). The normal meaning of “invention” is therefore qualified by the removal of these categories. Jacob LJ also considered that there is no overarching principle behind the inclusion of these particular categories, and no guidance on whether they are to be construed broadly or restrictively. In particular, he noted that, as the exclusions are not expressed as exceptions, the general principle that exceptions should be interpreted restrictively does not apply to them.
The current practice in dealing with excluded matter under s. 1(2) is derived from the judgment of the Court of Appeal in Aerotel/Macrossan (see 1.09.1, 1.18, 1.20, 1.33-1.33.1, 1.34.1). This judgment considered all previous authorities on the matter, and – having been endorsed in numerous subsequent decisions – is to be treated as a definitive statement of how the law on patentable subject matter is to be applied in the UK.
Relationship with the EPC and decisions of the EPO
As discussed above (see 1.06) decisions of the EPO Boards of Appeal are of persuasive value; furthermore where the EPO Boards of Appeal have formed a settled view of European patent law, this will generally be followed by the UK courts (see 0.08) and 130.30-31).
However in Aerotel/Macrossan, the Court of Appeal analysed EPO Boards of Appeal decisions on the question of excluded matter and concluded that practice was not yet sufficiently settled to enable the Court to depart from precedent UK case-law (see 1.11). This was reiterated in Symbian Ltd’s Application  RPC 1 (Symbian) (see paragraph 46) and HTC v Apple (see 1.09.2), and it remains the case until the UK courts conclude otherwise.
In an attempt to address whether case-law concerning excluded matter is settled, and derive uniformity of application of European patent law, the President of the EPO referred four questions on the patentability of computer programs to the Enlarged Board of Appeal in October 2008 (G3/08). However, the Board concluded that the referral was inadmissible because the decisions referred to were not considered to be “divergent”, and declined to answer the questions beyond determining their admissibility. This led to the Court of Appeal reaffirming its view that practice was not yet settled in HTC Europe Co Ltd v Apple Inc  EWCA Civ 451 at paragraph 44. The assessment of whether an invention relates to an excluded category as such should therefore continue to follow the test set out in the decision in Aerotel/Macrossan.
As the Office is bound by the judgments in Aerotel/Macrossan and HTC v Apple, it cannot choose to depart from the Aerotel/Macrossan test in order to adopt EPO practice even if that practice becomes settled – such a departure can only be made by the courts. This is emphasised in Dell Products LP’s Application (BL O/321/10), amongst others.
A number of older decisions of the EPO Boards of Appeal – such as Vicom Systems Inc T0208/84 , IBM/Data processing network T0006/83  and IBM/Computer-related invention T0115/85  – were used to inform the Aerotel test, as well as other later guidance such as the AT&T signposts (see 1.37). It has been stated, in paragraph 11 of Symbian, that “as a matter of broad principle, it seems to us that the approaches in […] the great majority of cases in this jurisdiction and in the EPO, are, on a fair analysis, capable of reconciliation”. And in HTC v Apple, Kitchen LJ, at paragraph 41, stated that “…in terms of result […] it seems to me that whichever route is followed, one ought to end up at the same destination”. The result of EPO Boards of Appeal decisions on cases with similar facts may therefore be persuasive, even though the approach taken by the EPO should not itself be followed (see 130.31).
Balance of probabilities
The Court of Appeal, in paragraph 5 of Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1  RPC 7 (Aerotel/Macrossan), made it clear that assessing excluded matter involves a question of law which should be decided during prosecution of the patent application. The position is therefore assessed fully by patent examiners before grant, and objections are not to be dropped simply because the applicant asserts that the invention relates to non-excluded subject matter. The question of excluded matter is decided on the balance of probabilities, taking into account all of the evidence available. However, as it is a question of law, it is not something on which applicants are entitled to the benefit of the doubt, in the way they would be in relation to questions of pure fact (such as the date of a particular disclosure, or the scope of the common general knowledge).
Using past decisions
The Office is bound to follow the decisions of the UK courts, per the English common law doctrine of binding precedent, which states that courts and tribunals must abide by the decisions of higher courts. Therefore, the Office must follow the interpretation of the Act and the practice set out in such judgments, and apply the legal principles arrived at by the judges in those cases.
However, examiners must exercise caution in relying on the specific facts of any court judgment as support for an objection, as each case must be judged on its merits, and the facts of the individual case are certain to be different. As Pumfrey J stated in paragraph 186 of Research In Motion UK Ltd. v Inpro Licensing SARL  EWHC 70 (Pat), “The test is a case-by-case test, and little or no benefit is to be gained by drawing analogies with other cases decided on different facts in relation to different inventions.” Although the test being referenced was not the Aerotel test, the principle remains the same. Birss J, in paragraph 17 of Lantana v Comptroller-General of Patents  EWHC 2673 (Pat), noted that “[s]imply because it is possible to construct a generalised category which includes both the claimed invention […] and a previous decision in which a claim was held to be patentable, does not help. It shows that such things can be patentable in some cases but does not show that the invention in this case is patentable.”
The Office is not bound to follow the practice of the EPO Boards of Appeal for the reasons detailed above (see 1.09.1)
Hearing decisions issued by the Office are non-binding, but can be persuasive in establishing an argument.
Substance over form
When determining if an invention falls foul of the exclusions, it is critical that the examiner consider the substance of the invention rather than the form of claim provided, by looking beyond the strict literal wording of the claims. For example, when a claim is directed to a computer program, the examiner must look at what the computer program will do when run, as established in paragraph 49 of Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks  EWHC 85 RPC 14.
If the substance of an invention falls within one of the excluded categories, however, then no form of claim will circumvent an objection. If a claim is directed to a computer, but the substance of the invention is a business method running on that computer, it will still be excluded. In paragraph 44 of Aerotel/Macrossan, Jacob LJ noted that “If an inventor claims a computer when programmed with his new program, it will not assist him if he alleges wrongly that he has invented the computer itself, even if he specifies all the detailed elements of a computer in his claim.”
It is not the nature of a single embodiment of an invention which is important when determining whether it is excluded, but the nature of the central idea or invention which is embodied in the claims. To determine this, the invention claimed should be assessed and construed as a whole to see whether it comprises an advance that lies in a non-excluded field. However, as Floyd J observed in paragraph 23 of Kapur v Comptroller-General of Patents  EWHC 649 (Pat), if there are embodiments of a claim that fall within excluded subject matter, the fact that the claim is wide enough to encompass embodiments that are not excluded under s. 1(2) will not be sufficient to save it. The exclusion “will still bite to the extent that excluded subject matter is claimed”.
