UKIPO Hearings Update

In the UK, Patent applications are examined for novelty, inventive step and to determine if the application contains subject matter that is excluded from patentability under the provisions of UK Patent law. Typically, there will be several rounds of examination. If all the objections are met, then the case will be allowed and a patent will be granted. However, in some cases the applicant and the Examiner will not be able to agree on allowable claims, either for reasons of novelty/inventive step, or because the application is considered to relate to excluded subject matter. In this case, the applicant can request a Hearing, or the Examiner will suggest the case proceeds to a Hearing. In a Hearing the case will be reviewed by a senior Examiner, with no previous involvement in the case, to determine if the Examiner’s objections are correct, or if the case should be allowed. 

In this article, we consider the position if the case attracts an objection of excluded subject matter that cannot be overcome during the standard examination, and is referred to a Hearing to decide issues of excluded subject matter.

Under UK Patent law, excluded subject matter is governed by section 1(2) of the UK Patents Act which recites:

It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of –

• a discovery, 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 or doing business, or a program for a computer;
• the presentation of information; but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.

For the purpose of this article, we are considering the exclusions in sections 1(2)(c) and (d), but not sections 1(2)(a) and (b). For example, if the patent application relates to display of work schedules, or safe traffic routes, it may be excluded under section 1(2)(d). Alternatively, if the patent application is considered to be merely the automation of a mental act, such as determining a specific way of organising or presenting data, it will be excluded under section 1(2)(c). Similarly, if the application is performed entirely within a computer, it may be objected as only related to a program for a computer under section 1(2)(c). The UKIPO (during Examination and the Hearing) follows the approach set out by the UK courts to determine if subject matter is considered to be excluded. There are specific tests, as set out in court judgements, that will be applied to determine if the claimed subject matter should be excluded. 

In recent years, if a patent application was referred for a Hearing to discuss excluded subject matter, then the chances of overcoming this objection were extremely low. For example, between 2015-2021, of the decisions by the UKIPO related to excluded subject matter, the Hearing Officer decided in favour of the Applicant (that is, that the subject matter was not excluded) in less than 15% of the cases. However, in some years, none of the cases were decided in the Applicant’s favour. Of course, many cases will either:

1. a) have been abandoned before reaching a Haring; or
2. b) the Applicant will have overcome the Examiner’s objection to excluded subject matter before a Hearing was deemed necessary.

The number of cases under a) is likely to greatly outweigh the number of cases under b).  So the actual % of cases that are granted, following an objection of excluded subject matter during the prosecution, is likely to be significantly less than this figure of 15%. 

Presently, the prevailing opinion of many Applicants is that the Examiners at the UKIPO are overly harsh in applying the tests to determine excluded subject matter. This is particularly the case, when the same patent application has been allowed in other jurisdictions, including by the European Patent Office, which could itself lead to a granted GB patent. Therefore, an applicant will need to present good arguments at the Hearing to try to get the case allowed. 

In recent years we have handled several cases, in different technical areas, and for a range of different clients that have been referred to such a Hearing. W we are pleased to say that our success rate is much higher than the norm for Hearings at the UKIPO, in general. For example, in a recent decision from 2021, the Hearing Officer found that an invention related to improving authentication of a user to allow access to a network resource, was allowable, despite several previous rounds of communication with the Examiner. See decision O/701/21. Similarly, a case that was concerned with identification of devices at different locations, determination of different routes for the devices, and activation of cameras along the route, was found to be allowable when the case was reviewed by the Hearing officer. See decision O/375/19. In these examples, we were able to provide arguments that followed the specific tests as set out by the UK Courts, to show that the subject matter was not ‘merely excluded subject matter’, but did in fact contain allowable subject matter.

If you would like more information on how we could help you with your patent applications, particularly if you have cases that have been referred to a Hearing to address an objection of Excluded Subject Matter at the UKIPO, then please contact us at Optimus Patents:

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