Wednesday, November 2, 2011

UK Intellectual Property Office adopts narrow view of mental act exclusion

In an earlier blog post I discussed Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) (05 October 2011).  In that case the UK IPO’s wide construction of the “mental act” exclusion was highlighted as flawed.

Two interpretations

The Court observed that there are essentially two possible interpretations of the “scheme, rule or method for performing a mental act” exclusion, a wide one and a narrow one.

The wide construction is that a method is "a scheme, rule or method for performing a mental act" if it is capable of being performed mentally.  Regardless of whether, as claimed, it is in fact performed mentally. Read this way the exclusion excludes methods of the type performed mentally regardless of how they are claimed.

The narrow construction is that the exclusion only excludes acts carried out mentally. On the narrow construction a claim to a calculation carried out on a computer could never be caught by the mental act exclusion because the claim does not encompass carrying out the calculation mentally. The fact that calculations in general are the kinds of thing which are capable of being performed as mental acts is irrelevant.

The Court reviewed earlier precedents and concluded that the balance of authority in England is in favour of the narrow approach to the mental act exclusion.

It was observed that the correct scope of the mental act exclusion is a narrow one. Its purpose is to make sure that patent claims cannot be performed by purely mental means and that is all. The exclusion will not apply if there are appropriate non-mental limitations in the claim.

The Practice Note

It was observed that the approach proposed to mental acts of the current UK Practice Note issued on 8 December 2008 is wrong in law and should not be followed.  Paragraph 8 assumes a wide construction and states that “in future examiners will object to the computerisation of what would have been a pure mental act if done without the aid of a computer as both a mental act and a computer program as such”.

The UKIPO has now issued a notice on the patentability of mental acts.  The notice replaces paragraph 8 of the current practice note.  Examiners will now take a narrow view of the mental act exclusion.  In future, claims which specify that the invention is implemented using a computer will not be considered to be excluded from patentability as a mental act.

I expect that reference to a non-mental limitation in a claim such as a processor, a display, a data input component, a data network and/or a data storage component will be sufficient to avoid the mental act exclusion.

Photo courtesy of author TZA under Creative Commons licence.

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