The UK Patents Act has the same exclusions on patentability as the European Patent Convention, but the case law over the years has diverged slightly in its approach to assessing whether an application is excluded from protection.
The main case now referred to is the Aerotel case (Aerotel Ltd v Telco Holdings Ltd [2007] RPC 7) which set out the following steps to assessing whether a patent application should be excluded:
- Properly construe the claim.
- Identify actual contribution (although at the application stage this might have to be the alleged contribution).
- Ask whether it falls solely within the excluded matter.
- If the third step has not covered it, check whether the actual or alleged contribution is actually technical.
A further case highlighted a number of signposts which could be used to assess the technical contribution (AT&T Knowledge Venture v Comptroller of Patents [2009] FSR 19).
- Whether the claimed technical effect has a technical effect on a process which is carried on outside the computer.
- 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.
- Whether the claimed technical effect results in the computer being made to operate in a new way.
- Whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer.
- Whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