In his judgment in Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks , RPC 14, Kitchin J. held (at paragraph 51) that in a case where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable, then, in principle, a claim to the program itself should also be allowable. However, he added that the program claim must be drawn to reflect the features of the invention which would ensure the patentability of the method which the program is intended to carry out when it is run. Thus, following the conclusions of Astron Clinica, claims to a computer program or a program on a carrier are allowable where corresponding method and apparatus claims (or notional such claims if none exist) are/would be allowable on application of the Aerotel/Macrossan test. (A claim to a computer program stored on a carrier such as a compact disc is sometimes referred to in the US as a Beauregard claim.) However, merely including claims to a program or a program on a carrier will not make an otherwise excluded invention patentable. As Fox LJ said in Merrill Lynch’s Application  RPC 561 (page 569):
“it cannot be permissible to patent an item excluded by section 1(2) under the guise of an article which contains that item - that is to say, in the case of a computer program, the patenting of a conventional computer containing that program. Something further is necessary.”
In Macrossan’s Patent Application  EWHC 705 (Ch), Mann J (at paragraph 42) rejected submissions by the applicant that adding a product step onto an otherwise excluded claim was enough to render it patentable. This was upheld by the Court of Appeal in Aerotel/Macrossan. Similarly, in Bloomberg LLP and Cappellini’s Applications  EWHC 476 (Pat), Pumfrey J stated (at paragraph 9) that
“[a] claim to a programmed computer as amatter of substance is just a claim to the program on a kind of carrier. A program on a kind of carrier, which, if run, performs a business method adds nothing to the art that does not lie in excluded subject matter”.
Claims to a computer program for generating a system or for producing a product (for example claims of the form: ‘a computer program comprising computer-readable code for generating a system as claimed in X’ or ‘storage medium having encoded thereon code for making a system as claimed in Y’ or ‘machine readable medium having software thereon to produce the item of claim Z on a 3D printer’) will not normally be allowable unless, following the guidance of Astron Clinica, the computer program would cause an otherwise patentable process to be performed when run.
Interaction between the exclusions
The contribution made by an invention does not need to fall solely within a single excluded category for the invention to be excluded. As stated in paragraph 34 of Raytheon Company v Comptroller General of Patents, Designs and Trade Marks  EWHC 1230 (Pat) , where a contribution falls wholly within two or more exclusions, the Page 5 of 19 January 2015 invention would still be excluded. In paragraph 27 of Symbian Ltd’s Application  RPC 1, the Court of Appeal remarked obiter that one effect of the computer program exclusion is to prevent other excluded material becoming patentable merely by use of a computer in its implementation (although see 1.31 for the interaction with the mental act exclusion). Thus, for example, a business method implemented on a conventional computer system or network would be excluded as both a method for doing business and a computer program as such. Birss J expressed a similar view in paragraphs 32-36 of Halliburton Energy Services Inc’s Applications  RPC 129.
Not an exhaustive list
The phrase “among other things” suggests that the list of excluded fields is not a complete list of exclusions; however, to date, the courts have only given one example of matter which would also be excluded. In Lux Traffic Controls Ltd v Pike Signals Ltd and Faronwise Ltd  RPC 107, Aldous J observed that a method of controlling traffic as such was not patentable, regardless of whether it also fell within the business method exclusion; claims to apparatus for controlling traffic flows were allowed on the basis that the particular apparatus involved a contribution in a technical (i.e. non-excluded) field. The hearing officer in Kostuj’s Application (BL O/028/12) concluded that a method of developing a golf swing without a club was caught within the scope of the “among other things” phrasing, even if it did not fall squarely within the other exclusions.
Therefore, the exclusion may also apply to other matters which are essentially abstract or intellectual, but which do not fall clearly into one of the categories specifically listed. It is possible, although untested in the Courts, that such other matters would fall foul of the fourth step of the Aerotel test (see 1.23) as not being technical in nature.
Relationship of excluded matter to novelty and inventive step
In Lantana v Comptroller-General of Patents  EWCA Civ 1463 the Court of Appeal reiterated that the requirements of s.1(1) and s.1(2) are separate, and that claims to novel and inventive subject matter may still be excluded. In paragraph 19 of the judgment Arden LJ held: “I see no mandate in section 1 of the PA 77 for holding that it is sufficient that there is an inventive step. It is deliberate legislative policy to exclude certain matters from patentability even if they would otherwise be patentable”. This was reaffirmed in paragraph 70 by Kitchin LJ, who stated that “[t]here is no inconsistency between an acceptance that an invention […] is new and inventive and a finding that the contribution it makes falls solely within excluded subject matter”. The judge continued by remarking that “the former requires […] an assessment of whether it forms part of the state of the art or is merely an obvious step away from it”, while exclusion relates to assessing whether the contribution falls solely within excluded categories.
The Aerotel/Macrossan test
The Aerotel/Macrossan test (often referred to as the ‘Aerotel test’) is set out in paragraph 40 of the judgment in Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 2007 RPC 7 (Aerotel/Macrossan). It provides a framework for the examiner to assess, and decide upon, the issue of excluded matter. As stated in 1.08, Aerotel/Macrossan is considered to be the definitive statement of how the law relating to excluded matter is to be applied. The Aerotel test is therefore the principal tool to be used when dealing with excluded matter cases, and encompasses all previous tests within it.
The test comprises four steps, which are as follows:
(1) Properly construe the claim;
(2) identify the actual contribution;
(3) ask whether it falls solely within the excluded subject matter;
(4) check whether the actual or alleged contribution is actually technical in nature.
It was stated by Jacob LJ in paragraph 47 of Aerotel/Macrossan that the test is a re-formulation of, and is consistent with, the previous “technical effect approach with rider” test established in Merrill Lynch’s Application  RPC 561 and followed by Gale’s Application  RPC 305 and Fujitsu’s Application  RPC 608. The Court considered it, in paragraph 48, to be “a structured and more helpful way of re-formulating the statutory test.” Therefore, as Kitchin LJ notes in paragraph 44 of HTC v Apple  EWCA Civ 451 the structured approach of the Aerotel test is followed in order to address whether the invention makes a technical contribution to the art, with the rider that novel or inventive purely excluded matter does not count as a “technical contribution”.
Step 1 – construing the claim
As the court stated in Aerotel/Macrossan, the examiner must first “decide what the monopoly is before going on to the question of whether it is excluded”. There are no special considerations with regard to claim construction for step 1 of the test; the general principles, as established in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd 2005 RPC 9 and summarised in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd  RPC 8 (see 14.111-14.120, 125.01-125.25 are applied.
Step 2 – identifying the contribution
Jacob LJ outlined the considerations to be applied when identifying the contribution made by the claims in paragraph 43 of Aerotel/Macrossan – the critical factors for the examiner to consider are emphasised:
The second step – identify the contribution - is said to be more problematical. How do you assess the contribution? Mr Birss submits the test is workable – it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended.
Paragraph 44 states that, at application stage, the contribution may be taken to be that alleged by the inventor, although this cannot be conclusive; as Jacob LJ states, “[i]n the end the test must be what contribution has actually been made, not what the inventor says he has made”. Additional guidance regarding the interpretation of this paragraph was provided in IGT/Acres Gaming Inc, Re  EWHC 568 (Pat) paragraphs 23-24, which states that the examiner is not bound to accept what the applicant says, and is entitled to determine whether the alleged contribution is known or obvious, typically by performing a search.
