When is an invention not an invention but a business method?

The answer is where the invention is concerned merely with providing an improved process ie a transactional process over a computer network and therefore it will fall within the business method exclusion of the Patents Act 1977.

Ask yourself does it provide a technical contribution required to make an otherwise excluded invention patentable, and not a mere representation of non-technical changes to a business method in order to overcome technical problems.

Your only main argument being that the invention is patentable since it solves technical problems by technical means.

Your patent will fail if the claimed invention in the parent application is not new and non obvious, and it falls within the business method exclusion. The test applied was the Patent Office test of “technical contribution” or the different test of the European Patent Office (EPO).

What is the difference between the 2 approaches? Â

The difference between the two approaches was that the EPO filtered out excluded subject matter at the last stage, that of considering obviousness, while the UK Patent Office did so at the first stage, when considering excluded subject matter.

The EPO does not apply the technical contribution test. An examiner will identify what was the advance in the art which was said to be new and non obvious and susceptible of industrial application, and the second step was to determine whether it was new and non obvious and susceptible of industrial application under the description of an invention in the sense of the European Patent Convention 1973 Art. 52.

“Technical contribution”

Examiners have been using the “technical contribution” test to assess whether inventions fall outside the exclusions set out in s.1(2) of the Patents Act 1977. Recognising the importance of the case law of the European Patent Office (“EPO”), examiners have often also applied the test now used by the EPO, as set out in the EPO Board of Appeal decision in Hitachi T258/03. However, they
have done this largely as a cross-check, taking the view that the “technical contribution” test was the proper one under UK law.

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