Requirements for patentability

Contents

Introduction

For an invention to be patentable, it must:

  • Be novel
  • Involve an inventive step
  • Be capable of industrial application
  • Not be within any of the categories of subject matter specifically excluded or made subject to exception

Novelty

Your invention must be novel - that is, it must never have been made public in any way, anywhere in the world, before the date on which you file your application for a patent. For the novelty requirement to fail, the information about the invention (or the means of discovering it from a concrete embodiment) need only be put in the hands of a single person who may use it as he/she likes, free from obligations of confidentiality and similar duties. Likewise, it's enough that a document containing information about the invention was placed in a library or other place in the UK for consultation as of right by any person. If a device is used in a public place, it doesn't matter that no observer actually saw the details of how it worked.

The use of the invention can destroy the novelty of it if it brings about a public release equivalent to publication. The issue is whether a skilled worker, by observation or analysis, could discover and reproduce the invention.

In a system which is strictly 'first to file', an inventor who intends to patent should risk delay only if he/she sees no serious hazard of others publishing or applying for a patent before he/she does. Similarly, an inventor who has not yet filed a patent application should keep it confidential, since, if they allow it to become known, they will have ruined their chances of protecting it.

The making public of an invention does not count in negating novelty for a period of 6 months after it is made if the information was obtained unlawfully or obtained or disclosed in breach of a confidentiality obligation.

In view of this fundamental requirement that an invention must be new to be patentable, it's a good idea to search the relevant literature before filing a patent application, such as:

  • Trade and specialist magazines
  • Sales brochures and journals
  • Search engines and websites on the internet

If you can't immediately find any 'prior art' – a legal term used to refer to anything recorded that is similar to your invention – you can search using online databases such as 'espacenet'.

See 'Sources of further information'.

Inventive step

Your invention is considered to involve an 'inventive step' if the invention isn't obvious to someone skilled in the art in question.

In order to establish an inventive step, the European Patent Office (EPO) favours a 'problem and solution' approach. These means that examiners identify the closest prior art, work out the technical problem solved through the claimed invention and then judge whether that solution is obvious. Their decision is based on looking forward from the prior art, rather than backwards from your invention, so it's not affected by hindsight. UK practice is not formulated in these terms, but equally insists upon the importance of objective assessment.

Obviousness is judged by viewing the invention as a whole against the state of the art as a whole. This means that cited documents do not have to be treated in isolation (as normally they would be when assessing novelty). Instead, they may be read in the light of one another - but only if it is obvious to do so.

Industrial application

An invention is considered capable of industrial application if it can be made or used in any kind of industry, including agriculture.

Industry is to be understood in its broad sense as including any useful and practical, rather than intellectual or aesthetic, activity. It doesn't include making or using something that is useless for any known purpose.

Processes or articles alleged to operate in a way that is clearly contrary to well-established physical laws, such as perpetual motion machines, are regarded as not having industrial application.

Although industry includes agriculture, a process used in agriculture will not be patentable if it is a method of surgery, therapy or diagnosis practised on animals or if it is an essentially biological process for the production of animals or plants.

Special considerations apply to inventions in the field of biotechnology, as the industrial application (i.e. useful purpose) of a biotechnological invention, such as a gene or protein sequence, is very often not apparent from the invention itself.

Patentable subject matter

Certain things are specified that are not 'as such' to be taken as inventions, namely anything which consists of:

  • A discovery, scientific theory or mathematical method
  • A literary, dramatic, musical or artistic work or any other aesthetic creation
  • A scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer
  • The presentation of information

However, in each case, this only applies to the extent that the patent relates to that thing as such.

Whether an invention covers patentable subject matter is a question of law, which is decided during prosecution of the patent application. It is not a question on which applicants are entitled to the benefit of the doubt.

In the main, the exclusions are directed to mental, intellectual, aesthetic or abstract matters, although "a program for a computer" does not entirely fit into these characterisations.

In the UK, the requirements for patentability are considered using a four-step approach, as follows:

(1) Properly construe the claim;

(2) Identify the actual contribution;

(3) Ask whether it falls solely within the excluded subject matter;

(4) Check whether the actual or alleged contribution is actually technical in nature.

The fourth step is intended to be a check, to be used only when an application has passed the three previous steps.

Step two involves asking what the inventor has really added to human knowledge. This is an exercise in looking at substance, not form.

Discoveries, scientific theories or mathematical methods

The finding of a hitherto unknown property in a known material or article is a discovery rather than an invention. However, if the discovery leads to the conclusion that the material can be used for making a particular article or in a particular process, then the article or process could be patentable. For example, finding out that a particular known material is able to withstand mechanical shock is a discovery and therefore unpatentable, but a claim to a railway sleeper made of the material would not fall foul of this exclusion, and would be allowable if it passed the tests for novelty and inventive step.

Similarly, the finding of a new substance or microorganism occurring freely in nature is a discovery, not an invention. A DNA sequence of a gene is not an invention in itself, it is a discovery, but if (as will generally be the case) it is necessary to isolate and extract it, then both a process developed for this purpose, and also the material obtained by this process, could be patentable. In addition, if the material had no previously recognised existence, and can be adequately identified without reference to the process by which it is obtained, then that may be also patentable.

These general principles have also been applied to scientific theories, which are statements about the natural world, reasoned or otherwise, and to mathematical methods. Scientific theories and methods are themselves not patentable, no matter how radical or revolutionary the insights they provide may be, but if they lead to practical applications, these may well be patentable. For example, consider a method of image processing which uses a mathematical method for manipulating image data that leads to an enhanced digital image. This is allowable because the image processing performed is a technical (i.e. non-excluded) process relating to the technical quality of the image. Therefore, even if the idea underlying an invention resides in a mathematical method, the technical process in which the method is used could well be patentable, because it does not seek protection for the mathematical method 'as such'.

Aesthetic creations

This exclusion applies not only to the subjective or mental aspect of aesthetic creation, but also to its physical expression, e.g. in words, painting, sculpture or recorded sound. It is necessary to disregard the form of presentation in a claim and concentrate upon its content. If an article is distinguished from known articles solely by its design, ornamentation or colour, it will not be patentable if this has a purely aesthetic function, but if the distinction has a practical effect then this could save it from the exclusion. For example, if a serving tray were characterised solely by the provision of a particular embossed pattern on its surface, then it would fall within the exclusion, but if it were found that this particular pattern had non-slip attributes unexpectedly superior to those normally associated with embossment, this latter characteristic could be a patentable feature.

Schemes, rules or methods for performing a mental act, playing a game or doing business

Mental acts

A method of learning a language, playing chess or teaching reading would be excluded as methods for performing a mental act.

When considering whether an invention is a method for performing a mental act, it is not relevant whether the act in question is to be performed mentally or in some other way, for example, by a computer programmed to follow steps that the human brain would not ordinarily follow. The fact that a method is formulated, and claimed, as a series of steps suitable for use by a computer or some other piece of equipment and not by the human brain is therefore not sufficient to avoid exclusion when it comes to patent applications.

Playing a game

The patentability of games is assessed in terms of the general approach to patentability, as outlined above. If there is a contribution to the art outside the list of excluded matter, the invention is patentable, but if the only contribution to the art lies in excluded subject matter, it is not patentable. The contribution must be considered as a matter of substance.

Methods of doing business

A method of doing business is not restricted to a way of conducting an entire business or to completed transactions. It may be a tool to facilitate business transactions or procedural steps of an administrative or financial character.

The expression 'doing business' is not restricted to the activities of financial institutions or service industries, but embraces the purely organisational and managerial activities of manufacturing industry.

The approach to be taken is to look at the contribution made by the invention and whether that contribution is, as a matter of substance, a method for doing business.

For example, one patent related to a telephone call handling system that used known types of apparatus to create a new system. It was first decided that, as the system used known apparatus, the invention must lie in the method of its use, and this must be a business method. That decision was subsequently overruled on the basis that, although the components were known, the system as a whole was new. Therefore, the contribution assessed in the second step of the four-step approach was a new system, which did not fall solely within an excluded category.

Computer Programs

As a general rule, any invention which computerises a system or process that is otherwise done manually can't form the basis of a patent application, as it only involves an advance in an excluded field.

An important factor is what the program does as a matter of practical reality. An invention which either solves a technical problem external to the computer or solves a technical problem within the computer does not fall under the computer program exclusion. Improving the operation of a computer by solving a problem arising from the way the computer was programmed (for example, a tendency to crash) can be regarded as solving a technical problem within the computer if it leads to a more reliable computer. Thus, a program that results in a computer running faster or more reliably provides a technical contribution, even if the invention solely addresses a problem in the programming.

However, although the above is the EPO's practice, it remains the case in the UK that, whilst an invention involving a computer is undoubtedly 'technical', in law the mere presence of conventional computing hardware does not mean an invention makes a technical contribution. Therefore, such an invention does not necessarily avoid the computer program exclusion.

In one case, the judge set out five signposts that he considered indicated a program made a relevant technical contribution that would overcome an excluded matter objection. Consider these five signposts in relation to your invention:

i) Does the claimed technical effect have a technical effect on a process that is carried on outside the computer?

ii) Does the claimed technical effect operate at the level of the architecture of the computer - i.e. is the effect produced irrespective of the data being processed or the applications being run?

iii) Does the claimed technical effect result in the computer being made to operate in a new way?

iv) Is there an increase in the speed or reliability of the computer?

v) Is the perceived problem overcome by the claimed invention, as opposed to merely being circumvented?

A 'yes' to any one or more of these signposts is an indication (though not a guarantee) that the excluded matter objection has been overcome.

The presentation of information

Any manner, means or method of expressing information which is characterised solely by the content of the information is clearly excluded, no matter whether it's visual, audible or tangible and by words, codes, signals, symbols, diagrams or any other mode of representation. The mere fact that physical apparatus may be involved in the presentation will not suffice to avoid the exclusion.

The exclusion will not take effect if the invention makes an advance in a non-excluded field. Examples from decided cases include:

  • A newspaper layout designed so that folding the paper did not hinder reading
  • An arrangement of printing upon a ticket serving a mechanical purpose in that information was not lost when the ticket was torn
  • The deliberate, predetermined distortion of an image produced upon a photographic film in order to obtain a desired effect when projected and viewed using appropriately modified equipment

In all these cases, the invention could be defined in terms of technical features independently of the nature of the information.

Inventions contrary to public policy or morality

A patent shall not be granted for an invention if the commercial exploitation of it would be contrary to public policy or morality.

In practical terms, the effect is to prevent the grant of patent rights for inventions that the general public would regard as abhorrent or from which the public need protection. It provides a reasonably objective test which has to be applied to each invention and its particular set of facts and circumstances. Clearly, what is regarded as contrary to public policy or morality will vary according to changes in social attitudes.

Biological subject matter

A patent will not be granted for any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a microbiological process or the product of such a process.