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Reviewed 5 December 2012

Patent applications relating to methods of doing business

The practice disclosed in this notice has been updated, please see the Manual of Patent Practice for current practice in this area.

We are receiving an increasing number of patent applications relating to methods of doing business that are inherently unpatentable. In the usual course of events, at the examination stage there are several exchanges of correspondence between the examiner and the applicant, as the applicant makes successive attempts to rephrase the claims in the hope of coming up with some that are patentable and/or deal with other, less-important issues that have been raised. Only when the end of the rule 34 period [1] is imminent is a hearing appointed, normally at short notice. The Hearing Officer then issues a lengthy decision, going carefully through all the arguments advanced. Often, these arguments are very similar to those that have been advanced in many other cases.

We have come to the conclusion that this is not an efficient and sensible use of our resources, nor is it a sensible procedure from the applicant's perspective as it simply increases costs for no real benefit. Accordingly, we are making two changes to the way we handle business method applications for which the examiner considers there is very little, or no, prospect of grant because the invention is inherently unpatentable:

  • The examiner will invite the applicant to a hearing at an earlier stage in the examination process. Upon receiving the response from the applicant to the first examination report under section 18(3) of the Patents Act 1977, the examiner will re-consider whether the application discloses a patentable invention. If the examiner remains of the opinion that there is no prospect of a patent being granted, the application will be referred to a Hearing Officer immediately for a decision on whether the application should be refused. The applicant will, of course, be given the opportunity for an oral hearing. The examiner will not engage in further exchanges of correspondence about any other matters that might be outstanding. Instead, consideration of these will be deferred pending the Hearing Officer’s decision on the key issue of patentability.
  • In appropriate cases, Hearing Officers will issue abbreviated decisions. If the Hearing Officer decides to refuse an application, the Hearing Officer will not necessarily give detailed reasons for rejecting each of the arguments advanced if those reasons are, in essence, the same as those that have been rejected in previous decisions. Instead, the Hearing Officer will merely refer back to the previous decisions. This is consistent with the judgment of the House of Lords in South Bucks District Council and Another v Porter (No. 2) [2004] UKHL 33 where their Lordships held that provided a tribunal’s reasons are intelligible and adequate in enabling the reader to understand why the matter was decided as it was, they could be briefly stated.

A clear indication of the sort of business method applications that are inherently unpatentable can be gained by looking through some of the many decisions on this issue made by Hearing Officers recently. A list of examples of refused applications is attached as an annex to this document. Guidance can also be found in Practice Notice Patents Act 1977: Interpreting section 1(2) [2002] RPC 40.

Applicants should also be aware of the recent EPO Technical Board of Appeal Decision in Hitachi (T258/03) which departed in some respects from the earlier decision in Pension Benefit Systems (T931/95). Whilst the general approach set out in Hitachi may seem somewhat different from the approach laid down by previous UK court decisions, we are of the view that the traditional UK approach and the Hitachi approach will almost always come to the same end result. Applicants should particularly note the conclusion in Hitachi that circumventing a technical problem through modification of a business method (rather than solving it by technical means) cannot contribute to the technical character of a computer-implemented invention.

If you have any enquiries about this Practice Notice, please contact Thomas Marlow at :

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Tel: +44(0)1633 813572
Fax: +44(0)1633 814491

Sean Dennehey
Director of Patents

Footnote

That is the period prescribed by rule 34 of the Patent Rules 1995