Therefore, knowledge of the prior art will play a role in assessing the contribution; as Lewison J noted in paragraph 8 of AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents  EWHC 343 (Pat), the examiner should have “some notion of the state of the art”. This does not necessarily mean however that the contribution is defined by what is new and inventive in the claim (see 1.21). That proper consideration of the prior art can make a difference to the outcome is best illustrated by Aerotel Ltd v Wavecrest Group Enterprises Ltd & Ors  EWHC 1180 (Pat). This case involved the same patent as Aerotel/Macrossan; however, Wavecrest was able to show that the contribution argued in the earlier case was known, by providing evidence that the ‘special exchange’ which formed the essential part of the new arrangement of hardware (see 1.34.1) was actually within the common general knowledge. The Patents Court therefore reassessed the contribution and found that it related to how the special exchange was used and programmed, so that it fell solely within the business method and computer program exclusions.
When assessing the contribution, examiners should not consider prior art falling in the section 2(3) field.
However, a formal search is not required for the examiner to be able to assess the nature of the contribution. Peter Prescott QC (sitting as a Deputy Judge) in CFPH LLC  EWHC 1589 (Pat) paragraph 96 stated that examiners are “entitled to make use of their specialist knowledge” to identify the contribution and are not bound to rely on prior art searches. Pumfrey J stated in Shopalotto.com Ltd’s Application  RPC 7 paragraph 12 that certain features may be “so notorious that a formal search is neither necessary nor desirable”, and that examiners are “entitled to use common sense and experience” to make that determination. These views were consolidated in WMS Gaming Ltd’s Application (BL O/260/13)¸ which concluded in paragraph 60 that examiners are able to use their own judgement to determine whether to perform a search, and may accordingly use the provisions of section 17(5)(b) if appropriate (see 17.94-17.101)
What has been added to human knowledge
As Jacob LJ stated in Aerotel/Macrossan this is the summation of what the contribution is, and all of the other factors (see 1.21.2-1.21.4) weigh in to making this determination. The starting point for that assessment is the claims. It may be helpful to consider what makes the invention novel (see 1.20.1); however, it is then necessary to place that in its proper context and ensure that the effects of the invention are taken into account. It is not correct to eliminate everything in the claim that is known to arrive at that which is unknown, and then to conclude that the unknown part must be the contribution; i.e., as the Court of Appeal in Genentech  RPC 205 put it, it is not the case that “an invention is unpatentable if the inventiveness was contributed only by matters excluded under section 1(2)”. This approach – which is sometimes referred to as “Falconer reasoning”, from its originator; or, less formally, “salami-slicing” – was expressly rejected by the Court of Appeal in that decision. In Lantana v Comptroller-General of Patents  EWCA Civ 1463 paragraph 64, Kitchin LJ set out the importance of considering the proper context of an invention when assessing the contribution, accepting “[a] submission that it is the claim as a whole which must be considered when assessing the contribution which the invention has made, and that it is not permissible simply to cut the claim into pieces and then consider those pieces separately and without regard to the way they interact with each other”. However, at paragraph 65, Kitchin LJ qualified this by observing: “[n]evertheless, I also have no doubt that, approached in this way, it is the actual contribution to the art which the invention has made which must be considered.”
The courts have consistently found that, where claims recite standard hardware, such conventional apparatus does not form part of the contribution. This is often the case in computer program inventions – an application relating to a computer program cannot be saved simply by claiming conventional computer hardware programmed in a particular way. Jacob LJ remarked on this in paragraph 44 of Aerotel/Macrossan, and specifically rejected the use of standard hardware when determining the contribution of the Macrossan application in paragraph 73.
What constitutes a technical contribution can change over time. Therefore the view that, once a technical contribution is made, that same contribution will always be technical may not apply. In paragraph 16 of Lantana v Comptroller-General of Patents  EWHC 2673 (Pat), Birss J addressed this point, noting that “[t]he fact that in the IBM case [T6/83] the method of communication between programs and files […] was held patentable in 1988 does not mean that any method of communicating between programs and files […] necessarily involves a technical contribution today”. This was endorsed by Arden LJ in paragraph 43 of the Court of Appeal judgment Lantana v Comptroller-General of Patents  EWCA Civ 1463.
Substance not form
This is the application of the general principle (see 1.13-1.15.1) – the examiner must look beyond the literal wording of the claims to identify the contribution, and consider the central idea embodied in the claims. Recasting the claim in a different way, e.g. by claiming apparatus instead of method steps, will not usually alter the contribution.
Considering the additional factors that Jacob LJ in Aerotel/Macrossan thought relevant to identifying the contribution:
the problem said to be solved: an invention usually solves a problem; the problem and its solution are almost always relevant to the assessment of the contribution; an explicit statement may be included in the description, but not always – it may simply be derived from the nature of the invention
how the invention works may be simply the definition of the features of the invention in the claims, but it is often more useful to consider in terms of what the invention does as a matter of practical reality
finally, the advantages of the invention are normally closely linked to the problem being addressed, in the sense that the advantage is often that the problem is resolved. All of these factors may assist in identifying the contribution, rather than defining it themselves
Step 3 – assessing against the exclusions
The assessment carried out at step 3 is a critical part of the Aerotel test. How that assessment is made, and whether a particular contribution falls within one of the exclusions, will depend on the individual exclusion, and so is covered in greater detail under the specific categories in 1.25-1.40.4. In general, examiners should bear in mind that the third step does not require determining whether the contribution falls solely within the excluded subject matter categories as they are listed in section 1(2), but rather whether it falls solely within excluded subject matter as such. The “as such” qualification therefore narrows what is excluded – inventions may appear to fall solely with the excluded categories, but are not excluded as such. This is particularly true in the case of computer programs and discoveries, and this was recognised in Merrill Lynch’s Application  RPC 561.
Step 4 – is the contribution technical?
The fourth step was included in the test on the basis that it was required, in light of the earlier decision of the Court of Appeal in Merrill Lynch. In Merrill Lynch (page 569, lines 2-10), the necessity of making this assessment was characterised as follows:
…it cannot be permissible to patent an item excluded by section 1(2) under the guise of an article which contains that item – that is to say, in the case of a computer program, the patenting of a conventional computer containing that program. Something further is necessary. The nature of that addition is, I think, to be found in the Vicom case where it is stated: “Decisive is what technical contribution the invention makes to the known art”. There must, I think, be some technical advance on the prior art in the form of a new result (e.g. a substantial increase in processing speed as in Vicom)
The Patents Court, in paragraph 10 of Oneida Indian Nation’s Application EWHC 954 (Pat), stated that if the invention has been found to be excluded at step 3, then there is no need to apply step 4, as any contribution would have been one of purely excluded matter, and, having regard to the rider as described in 1.18.1, would not count as a technical contribution.
