28-10-2011

Computer-implemented inventions may be patentable says UK High Court

The UK High Court has ruled that entirely computer-based methods of designing things are capable of being patented, as they may not be ‘methods of performing mental acts’.

The law on whether a computer-implemented invention can be patented is complex and highly technical. A further complication is that there has, historically, been an inconsistency between the approach taken by the European Patent Office and that taken by the Intellectual Property Office in the UK.

However, in a recent case the UK High Court has decided that a computer-implemented invention – an invention that is implemented in software – is capable of being patented. In this case, the invention applied for was a process for designing a roller cone drill bit, using computer simulations.

Previously, computer-implemented inventions had been classified as mere ‘methods of performing mental acts’, which cannot be patented under UK law. However, the High Court has now said that the relevant inventions are not methods of performing mental acts because they are limited to implementation on a computer. This means that technical methods of designing things are capable of being patentable, even if they are entirely computer-based.

The test is to see what the computer actually does and see if that is patentable or is excluded. The mere fact the task is carried out on a computer does not, of itself, stop it from being patentable.

As a result of this decision the Intellectual Property Office in the UK has changed its staff guidance on the 'mental act' exclusion in relation to computer-implemented inventions.

Recommendation

Businesses with computer-based technical processes should take specialist professional advice on whether they are patentable.