In recent years, machine learning and so-called 'artificial
intelligence' systems have once again come into the spotlight.
As ever, patent law both in the UK and around the world has
developed to keep pace with and encourage these emerging
The UK Intellectual Property Office (UKIPO) and the UK
courts are often guided by decisions of the European Patent
Office (EPO). However, when considering the patentability of
computer-implemented inventions both the EPO and the UKIPO have
forged their own path.
In the UK, the patentability of computer-implemented
inventions is viewed through the framework of the
Aerotel case. Here, the patentability of a
computer-implemented invention is decided by first determining
the actual inventive contribution defined by the claims of a
patent application in view of the existing technology.
Subsequently, in a second stage, this inventive contribution is
considered to determine whether it falls solely within the
subject matter excluded from patentability, for example the
contribution defined by the claims is purely a business or
In a final stage, the inventive contribution is assessed to
determine if it is technical in nature, for example by
effecting a process which occurs outside a computer. If this
final criterion is satisfied, the patentability of the claimed
subject matter will be viewed favourably by the UKIPO.
On the other hand, the EPO takes an approach whereby the
recitation of a single technical feature, even a generic
computer system, in a patent claim is sufficient to draw the
claim out of the realm of excluded subject matter. However,
once this first hurdle is overcome, the EPO will then disregard
any non-technical features, such as presentations of
information or methods of doing business, included in the
claims and consider the novelty or inventiveness of the
remaining subject matter. If after disregarding any
non-technical features all that remains is a generic computer
system, the claim will lack novelty or an inventive step.
In practice, while the methodology used to assess the
patentability of computer-implemented inventions differs
between the EPO and the UKIPO, both approaches tend to arrive
at a similar conclusion. However, to ensure the best chance of
success before both the EPO and the UKIPO, it is vital that any
draft patent application directed towards a
computer-implemented invention discusses the real world effects
of the invention in detail.
Kings Park House
22 Kings Park Road
Southampton SO15 2AT
Tel: +44 1962 600 500