Interaction between steps 3 and 4
Whilst the steps will often be considered separately, the examiner may already have addressed the question posed in step 4 in answering step 3, as determining whether the contribution falls solely within excluded matter may require assessing whether there is a relevant technical contribution, particularly with regard to the computer program exclusion. The Court of Appeal in Symbian Ltd v Comptroller General of Patents  RPC 1 ruled that the question of whether the invention makes a technical contribution has to be addressed when considering the computer program exclusion, although whether that takes place at step 3 or 4 is not critical.
[When applying the Aerotel/Macrossan test in an examination report, examiners may find it useful to use PROSE clause RC4.]
Applying the Aerotel/Macrossan test to specific to exclusions
In all cases of excluded matter, the test in Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1  RPC 7 (Aerotel/Macrossan) is the starting point, no matter which exclusion is being relied upon. However, when applying the test, the individual exclusions have specific principles which derive from case law both before and after Aerotel/Macrossan. These can inform how the examiner assesses one or more of the steps of the test; however, they should always bear in mind that the case should be judged on its own merits (see 1.12).
That a contribution may fall within the scope of more than one exclusion and remain excluded see 1.16 should also be kept in mind. Objections may be raised covering multiple exclusions, and examiners are encouraged to raise all relevant exclusions, so that the applicant is not surprised by an additional objection at a later stage.
Section (a) - Discoveries, scientific theories and mathematical methods
When considering the patentability of biotechnological inventions with regard to these particular exclusions, section 76A(1) should also be consulted (for discoveries in particular, see 76A.06)
Discoveries & scientific theories
The established view on when this exception applies was summarised by Peter Prescott QC (sitting as a Deputy Judge) in paragraph 34 of CFPH LLC  EWHC 1589 (Pat):
It is well settled law that, although you cannot patent a discovery, you can patent a useful artefact or process that you were able to devise once you had made your discovery. This is so even where it was perfectly obvious how to devise that artefact or process, once you had made the discovery [… The law] objects only when you try to monopolise your discovery for all purposes i.e. divorced from your new artefact or process. For that would enable you to stifle the creation of further artefacts or processes which you yourself were not able to think of.
This line of reasoning, stemming from, amongst others, the decision in Hickton’s Patent Syndicate v Patents & Machine Improvements Co Ltd (1909) 26 RPC 339, was used by Lewison J in Tate & Lyle Technology v Roquette Frères  EWHC 1312 (Pat) , where a claim, whose contribution was found to be the explanation of the underlying workings of a previously known method of manufacturing a sugar substitute, was refused as a discovery as such (see also 2.14.1).
In Genentech Inc’s Patent  RPC 147, the Court of Appeal held that the discovery of an amino acid sequence for the substance tPA led to a valid claim when incorporated into a conventional manufacturing process for the manufacture of tPA. Similarly, in Kirin-Amgen v Hoechst Marion Roussel  RPC 9, the House of Lords held that a DNA sequence of a gene was not an invention on its own, but if it were necessary to isolate and extract it, then a process developed for this purpose and the material when obtained by this process could both be patentable (see also 76A.05).
This principle also applies to scientific theories – practical applications which rely on the theory may be patentable; the theory itself would not be. For example, in the two related cases of Blacklight Power, BL O/076/08 saw an application for modelling atoms based on a new theory of electron states refused (in part) as relating to a scientific theory, whereas in BL O/114/08, an application for a practical application of that theory (a plasma reactor and a laser utilising the effects derived from the theory) was not considered to be excluded (although it was refused for lack of industrial applicability).
In Vicom Systems Inc T0208/84 , the EPO Board of Appeal defined a mathematical method as one which “is carried out on numbers and provides a result in numerical form”. A mathematical method was therefore merely an abstract concept prescribing how to operate on the numbers, and a claim directed solely to the mathematical method was excluded from patentability as a result of its abstract nature.
However, if the invention provides a technical contribution, it may be considered patentable even though the underlying idea may reside in a mathematical method; a claim to a method of enhancing digital images by software processing that implemented a mathematical method was considered to provide such a contribution in Vicom and allowed. Furthermore, where the contribution relates to the practical application of the mathematical function, it would not be considered a mathematical method as such. That said, it may still be excluded under another category, as was the case in Gale’s Application  RPC 305, which related to a program implementing the calculation of square roots on a computer. The Court of Appeal refused the application as a computer program as such, but not as a mathematical method.
The presence of real data taken from a physical entity in a claim relating to a mathematical method, for example a method of modelling, simulation or prediction of a real world system, does not necessarily imply that a corresponding invention will avoid exclusion. WesternGeco Ltd ’s Application (BL O/135/07), a method for processing real-world geophysical data by mere abstract manipulation of the data was held by the hearing officer to be a mathematical method as such; however, it was felt that the application of this processed data to determine parameters relating to physical properties of the Earth’s interior, so that an improved seismic image could be produced, did not fall wholly within the exclusion as a result of the decision in Vicom.
Such inventions might therefore avoid exclusion if they contribute to non- excluded fields. For example, whilst a claim directed to monitoring and identifying the position of people and packages in a transportation network was refused as a mathematical method (as well as a computer program and method for doing business) in Innovation Sciences Pty Limited (BL O/315/12) ; in Waters Investments Limited ’s Application (BL O/146/07), a contribution comprising a method of analyzing samples by an analytical technique which uses chromatography and spectrometry followed by a sequence of data analysis techniques (i.e. a mathematical method) to give particular results, although including some steps that could be said to fall within excluded matter, was found to lie in the technical field of sample analysis using chromatography and spectrometric techniques, and so was not excluded.
Section (b) – aesthetic creations
If an article is distinguished from the prior art solely by its design, ornamentation or colour, then it will be excluded if this has a purely aesthetic function, but if the distinction has a practical effect then this could save it from the exclusion. For example, if a serving tray were characterised solely by having a particular embossed pattern on its surface, then it would fall within the exclusion, but if it were found that this particular pattern had non-slip attributes unexpectedly superior to those normally associated with embossment, this could provide a patentable feature.
Evidence may be necessary where the advantage conferred by the apparently aesthetic distinction is not clear from the disclosure. In I.T.S. Rubber Ltd’s Application  RPC 318, decided under the 1949 Act, a claim to a squash ball characterised by its blue colour was allowed because evidence showed that it had surprisingly enhanced visibility during play.
The means of obtaining a purely aesthetic effect may be patentable if it is characterised by non-excluded features, such as the structure of an article or the steps in a process. For example, a fabric may be provided with an attractive appearance by means of a layered structure not previously used for this purpose, in which case a fabric incorporating such a structure might be patentable.
Section (c) – mental act, playing a game, business methods, and computer programs
The decision in Halliburton Energy Services Inc’s Applications  RPC 129 confirmed (in paragraphs 57 and 63) that the mental act exclusion is to be interpreted narrowly – it only covers acts that are carried out by “purely mental means”, and does not extend to those which are merely capable of being performed mentally. HHJ Birss QC (sitting as a Judge of the High Court) considered that the aim of the exclusion was to prevent patents being granted which could be infringed “by thought alone”.
