'Mental act' computerisations no longer automatically unpatentable

IPO changes tack on software-implemented inventions

The UK's Intellectual Property Office has changed its guidance on how its reviewers will consider the 'mental act' exemption to patentability when assessing patent applications for computer-implemented inventions.

Under the UK's Patents Act inventions must be new, take an inventive step that is not obvious and be useful to industry in order to qualify for patent protection.

An invention cannot be patented, according to the Patents Act, if it is "a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer … as such". Other inventions that cannot be patented include "a discovery, scientific theory or mathematical method", according to the Act.

Reviewers will not automatically rule that the computerisation of what would be a purely mental act if done without the aid of a computer is unpatentable, the IPO said. The IPO's amended guidance reverses a previous approach it said its reviewers would adopt. It also follows a recent High Court ruling on the application of the 'mental act' exclusion to patentability of computer simulation software.

"Examiners will now take a narrow view of the mental act exclusion," the IPO said in a statement.

"In future, claims which specify that the invention is implemented using a computer will not be considered to be excluded from patentability as a mental act," it said.

Earlier this month, the High Court ruled that a patent examiner at the IPO had wrongly deemed four patent applications for computer simulations by engineering firm Halliburton as unpatentable because they were capable of being performed mentally. The judge ruled that the examiner's assessment was "ill-founded". The examiner had wrongly considered the company's claims by assessing whether they were "capable of being performed mentally" rather than "in fact performed mentally", Justice Birss QC had said in his ruling.

Justice Birss QC also said that Halliburton's inventions were not subject to any of the other exemptions to patentability. The ruling said that the inventions merged mathematical calculations with computer software and were sufficiently technical to be considered patentable.

"The Halliburton case and this updated guidance from the UKIPO should bring the scope for patentability of computer-implemented inventions, in the UK at least, more closely into line with countries such as the US and Japan where computer implemented inventions have been more widely available for some time," Camilla Balleny, patent law expert at Pinsent Masons, the law firm behind Out-Law.com, said.

Copyright © 2011, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

Sponsored: 5 critical considerations for enterprise cloud backup