Exclusions

Non-patentability

Certain broad categories of things that might otherwise be the subject of an invention are excluded from patentability. this includes

• schemes rules and methods for doing business
• a computer program
• a scientific theory or mathematical method
• a literary dramatic musical or artistic work or any other aesthetic creation whatsoever
• a scheme rule or method for performing a mental act playing a game, doing business or the presentation of information

These exclusions only apply to the extent of the patent is for that excluded thing in itself. The fact that the elements of the above may be otherwise incorporated in something which is otherwise patentable does not preclude patentability.

Some of the exclusions are the subject matter of other protection (e.g. copyright). Other exclusions are based on policy considerations seeking to delimit the potential broad effect of patentability in relation to the areas concerned. They seek to encourage abstract theoretical science. The latter methods may lack the relevant industrial or commercial application in any event.

Computer Programmes

The exclusion of computer programs dates back to the early days of computer programs when copyright protection was seen to be sufficient. A computer program may be patented provided that it is  more than a mere computer program in itself. it must produce a technical effect which is novel. The focus is on the effect rather than the mechanism

The UK IPO office consider the position with reference to

• the claim
• the contribution
• whether it is solely within the exclusion
• whether it is technical in nature.

Regard is had to

• whether the claimed technical effect or process operates at the level of the architecture of the computer
• whether the claimed technical effects result in the computer operating in a new way
• there is an increase in the speed or reliability of the computer
• whether a perceived problem or shortcoming is overcome by the alleged invention.

The European Patent Office considers whether the computer program provides a technical solution to a technical problem. The invention must have a technical character in this context must have technical features which are capable of defining the claim. This emphasises the requirement for application rather than methods.

A valid claim in this context should incorporate an inventive step by way of a solution to a technical problem. A technical problem is difficult to define. It must be more than commercial, administrative or organisational.

Life Sciences

There are several exclusions from patentability in relation to life sciences. They include

• methods of treatments of human and animal bodies by surgery
• therapy and diagnostic methods practised on the human or animal body.

The exclusions restrict the patentability of plant and animal varieties and the use of human embryos in industrial or commercial application.

There is a separate Biotechnology Directive which harmonised patent protection of these types of invention. The biotechnology directive provides that inventions concerning plants or animals may be patentable if the technical feasibility is not limited to a plant or animal variety.

Plant varieties are the subject of a stand-alone plant variety right. There is an EU equivalent, the Community Plant Variety right.

Therapy & Diagnosos

Therapy includes any treatment which is designed to cure, alleviate, remove or lessen the symptoms of, or reduce the possibility of contracting, any disorder or malfunction of the animal body. The exclusion is designed to ensure the freedom of medical and veterinary practitioners to perform their profession and the public interest in public health.

Diagnosis includes

• the examination and collection of data
• comparison with normal values
• recording deviations and
• attributing the deviations to clinical reasons

In the case of an invention consisting of a substance or composition for use in any of the above methods the fact that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if the use of the substance or composition in any such method does not form part of the state of the art.

Public Policy

Patents may not be granted in relation to inventions the exploitation of which would be contrary to public morality or public order. the fact that it is prohibited by law or regulation does not make it automatically so.

The Biotechnology Directive excludes, but not exhaustively, certain processes including

• cloning
• modifying the germline genetic identity of human beings
• use of human embryos for industrial and commercial processes
• processing or modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit