UK: Computer Implemented Inventions In The UK: Clarity From The High Court?

Last Updated: 13 October 2011
Article by Avi Freeman


In a recent decision of the High Court, Halliburton v Comptroller of Patents ([2011] EWHC 2508), relating to the high-profile area of patent law (patentability of computer-implemented inventions), His Honour Judge Colin Birss has made some interesting and useful comments that can serve as a helpful guide to those seeking patent protection in this area. The court's conclusions may be summarised by stating that the "contribution approach", explained below, holds, but when considering whether or not a computer program is patentable subject matter, it is necessary to look to see what task it is that the program, or programmed computer, actually performs. As discussed below, this should be borne in mind when drafting a new application in this area for filing at the European Patent Office (EPO) and/or the United Kingdom Intellectual Property Office (UKIPO).

The general, legal provisions for having a patent granted are that first there must be an "invention", and second that invention is considered new and involves an inventive step when considered against everything that has gone before. Within the law there is no positive definition of what something must be or do to qualify as an invention. Rather, a list of exclusions is provided that define those things that are considered not to be inventions. In general the list includes abstract ideas, and specifically includes, computer programs and rules and methods for performing mental acts. Something will only fall foul of one of the exclusions if it is considered to relate to that thing "as such". Accordingly, in the history of patent law many cases have focussed on exactly what it takes to escape the exclusions.

The EPO Position

Technologists and engineers in the area of computer implemented inventions are probably aware of the oft repeated mantra that computer software is excluded from patent protection in the UK unless there is some "technical contribution". This can be traced back some 25 years to the well-known Vicom decision (T208/84 OJ EPO 1987) of an EPO (Technical) Board of Appeal. This decision related to an invention comprising a method of digital image processing using "operator matrices" for convolving with a data array representing an image. The Board of Appeal considered the specific exclusion from patentability of computer programs as such and decided that an invention which would be patentable in accordance with conventional patentability criteria should not be excluded from protection simply because it was implemented using "modern technical means in the form of a computer program".

Rather, what mattered, and indeed was considered decisive, was the technical contribution the invention as defined in the claims when considered as a whole made to the known art. This became known as the "contribution approach" and was for many years the accepted approach before the EPO.

Then some years later the rationale of this decision started to be challenged. The main objection was that the contribution approach seemed to conflate what should be separate grounds for patentability, that is to say, the test for patentable subject matter (do you have an invention?) with the tests for novelty and inventive step (is it new and inventive?) In other words, to work out what a "contribution" is, you must first consider the state of the art to which the contribution is made. However, the state of the art is what is used to determine whether or not an invention is new and involves an inventive step. In other words, a "contribution" of any sort is not the correct test for whether or not something is patentable subject matter.

The EPO case law thus developed and moved away from the contribution approach until today we have what may be thought of as an "any hardware" test. If a claimed invention mentions hardware, then you have an invention. This sets the threshold for patentable subject-matter very low. The hurdle is however raised when it comes to inventive step since only the technical features of a claim are deemed capable of contributing to the inventive step of an invention. Thus, for example, the mere computerisation of a business method will almost certainly not be protectable by patent, since only the technical features, i.e. the known computer, can be taken into account when deciding on inventive step. Since the computer is a known piece of apparatus it cannot involve an inventive step, let alone be new.

The UK Position

Looking now at the UK, by a series of decision over the years in the UK Court of Appeal, the UK courts have adopted the EPO-derived contribution approach and to this day, this stands. The approach was formalised in the Aerotel decision of the Court of Appeal ([2006] EWCA Civ 1371), which provides a four point test for deciding this matter. The UKIPO must therefore use this approach when examining applications for patents.

Thus, given the EPO's departure from the contribution approach, there has been much discussion by lawyers in the UK, and Europe more generally, about the differences on this matter as between the UKIPO and the EPO. This recently came to a head when the EPO's highest judicial authority, the Enlarged Board of Appeal (EBA) was asked to rule on the apparent divergence of EPO positions. One difference identified in the referral to EBA was based on the fact that some Board of Appeal Decisions have accepted the mere presence of a computer in a claim as being enough to provide patentable subject matter, whereas others have not.