In the same judgment (in paragraph 43), HHJ Birss specifically outlined that, with this interpretation, a claim carried out on a computer could not be excluded as a mental act – this was adopted in the Practice Notice Patents Act 1977: Patentability of Mental Acts. Therefore, if a computer, or any other hardware, is involved in the invention, it will not be excluded as a mental act. However, the claim could still fall within the computer program exclusion.
Following the Halliburton decision, examples such as a method of learning a language, of playing chess, or teaching reading may still be excluded as methods for performing a mental act, provided they fall within the narrow interpretation. Pure design methods may also still fall within this exclusion; for example, in Halliburton Energy Services Inc v Smith International (North Sea) Ltd  RPC 2, the Patents Court held that a method for creating a design of rock drilling bit amounted to a mental act. This decision was expressly endorsed in the later Halliburton case (in paragraph 49), where the Court held that the claims in the earlier case were not limited solely to a computer implementation, and were therefore directed to “the purely intellectual content of the design process”. As a result, the claims encompassed both excluded and non-excluded embodiments (see 1.15). In contrast, the claims in the later case were restricted to a computer implementation of the design method, and therefore fell outside the narrow interpretation of the mental act exclusion.
In Halliburton v Smith, Pumfrey J indicated (at paragraphs 215-218) that a claim could avoid the mental act exclusion if it was “tethered” to a step of manufacturing the designed product, even if it was not solely limited to a computer implementation. The method in the specification had a “potential technical effect”, but as the claims were so broad as to encompass activities outside that method, they needed to be restricted to the technical field in which the method operated to eliminate those activities from the scope of the claim. Approaching this from the perspective of the later Halliburton case, this is another example of a non-mental limitation which, if present in a claim, would mean that the exclusion will not apply.
The patentability of schemes, rules or methods for playing a game was considered by the Patents Court in Shopaloto.com Lt d ’s Application  RPC 7, where the application related to a computer lottery game played over the internet. The Court held that the patentability of games should be assessed using the general approach for excluded matter, putting it in line with the other exclusions. Following Aerotel/Macrossan, this means that the patentability of games should be assessed using the Aerotel test. Patentability of games was also considered in IGT v The Comptroller-General of Patents  EWHC 1341 (Ch) which concerned four applications relating to gaming apparatus, specifically casino-based systems using slot-machines. In each case, Warren J held that the claims as construed related to known apparatus upon which a game was played. The contribution in each case therefore lay in the rules or methods used to play the game, and fell solely within the excluded category. See also 1.16 and 1.25.1 for discussion of the interaction between the different exclusions.
In relation to non-computer based games, apparatus which involves a combination of standard game items, such as a board, playing pieces, a random outcome generator (e.g. dice), chance cards and the like, which are united by the nature of the game played will usually be excluded, since the actual contribution lies in the game that the apparatus is used to play. One example is Anderson ’s Application (BL O/112/12), in which the Hearing Officer held that the contribution lay in a scheme, rule or method for playing a game, and that amending to include the use of known apparatus through which the game could be played did not change the contribution in substance. The application was therefore refused.
The Court of Appeal in Aerotel/Macrossan expressly rejected the interpretation placed upon this exclusion by Mann J in Macrossan’s Patent Application EWHC 705 – that a method of doing business should be a way of conducting an entire business, rather than a tool to facilitate business transactions or procedural steps having administrative or financial character – and instead took a wider view of what constitutes a business method. It found that there was no reason to limit the exclusion in the way Mann J had, and confirmed this by looking at the French and German versions of EPC Article 52(2), which are not limited to methods of conducting entire businesses. (The French refers to “economic activities” while the German refers to “business activities”.)
Therefore, the exclusion is to be interpreted as encompassing such tools or steps, and not merely abstract matters or completed transactions. As the Court in Aerotel/Macrossan noted: “whether as an abstract or generalised activity or as a very specific activity, if it is a method of doing business as such it is excluded” (paragraph 68). Double entry bookkeeping was cited in the judgment as an example of a concept that did not involve conducting an entire business or a completed transaction, but nevertheless was clearly a method of doing business.
The expression “doing business” is also not restricted to financial or commercial activities, but embraces administrative, organisational and managerial activities. In Aerotel/Macrossan, it was noted that the idea of having three document trays - “in”, “out” and “too difficult” - was a way of conducting business and no more. In Melia’s Application (BL O/153/92), the Hearing Officer refused a scheme under which prisoners could exchange all or part of a prison sentence for corporal punishment as a business method - the business in question being that of administering punishment. In Cummins-Allison Corp ’s Application (BL O/361/12), the Hearing Officer refused a method of conducting blind balancing on documents associated with a deposit transaction, in which the deposit was displayed only if the received and calculated amounts match, as an administrative process falling solely within the exclusion. Wills’ Application (BL O/089/99), relating to the provision of cards to be held by a school and the parents or grandparents of a child so as to provide an immediate source of accurate, up-to-date information in the event that the child goes missing, and John Lahiri Khan ’s Appn (BL O/356/06), a method of effecting introductions between people wearing a designated device, such as a ring, were both refused under this exclusion. In Hewlett-Packard Development Company ’s Application (BL O/441/12), a method for calculating and modifying the characteristics of an item, such as a magazine, before it is printed – to produce a printed item with an optimised postage weight – was considered to be no more than a method of managing postal changes, and therefore a business method.
The business method exclusion is generic, as discussed at page 569 of Merrill Lynch’s Application  RPC 561. Therefore, the fact that an application may provide a better way of conducting business is not relevant. In Halliburton Energy Services Inc’s Applications  RPC 129, HHJ Birss QC at paragraph 35 noted that the use of a computer to implement a better business method did not confer patentability:
The business method cases can be tricky to analyse by just asking whether the invention has a technical effect or makes a technical contribution. The reason is that computers are self evidently technical in nature. Thus when a business method is implemented on a computer, the patentee has a rich vein of arguments to deploy in seeking to contend that his invention gives rise to a technical effect or makes a technical contribution. For example the computer is said to be a faster, more efficient computerized book keeper than before and surely, says the patentee, that is a technical effect or technical advance. And so it is, in a way, but the law has resolutely sought to hold the line at excluding such things from patents.
The Aerotel patent was found to be valid by the Court of Appeal in Aerotel/Macrossan, as it related to a “new arrangement of hardware” due to an extra piece of equipment in the form of a ‘special exchange’ (although, see 1.20.1. It was therefore not considered to be a business method, because the system as a whole was new (as it contained a new piece of hardware). The contribution therefore was not limited to using an exisiting system to carry out the business of selling phone calls. However, this should be contrasted with the system of Merrill Lynch, which was only new due to the method of doing business that it produced. Therefore, when assessing whether a particular invention relates to a new system or arrangement of hardware, it should be asked whether the system is new in itself or whether the system is only new due to the business method it performs.
