A frequently raised question in UK patent circles is ‘just how hostile is the UK Intellectual Property Office towards computer implemented inventions?’
Opinions within the UK patent profession tend to differ on this point. Some – possibly with particular experience in the financial technology space – hold the opinion that the UK IPO never grants a single patent to a computer implemented invention while others believe that a carefully prepared patent specification will (prior art permitting) result in a granted UK patent to a computer implemented invention.
But who is closer to the truth?
At the core of the issues surrounding computer implemented inventions are the exclusions to patentability. Codified in UK patent law, these exclusions prevent patents from being granted to (among other things) inventions that relate to:
Methods of doing business
Presentations of information and mathematical methods
but only where the invention relates to one or more of these categories as such.
Computer implemented inventions often fall foul of the computer program exclusion, and sometimes also the mathematical method and/or business method exclusion. The presentation of information exclusion can also be relevant, such as in the case of inventions having a GUI aspect to them.
The table and graph below show UK IPO hearing officer decisions in 2017 for applications where at least one exclusion was considered.
As can be seen, the only exclusion against which applicants had any appreciable success rate was the presentation of information exclusion. This is probably in view of the UK High Court Halliburton decision that my colleague Matthew Hoyles mentions near the end of his article here.
Objections based on the computer program and mathematical method exclusions, which are typically more relevant to computer implemented inventions, were rarely overcome. Additionally, only 3 of the 34 hearings in 2017 involving at least one exclusion to patentability resulted in a favourable outcome for the applicant.
These data seem to support the thinking that the UK IPO is hostile towards computer implemented inventions, inevitably leaving applicants wondering whether the European Patent Office (EPO) is a better option for obtaining a UK patent to a computer implemented invention.
Of course, the very nature of hearings is such that they involve applications which are at the borders of patentability. The data presented here may thus not be representative of UK IPO practice as a whole regarding computer implemented inventions, but at least it can be concluded that one should not expect to succeed in a UK IPO hearing where at least one of the exclusions to patentability is at issue.
Number of objections raised
Number of objections overcome
Percentage of objections overcome
Presentation of information
See here for more information on patenting computer implemented inventions.