UKIPO Issues New Guidance On Software Patentability

Published date05 August 2020
Law FirmHaseltine Lake Kempner LLP
AuthorMs Grace Wood

Section 1(2) of the UK Patents Act excludes inventions relating to certain subject matter from patent protection. The subject matter defined in Section 1(2) includes "a mathematical method", "a scheme, rule or method for performing a mental act, playing a game, or doing business, or a program for a computer", or "the presentation of information". However, the "There is a legal grey area surrounding inventions created by artificial intelligence" exclusion applies only to the extent that the invention relates to that subject matter "as such". The guidelines surrounding how it should be determined to what extent an invention relates to one of these exclusions have been evolving, particularly due to the increasing number of filings of patent applications for computer implemented inventions.

In the version of the Manual of Patent Practice (MoPP) of April 2020, section 1 was updated to clarify the guidance relating to artificial intelligence (AI) inventions and what constitutes excluded matter. In general, section 1 discusses that claims to a computer program for generating a system or for producing a product may avoid exclusion if the computer program would cause an otherwise patentable process to be performed when run. Therefore, there should be a technical contribution that the invention makes to the known art, for example, a technical advance on the prior art in the form of a new result (e.g. a substantial increase in processing speed as in Vicom Systems Inc T0208/84 [1987].)

A computer program that provides a technical contribution will not fall under the exclusion, as it is more than a computer program as such. (It is noted that, 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 as such, hardware will typically not form part of the contribution.)

''[T]he mere presence of conventional computing hardware does not of itself mean the invention makes a technical contribution"

If an invention provides a technical contribution, it may avoid exclusion 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. Where the contribution made by an invention relates to the practical application of the mathematical method to a technical...

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