Feeds

'Mental act' computerisations no longer automatically unpatentable

IPO changes tack on software-implemented inventions

Beginner's guide to SSL certificates

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.

Security for virtualized datacentres

More from The Register

next story
Facebook pays INFINITELY MORE UK corp tax than in 2012
Thanks for the £3k, Zuck. Doh! you're IN CREDIT. Guess not
Big Content outs piracy hotbeds: São Paulo, Beijing ... TORONTO?
MPAA calls Canadians a bunch of bootlegging movie thieves
Google Glassholes are UNDATEABLE – HP exec
You need an emotional connection, says touchy-feely MD... We can do that
Lawyers mobilise angry mob against Apple over alleged 2011 Macbook Pro crapness
We suffered 'random bouts of graphical distortion' - fanbois
Just don't blame Bono! Apple iTunes music sales PLUMMET
Cupertino revenue hit by cheapo downloads, says report
US court SHUTS DOWN 'scammers posing as Microsoft, Facebook support staff'
Netizens allegedly duped into paying for bogus tech advice
Feds seek potential 'second Snowden' gov doc leaker – report
Hang on, Ed wasn't here when we compiled THIS document
prev story

Whitepapers

Why and how to choose the right cloud vendor
The benefits of cloud-based storage in your processes. Eliminate onsite, disk-based backup and archiving in favor of cloud-based data protection.
Getting started with customer-focused identity management
Learn why identity is a fundamental requirement to digital growth, and how without it there is no way to identify and engage customers in a meaningful way.
Reg Reader Research: SaaS based Email and Office Productivity Tools
Read this Reg reader report which provides advice and guidance for SMBs towards the use of SaaS based email and Office productivity tools.
Saudi Petroleum chooses Tegile storage solution
A storage solution that addresses company growth and performance for business-critical applications of caseware archive and search along with other key operational systems.
Internet Security Threat Report 2014
An overview and analysis of the year in global threat activity: identify, analyze, and provide commentary on emerging trends in the dynamic threat landscape.