Where a claim involves the use of a computer program, it does not naturally follow that the claim must be excluded. Instead, the contribution of a claim to a computer program must be assessed by reference to the process the program will cause a computer to perform, because the assessment is based on the substance of the invention, as stated in Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks  RPC 14 (see 1.13). In Halliburton Energy Services Inc’s Applications  RPC 129, HHJ Birss QC emphasised that “[a] computer programmed to perform a task which makes a contribution to the art which is technical in nature is a patentable invention and may be claimed as such.” Therefore, a computer program that provides a technical contribution will not fall under the exclusion, as it is more than a computer program as such. Although an invention involving a computer is undoubtedly “technical”, the mere presence of conventional computing hardware does not of itself mean the invention makes a technical contribution (and so avoids the computer program exclusion) as such hardware will typically not form part of the contribution (see 1.21.1).
Following the development of the Aerotel test, Symbian Ltd ’s Application  RPC 1 more closely examined the question of “technical contribution” as it related to computer programs (see 1.24). In examining the case law, the Court of Appeal concluded that creating a precise test for determining whether a computer program was excluded was difficult, and to suggest that such a clear rule existed was perhaps dangerous when considering the pace of technological development. It emphasised the need to determine each case by reference to its particular facts (see 1.12).
The court held that the contribution made by the invention in Symbian was not a computer program as such because “it has the knock-on effect of the computer working better as a matter of practical reality”. Paragraphs 54-56 emphasised the need to look at the practical reality of what the program achieved, and to ask whether there was something more than just a “better program”. An invention which either solves a technical problem external to the computer or solves one within the computer was not considered to fall under the computer program exclusion. The particular invention involved improving the operation of a computer by solving a problem arising from the way the computer was programmed (in that case, a tendency to crash due to conflicting library program calls). The court considered that this could be regarded as solving a technical problem within the computer, if it leads to a more reliable computer. Thus, a program that results in a computer running faster or more reliably may be considered to provide a technical contribution, even if the invention addresses a problem in the programming of the computer. The court concluded that such a technical contribution rendered the claim in this case patentable.
The matter of assessing the technical merit of the claimed invention was also considered in HTC v Apple  EWCA Civ 451. In paragraph 49, Kitchin LJ reiterated the point from Symbian that a solution to a technical problem would be a relevant technical effect and would not be excluded, as technical character is provided from the problem itself (see also 1.38.5). In paragraph 152, Lewison LJ considered the scope of the exclusion, and remarked that:
Since each case must be determined by reference to its particular facts and features (Symbian at ) we need to begin by asking: what does the computer program in this case actually contribute?
In this instance, he concluded that the program made it easier to write programs for applications to be run on the device that contains it, and that writing software in this instance did not fall within the scope of the exclusion, although the ultimate product (i.e. the software itself) may still do so.
The AT&T signposts
Although the Aerotel test may involve the examiner checking “whether the actual or alleged contribution is actually technical in nature” - and Symbian actively requires the question “does the invention make a technical contribution” to be asked when considering the computer program exclusion - the judgment in Aerotel/Macrossan does not provide much guidance on how this is to be carried out in practice. However, in paragraph 40 of AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents  EWHC 343 (Pat) (AT&T/CVON), Lewison J (as he then was) set out five signposts that he considered to be helpful when considering whether a computer program makes a relevant technical contribution. In HTC v Apple  EWCA Civ 451, Lewison LJ reconsidered the signposts he had suggested in AT&T/CVON and, in light of the decision in Gemstar-TV Guide International Inc v Virgin Media Ltd  RPC 10 (see 1.37.1 and 1.40.4), felt that the fourth signpost had been expressed too restrictively.
Drawing on the cases identified in Symbian as key to understanding the computer program exclusion, the signposts are a distillation of the reasoning and rationale of this previous case law. (The decisions that each signpost derives from can be found in brackets following each signpost).
The signposts are:-
(i). whether the claimed technical effect has a technical effect on a process which is carried on outside the computer (from Vicom)
(ii). whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run (from IBM T 0006/83, IBM T 0115/85, Merrill Lynch, Symbian)
(iii). whether the claimed technical effect results in the computer being made to operate in a new way (from Gale)
(iv). whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer (from Vicom, Symbian; as reworded in HTC v Apple)
(v). whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented (from Hitachi T 0258/03 – note that the problem in question must be a technical problem)
It should be clear that the signposts are merely guidelines; although they provide a useful aid for the examiner in assessing the technical character of a claimed invention, they were not intended to provide a definitive test (as Lewison LJ’s obiter remarks in paragraph 149 of HTC v Apple make clear). Several judgments have emphasised this point - John Baldwin QC (sitting as a Deputy Judge) in Really Virtual Co Ltd v UK Intellectual Property Office  EWHC 1086 (Ch) noted that the signposts, although useful, are no more than signposts and that there will be some cases in which they are more helpful than in others. Kitchin LJ made similar remarks in paragraph 51 of HTC v Apple – their usefulness does not mean they will be determinative in every case. However, if the claimed invention fails all of the signposts, it will likely be a good indicator that it may be nothing more than a computer program as such.
- [If referring to the AT&T signposts in an examination report, examiners may find it useful to use PROSE clause RC4A.]
Interpretation of the signposts
How these signposts are to be interpreted is often the subject of discussion in excluded matter cases, and hearing decisions and judgments have considered the underlying meaning of all of the signposts at one point or another. The hearing officer in Commonwealth Scientific and Industrial Research Organisation’s Application (BL O/367/11) took the opportunity to consider each signpost in turn (although the fifth signpost was not addressed in the hearing, and so was only considered briefly) and explained her view on how each was to be interpreted in paragraphs 31-42.
To meet the first signpost, the process carried out by the program must be, or must operate on, something external to the computer on which the program is being run. As Lewison J put it in his summarisation of Vicom in paragraph 20 of AT&T/CVON, if the process would be patentable if it were not operated by means of a computer program, the fact that it is operated by means of a computer program does not render it excluded. An often-used, if limited, example is that of a computer-controlled car braking system – the braking system is external to the computer, and the programming has an effect on that system. This does not mean that any effect taking place outside a single computing device meets the signpost – systems operating as a network can be considered as ‘the computer’ for the purposes of this signpost, as emphasised by Birss J in paragraph 30 of Lantana v Comptroller-General of Patents  EWHC 2673 (Pat). The hearing officer in paragraph 41 of Hewlett-Packard ’s Application (BL O/319/11) considered that reducing the amount of data exchanged in a network between a memory tag and its reader had no technical effect on the communication process between them, even if the process was considered to be outside the two, as no actual change was made to the process itself.
The second signpost asks whether running the program changes how the computer runs internally. In practice, this means in the sense of the operation of the processor, the cache memory, or other internal components of the computer. The “architecture” can be thought of as the combination of these components, which operate in the same way regardless of the application being run. If the effect being produced would provide a benefit to any software program which runs on the system, it is likely to meet this signpost. If the effect being produced is specific to a particular data set, type of data, or benefits only particular applications, it is likely it will fail to meet this signpost. The hearing officer in Intuit Inc’s Application (BL O/347/10) considered that an application programming interface operating between layers of an application model did not meet the signpost, as it did not provide internal control of the architectural components or operate at a sufficiently high level of generality within the computer.
