Programmed Computers Are Patentable In The UK

The United Kingdom Intellectual Property Office (UKIPO) has been obliged to change the guidance to Examiners over the exclusion from patenting of "mental acts". As a result of decision of the High Court in Halliburton v Comptroller of Patents [2011] EWHC 2508, discussed in our earlier article, Examiners have been instructed that an "invention implemented by a computer will not be considered to be excluded from patentability as a mental act". This will have profound effects on UK practice going forward.

Background

The UK Patents Act does not define what constitutes a patentable invention. Instead, it includes a list of exclusions defining those things that are considered not to be inventions. The list includes both computer programs, and methods for performing mental acts. However, something will only fall foul of one of the exclusions if it is considered to relate to that thing "as such".

Computer Programs

In the Halliburton decision the judge confirmed that an invention that is implemented in software can be patentable.

"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..."

It does not matter how the task is performed or achieved. What matters is that the programmed computer does something technical.

Mental Acts

The central issue raised in the Halliburton case was the ambit of the "mental act" exclusion in the UK Patents Act. The invention related to a method of designing drill bits and had been refused by the UKIPO during prosecution as constituting a mental act. Following earlier guidance issued by UKIPO, the Office had used a wide interpretation for the mental act exclusion. Under this interpretation any method which is...