A step forward: excluding 'technical' from the test for patentable subject matter

Author: Geoff Dallimore, Chartered and European Patent Attorney

Has the UK Patent Office acted too quickly in changing its practice to incorporate the judgement in CFPH? Geoff Dallimore, Boult Wade Tennant, investigates.

The European Patent Convention (EPC) provides a list of requirements for an invention if it is to be patentable. The most fundamental of these requirements is that it must be an invention. However, the EPC does not actually define what an invention is. Instead, we are provided with a list of "things" that are not inventions. These things include computer programs and business methods and other, insubstantial creations, all of which are placed in the category of "excluded subject-matter". Similar requirements are enshrined in the national laws of individual European countries.

This aspect of European law has been in the news a great deal recently, as a result of the increasingly fractious debate of the European Commission's proposed Directive on the Patentability of Computer Implemented Inventions, which has now been abandoned. As a result of the debate, the terms "technical effect" or "technical contribution" have entered common parlance.

In a recent decision¹ of the UK Patents Court, Mr Peter Prescott QC, sitting as a deputy judge, has undertaken a review of both how the European Patent Office (EPO) determines whether an invention is technical and the slightly different way in which the UK Patent Office attempts to do the same. However, in this decision, Mr Prescott looks beyond the mantra that technicality in one form or the other is a requirement for an invention and seeks to find a 'Third Way'.

Until recently, the favoured approach in the UK to assessing the patentability or otherwise of an invention was to consider what "technical contribution" that invention provided. If there was no technical contribution, then there was no invention. The EPO currently takes a slightly different approach and considers that only the technical features of an invention can contribute to an inventive step. If there are no inventive technical features, then the application is rejected as lacking an inventive step.

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