The third signpost emphasises that the effect must be more than just the running of a program or application on a general purpose computer – the computer itself must operate differently than it did before as a result of the program being run.
The fourth signpost was reframed in HTC v Apple, and is approached in a similar way to the third – the computer must operate more efficiently and effectively as a result of running the program. Again, this must be the computer as a whole, rather than the individual program. In several cases, such as Q Software Global Ltd ’s Application (BL O/120/11) and JDA Software Group Inc ’s Application (BL O/386/12), it was argued that the program required less processing power to run, or operated faster, and the system was therefore more efficient. This was not considered to meet the signpost, as the system itself remained unchanged – the computer processed the data in the same way as it did before, the program merely made more efficient use of the hardware.
The fifth signpost looks at the technical character of an alleged invention by means of the problem addressed. When the problem is a technical one, the alleged invention can be considered to have a technical nature leading to it falling outside the exclusion if (but not only if) it solves the problem.
In Lantana Ltd v The Comptroller-General of Patents, Designs and Trade Marks  EWHC 2673 (Pat) Birss J considered the fifth signpost, and stated that “[i]t makes sense to think of something which is a solution to a technical problem as itself having technical character because it takes that character from the technical nature of the problem to be solved. But if a thing is not solving the technical problem but only circumventing it, then that thing cannot be said to have taken any technical character from the problem”.
Circumventing a technical problem does not automatically imply that an alleged invention is excluded, but indicates that one cannot rely on the addressed problem to deduce its technical character. At paragraph 51 of the subsequent Court of Appeal decision, Lantana v Comptroller-General of Patents  EWCA Civ 1463, Arden LJ noted that “[c]ircumvention may be the result of truly original linear thinking and may lead to patentability in an appropriate case”. This does not happen when circumvention consists of conventional means, as reaffirmed by Kitchin LJ at paragraphs 68 and 70 of the same judgment: “[o]verall, the invention avoids the problem…but it does so by using a conventional technique [… i]n other words it does not solve those problems but circumvents them”.
Similarly, if the problem to be solved is not a technical problem, the solution cannot take technical character from the problem, although it may have some other technical effect. Other examples where circumvention also lacks technical character are given in Direct TV Pty’s Application (BL O/150/11), (paragraphs 32-33) and Apple Inc ’s Application (BL O/244/13) , paragraphs 38-39), amongst others, where it was argued that the problem of bandwidth limitations in transmitting data across a network was solved by the invention. In each case, this was achieved by reducing the amount of data transmitted. The Hearing Officers considered that to circumvent the problem, as there was no change to the way in which the data was transmitted, merely the volume.
Assessing “technical effect” using the AT&T signposts
Determining whether a computer program provides a technical effect such that it does not fall within the exclusion usually (but not always; see 1.37.2) involves assessing the contribution against the AT&T signposts (in the form stated in HTC v Apple). Decisions since AT&T have often used the signposts when answering step 3 of the Aerotel test.
In Protecting Kids the World Over (PKTWO) Ltd ’s Patent Application  RPC 13, the invention was found to solve a technical problem lying outside the computer, namely how to improve the generation of an alarm in response to inappropriate communication, and therefore was not excluded from patentability.
In HTC v Apple  EWCA Civ 451, a method of handling the recognition of single- and multi-touch events in devices programmed to do so had the advantage that application programmers could more easily write software to accommodate such recognition. Although considering that the contribution fell outside the scope of the exclusion in any event (see 1.36.2), Lewison LJ went on (in paragraph 154) to assess the contribution against the AT&T signposts, and found that it met all but the third signpost, which pointed to the program providing a technical effect in itself. Kitchin LJ similarly found, in paragraph 57, that the recognition handling operated at the architectural level, and caused the devices to operate in a new way. The application was found to fall outside excluded matter.
Section (d) – Presentation of information
Any manner, means or method of expressing information which is characterised solely by the content of the information is excluded, regardless of how it is represented. The fact that physical apparatus may be involved in the presentation will not usually be enough to avoid the exclusion. In Townsend ’s Application  EWHC 482 (Pat), Laddie J held that the exclusion encompassed both the provision of information and its expression. In Autonomy Corp Ltd v Comptroller General of Patents, Trade Marks & Designs  EWHC 146(Pat), the court held that choosing where and how to display information was still the presentation of information, as it is part of the decision as to how to present the information.
If the invention relates to the technical means by which the information is presented, rather than the presentation itself, then it may not fall within the exclusion, as per BBC/Colour television signal  EPOR 599 (T 0163/85), where the EPO Technical Board of Appeal held that a colour television signal, characterised by the technical features of the television system in which the signal occurs, was not excluded under presentation of information. However, the Board distinguished this from a television system which was defined solely by the information (e.g. moving pictures) being transmitted using a standard television signal, which they felt may fall within the exclusion.
In other words, if there is a technical effect or a contribution in a non- excluded field, the invention will not lie solely within excluded matter. In Townsend, an application for an invention relating to an advent calendar with an additional indicator (such as a word, picture, colour etc.) on each door was refused by the Hearing Officer in BL O/266/03 (and, on appeal, the Patents Court) as relating to the presentation of information which served no technical purpose and included no technical advance. TDK Electronics Co Ltd’s Application (BL O/097/83) held that a claim to a tape cassette of conventional construction, but with differentially coloured poles, was excluded because it encompassed a cassette where the poles were coloured subsequent to assembly, and thus did not serve any function in its assembly or use. A gaming machine in which logos or brand or product names were substituted for the conventional symbols normally depicted on the reels of a fruit machine was also found to fall within the exclusion in Ebrahim Shahin’s Application (BL O/149/95).
A claim to a conventional package containing a known product, characterised solely by the instructions on the package, will not generally be allowed, since the contribution relates solely to the presentation of information. Several cases along these lines were rejected under the 1949 Act, including Dow Corning Corporation (Bennett’s) Application  RPC 235, and Ciba-Geigy AG (Durr’s) Application  RPC 83.
