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UKIPO: New Test for Business Method Patentability Produces Same Results

By William F. Heinze

The UK Court of Appeal?s recent judgment in the matters of Aerotel Ltd v Telco Holdings Ltd (and others) and Macrossan?s Application [2006] EWCA Civ 1371 ("Aerotel/Macrossan") (236Kb) proposed a new test for assessing whether inventions such as business methods relate to patentable subject matter.

In ressponse to that decision, the UK Intellectual Property Office ("Office") issued an official practice note on the way patent examiners assess whether inventions are for patentable subject matter. This notice supersedes the following Practice Notices:

• Patents Act 1977: Examining for Patentability (29 July 2005)
• Handling Patent Applications for Excluded Subject Matter (8 February 2002)
• Patents Act 1977: interpreting section 1(2) (24 April 2002)
• Claims to Programs for computers (19 April 1999)

Other Practice Notices on the question of patentable subject matter still stand save as follows:

• Patentability of games (25 November 2005): Paragraph 4 is superseded by the present Notice. The rest of this Notice, which explained the comptroller would no longer rely on the Official Ruling 1926(A), still stands.
• Patent applications relating to methods of doing business (24 November 2004): This said the Office would bring appropriate cases to a hearing at an earlier stage and issue abbreviated decisions. This still stands, and indeed may become even more relevant now that Aerotel/Macrossan has simplified the approach.

A new assessment by the UKIPO now also gives some examples of how the Office sees the test being applied in practice. The examples chosen are patent applications that were refused by hearing officers earlier this year using the old tests. According to the Office, "In every case the new test appears to come to the same conclusion, thus confirming the Court?s view that the new test is consistent with previous decisions of the Court."

Full post as published by I/P Updates on February 08, 2008 (boomark / email).