Patentability of Software Inventions at the UK IPO

The UK Intellectual Property Office (UK IPO) now appears to be ready to allow more UK patent applications relating to software inventions.  Specifically, the UK IPO are now less likely to raise an objection that a UK patent application for an invention implemented using a computer is equivalent to a “mental act” and thereby excluded from patentability by the UK Patents Act 1977 Section 1 (2)(c).

Following a recent High Court decision, (Halliburton’s Applications [2011] EWHC 2508 (Pat)) the UK IPO issued a Practice Notice which states that “examiners will now take a narrow view of the mental act exclusion”.   The High Court case considered one patent application (GB 2 420 433) in detail which was representative of four patent applications which had been rejected by the UK IPO on the grounds that, inter alia, the claims related to a mental act as such.  The earlier decision of the UK IPO was overturned by the High Court with the decision stating that the purpose of the mentalact exclusion is to ensure that patent claims cannot be performed by purely mental means and that is all.  Accordingly, the exclusion will not apply if there are appropriate non-mental limitations in the claim.

In summary, this case and the subsequent practice note should assist applicants in obtaining patent protection for computer implemented inventions.  The judgment states that the correct scope of the mental act exclusion is a narrow one.

Nicholas Jackson

2 December 2011