Gemstar–TV Guide International Inc v Virgin Media Limited  RPC 10 considered the question of computerised methods for presenting information. The case related to three EP(UK) patents covering various aspects of Electronic Program Guides (EPGs). In his judgment, Mann J emphasised that the exclusion was not solely confined to the content of information, and that, in order for the exclusion not to apply, there must be some technical effect beyond the information being presented. The court also stated that if the contribution is defined only in terms of the information to be presented, then that is a presentation of information - the presence of a display does not change this. In particular, a better (or new) user interface was not considered to be a relevant technical effect – the rearrangement of information was nothing more than the presentation of information; simply having something different displayed was not sufficient to overcome the exclusion. Two of the three patents were found to be excluded as they lacked the required technical effect; the third presented a physical effect, namely the movement of data between hard disks, such that there was more than merely the presentation of information
|A patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality.|
|For the purposes of subsection (3) above exploitation shall not be regarded as contrary to public policy or morality only because it is prohibited by any law in force in the United Kingdom or any part of it.|
Exploitation contrary to public policy or morality
Sections 1(3) and 1(4) were amended by the Patents Regulations 2000 (SI 2000 No.2037) so that the wording would more closely reflect the wording of article 27(2) of the TRIPS agreement. Section 1(3)(a) had previously stated that a patent would not be granted for an invention whose “publication or exploitation” would “be generally expected to encourage offensive, immoral or antisocial behaviour”. In practical terms, the effect of s.1(3) remains the same, which is to prevent the grant of patent rights for inventions which the general public would regard as abhorrent or from which the public need protection. It provides a reasonably objective test which has to be applied to each invention and its particular set of facts and circumstances. Clearly what is to be regarded as contrary to public policy or morality will vary according to changes in social attitudes and on no account ought examiners to allow their own personal and individual beliefs to colour their judgment on this matter. The decision of Aldous J in the case of Masterman’s Design  RPC 89 under a similar provision of the Registered Designs Act 1949 deals with issues broadly corresponding with those which may arise under s.1(3). The Patents Act 1977 (Isle of Man) Order 2003 (SI 2003 No. 1249) amended sections 1(3) and 1(4) for the Isle of Man.
(Only in the clearest cases should examiners invoke this subsection and then only following consultation with their Deputy Director. Any genuine doubt should be exercised in favour of the applicant with an appropriate minute being created).
Unlike under the previous s.1(3)(a), the exclusion from patentability is not activated if mere publication of the invention, as distinct from its exploitation, would be contrary to morality. If, however, the specification includes matter the publication or exploitation of which would generally be expected to encourage offensive, immoral or antisocial behaviour, then (irrespective of whether the invention itself is open to objection under s.1(3)) the situation can be dealt with by excision of the offending matter under s.16(2) - see 16.34-16.37
European Patent Convention section a.53(a) is also relevant
The corresponding provision of the EPC (see 1.06) refers to “inventions the publication or exploitation of which would be contrary to ‘ordre public’ or morality”. In the Harvard “oncomouse” case T 315/03 ( 1 OJEPO 15,  EPOR 31) (see also 76A.02.1 and 76A.05), the Board of Appeal endorsed the definitions of “ordre public” and morality provided in Plant Genetic Systems T 356/93  8 OJEPO 393 and held that the assessment of these concepts should be made as of the filing or priority date of the application. The concept of “ordre public” was accepted as covering the protection of public security and the physical integrity of individuals as part of society, and encompassed the protection of the environment. In relation to morality, the Board in T 356/93 held that the culture inherent in European society and civilisation should be the basis for determining what behaviour is right and acceptable, and what behaviour is wrong. However, the Board in oncomouse added that in making an assessment of morality, no single definition of morality based on e.g. economic or religious principles represents an accepted standard in European culture, and opinion poll evidence was of little value. For animal manipulation cases, the Board of Appeal in T 315/03 endorsed the guidance provided in its earlier consideration of the Harvard “oncomouse” application (case T 19/90)  12 OJEPO 476). This case held that the possible detrimental effects and risks had to be weighed and balanced against the merits and advantages aimed at. In particular, the basic interest of mankind to remedy disease had to be set against the protection of the environment of uncontrolled dissemination of unwanted genes and the avoidance of suffering to animals, including the possibility of using non-animal alternatives. In balancing these factors, the Board in T 315/03 allowed claims covering transgenic “mice”, refusing broader claims encompassing rodents (see 76A.02.1)
For biotechnology inventions, in addition to the general exclusion of s.1(3), Schedule A2 of the Patents Act specifies that certain categories of invention are not patentable inventions; these are discussed in 76A.02-76A.06) and the Examination Guidelines for Patent Applications relating to Biotechnological Inventions in the Intellectual Property Office.
Section 1(4) is a rider to section 1(3) to make it clear that an act or action prohibited by a law is not to be considered as necessarily the same thing as contrary to public policy or morality. (One reason for this is that a product which could not lawfully be used in the UK may be manufactured lawfully in the UK for export to countries where its use is not illegal). However the existence of a law or regulation may be a material fact to be taken into consideration in determining whether to refuse an application under s.1(3). The nature and probable uses of the invention will need to be considered as well as the exact terms of the prohibition. Thus if the prohibition is directed unconditionally to the very act which the inventor proposes very careful deliberation must be given as to whether to invoke s.1(3). In such cases a useful test is to consider why the prohibition exists. For example it is considered that the Landmines Act 1998 (implementing the Ottawa Convention) and the Cluster Munitions (Prohibitions) Act 2010 (implementing the Convention on Cluster Munitions) were passed because the public in the UK generally now consider the development, manufacture and use of anti-personnel mines and cluster munitions to be immoral. In addition, UK is a signatory to other weapons conventions which prohibit categories of weapon, including the Chemical Weapons Convention and the Biological and Toxin Weapons Conventions; these have been implemented in UK law by the Chemical Weapons Act 1996 and the Biological Weapons Act 1974 respectively. Again, the signing of the conventions and the passage of the legislation indicate that the general feeling of the public in the UK is that the production and use of these weapons is immoral. However, it should be noted that both these Acts recognise that agents capable of use as a chemical or biological weapon may have legitimate purposes. In cases in which an invention can be exploited legally albeit in accordance with stringent regulations, it would be very difficult to argue that s.1(3) applies and the application for a patent refused.
[Any concerns about patent applications which may relate to weapons which are considered contrary to public policy or morality should be raised with Security Section]
Plant and animal varieties, and “essentially biological processes
Prior to the Patents Regulations 2000, s.1(3)(b) set out that a patent would not be granted for “any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological process or the product of such a process”. These exclusions remain in place, and are now found, along with others which relate to biotechnological inventions, in Schedule A2 to the Act, introduced by the Patents Regulations 2000 and made under section 76A of the Act, which was also introduced by those Regulations (see 76A.01-06) and the Examination Guidelines for Patent Applications relating to Biotechnological Inventions in the Intellectual Property Office).
|The Secretary of State may by order vary the provisions of subsection (2) above for the purpose of maintaining them in conformity with developments in science and technology; and no such order shall be made unless a draft of the order has been laid before, and approved by resolution of, each House of Parliament.|
The white paper “Patent Law Reform” (Cmnd 6000) noted that the patent system “must evolve in response to changing conditions”. This was done under previous legislation by continually re-interpreting the centuries-old definition of invention as “any manner of new manufacture”. The present Act controls what is to be regarded as an invention for which a patent monopoly may be granted by means of the definitions set out in the foregoing subsections. The present subsection gives the necessary measure of flexibility to this control, whilst reserving to Parliament the authority to approve it. This would be at the instigation of the Secretary of State, who would normally take such action following the established consultative processes.