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 process, it will not be considered a mathematical method as such.
To clarify the circumstances in which claims involving mathematical methods and programs may be patentable, new sections have been added to section 1 of the MoPP. New section 1.29.4 in particular states that carrying out a mathematical method by a program will not, in general, be enough to avoid exclusion. Similarly, an improvement in programming or an improved algorithm will not generally be enough to avoid exclusion unless there is something more to it in the form of a technical contribution. However, new section 1.29.5 states that many computer-implemented inventions and particularly inventions involving computer simulation and artificial intelligence ("AI") relate in some way to a mathematical method, where if a computer-implemented mathematical method is applied to a technical process or if it solves a technical problem within a computer, it will likely not be excluded.
When considering whether methods that are considered to be business methods can contribute technically, at sections 1.34 and 1.34.1 of the MoPP, it is stated that the fact that an application may provide a better way of conducting business is not relevant to the technical contribution. It is explicitly stated in this section that the law has resolutely sought to hold the line at excluding such things from patents where no further technical contribution is made. Therefore, when assessing whether a particular invention involving a business method 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.
As is stated in section 1.18 of the MoPP, in determining whether claimed subject matter is excluded from patent protection under one of the excluded areas in Section 1(2), Examiners follow the four step test set out in the Aerotel v Telco and Macrossan decision [2006] EWCA Civ 1371. Section 1.36 further states that, following the development of the Aerotel test, Symbian Ltd 's Application [2009] RPC 1 more closely examined the question of "technical contribution" as it related to computer programs. In deciding whether the Application reveals a "technical" contribution, guidance can be found in the Board's analysis in Vicom and the two IBM Corp. decisions [T 0006/83 and T 0115/85], and in what the court said in Merrill Lynch and Gale.
As is further described at section 1.37 of the MoPP, although the Aerotel test involves 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 detailed guidance on how this is to be carried out in practice. In paragraph 40 of AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat) (AT&T/ CVON), five signposts derived from Symbian (s1.36) were set out for considering whether a computer program makes a relevant technical contribution. In HTC v Apple [2013] EWCA Civ 451, the signposts were reconsidered and, in light of the decision in Gemstar-TV Guide International Inc v Virgin Media Ltd [2010] RPC 10 (see 1.37.1 and 1.40.4), felt that the fourth signpost had been expressed too restrictively.
The signposts for considering whether a computer program makes a relevant technical contribution have now been redefined in the MoPP in view of this case law. Adapted signposts which are a distillation of the reasoning and rationale of this previous case law are set out in section 1.37.1 of the MoPP, as follows:
- whether the claimed technical effect has a technical effect on a process which is carried on outside the computer (from Vicom)
- 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)
- whether the claimed technical effect results in the computer being made to operate in a new way (from Gale)
- 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)
- whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented (from Hitachi T 0258/03)
''[T]he signposts provide a good starting point"
Even though the signposts must be treated as guidelines, each case must be determined on its own facts bearing mind the case law forming the "most reliable guidance" identified in Symbian from which the signposts are distilled. However, the signposts provide a good starting point for considering whether a computer program or a computer implemented invention makes a relevant technical contribution, and therefore determining whether the subject matter of a claim is excluded from patentability.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.