Patent Eligibility tests at the UK IPO – before or after inventive step?

The UK IPO and EPO each take a different approach to patentability of computer implemented inventions. One of the most contentious issues in this area and one which is significantly affecting efforts to harmonise tests globally (see the recent paper from the AIPPI study group on CII) is consideration of whether or not the test for patent eligibility should include any consideration of novelty and inventive step. The UK IPO, like the US PTO, typically considers the contribution of the invention and therefore the inventive step, in the consideration of patent eligibility. The EPO on the other hand has a low hurdle for eligibility and then considers the technical character of the invention in the later assessment of inventive step.

When prosecuting applications at the borders of patentability, we often find that the UK IPO examiners assert that subject-matter is excluded before searching the case or before a detailed consideration of inventive step. The examiners apply the required tests using a technical contribution they have gleaned from the application documents. In some cases, particularly those drafted in a traditional US style, the actual technical contribution is not easily identifiable.

In a recent hearing decision by the UK IPO in Appa Music Group UG, O/402/17, the hearing officer took a very systematic approach. The hearing officer performed a complete analysis of inventive step and the cited documents before applying the test for excluded subject-matter.

The application was directed to a system for distribution and acoustic playback of a plurality of music albums. The system provides an app which provides a user interface for viewing/interacting with additional data provided with the album such as cover information. The interface separates protected information and non-protected information and enables them to be displayed differently. The hearing officer concluded that the contribution over the prior art was in the use of designators which identify the data sets or albums that have been downloaded.

Once the contribution over the art had been defined, the consideration of excluded matter was carried out and summarily assessed. Performing a detailed analysis of inventive step before considering excluded subject-matter is different from the approach often taken by the examiners at first instance.

While many examiners do carry out a clear analysis to derive the technical contribution, It will be interesting to see if the examiners adopt this approach more often – particularly at the search stage. It will also be interesting to see how the US examiners implement the Alice analysis tests over time. Will the examiners have to carry out a detailed discussion of obviousness before they move on to assess s.101 or will the examiners continue to look at s.101 before a detailed obviousness analysis, even if the s.101 test inherently considers the advantages and effect of the invention over the prior art.

See here for more information on patenting computer implemented inventions.

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