For technical legal reasons relating to the powers it has to answer questions referred to it, in its opinion G3/08, the EBA declined to answer the questions it was asked. However, it did explain at some length, that the approach that the EPO currently adopts, described above as the "any hardware approach", is what is used by Examining Divisions and Boards of Appeal and understood by the patenting community. Thus, it concludes that on this matter there is no uncertainty amongst users of the European patent system.

Halliburton v Comptroller of Patents ([2011] EWHC 2508)

In this recent decision ("Halliburton"), there is provided a clear and well-written review of this area of law. Halliburton is to do with the computer software and mental act exclusions.  In essence, the judge concluded that when you have an invention that is implemented in software, this is not of itself enough to conclude that the subject-matter is excluded. As he stated,

"...The question is decided by considering what task it is that the program (or the programmed computer) actually performs.  A computer programmed to perform a task which makes a contribution to the art which is technical in nature, is a patentable invention and may be claimed as such..."

This may be characterised as what I refer to as a "black box" test. The test involves placing the invention, in a black box that does the function the invention is designed to do. It matters not how the function is performed or achieved. What matters is if that black box considered as whole does something technical. This may be useful in coming to a conclusion and is the way the UK courts seems to be thinking at present.

Interestingly, it seems, as the judge commented, that to fall into the computer software exclusion it is almost always necessary really to fall into two of the specific excluded areas. The fact that the invention is implemented in software is not of itself enough to exclude the invention. What matters is what the programmed computer does. If this too is excluded, say as one or more of a business method, the presentation of information etc, then the subject matter will be excluded. This approach is a useful commercial approach and provides some clarity when facing decisions early in the innovation process. It can help inform the decision as to whether or not the investment in patent protection is likely to be worthwhile.

Of further interest was that one of the main points for consideration in this decision is the extent of the "mental act" exclusion. The invention in Halliburton related to a method of designing drill bits for drilling in earth formations, i.e. large drill bits for oil fields and the like. The application had been refused by the UKIPO as a mental act and the applicant appealed this point. The judge therefore had to decide how to construe this exclusion. The judge identified a wide construction being one in which a method is a scheme for performing a mental act if it is capable of being performed mentally regardless of whether as claimed it is in fact performed mentally. In the alternative a narrow construction was identified as one that would only exclude acts actually carried out mentally. The judge opted for the narrow construction based on UK precedent and also on the basis that the wide construction is uncertain in scope. He could see no reason to construe it in this wide way. By referring to the uncertain scope he seems to indicate that the wide construction could end up coverings lots of things that really ought not be covered and which should not be denied patent protection.

Next of particular interest to users of the UK and EPO systems were the judges comments regarding which approach (UKIPO or EPO) is likely to be "better" for patent applicants seeking protection for their inventions. The judge concluded, that the effect of following one approach as compared to another e.g. the UK instead of EPO, will not lead to a different overall outcome. In other words, the conclusion of the judge in this case seems to be that the relative chances of success on a patent application directed to a computer implemented invention as between the UK and the EPO seem to be very similar, even if before the EPO you will fail for lack of inventive step, whereas before the UKIPO you will fail for unpatentable subject matter.

Will the UK Follow the EPO?

Finally, readers may well be aware of the tension that has existed between the UK courts and the EPO on this subject due to the different approaches taken, as discussed above. This has brought specific mention in various cases. For example, in one Board of Appeal decision (Duns Licensing Associates, L.P., T154/04), responding to a suggestion by the UK courts that the EPO might like to clarify exactly what approach should be followed, the UK courts themselves were accused of taking an approach that was inconsistent with a good faith interpretation of the European Patent Convention. Harsh words indeed from one judicial body to another.

The present judgment indicates that it was suggested to the court that the UK should now depart from the contribution approach of Aerotel and follow instead the EPO approach to excluded subject matter (any hardware). The rationale given was that the EBA has effectively definitively ruled as to what the EPO approach is (by refusing to answer the questions put to it and thus confirming the status quo) and so national courts should align behind this, in the interest of harmony across Europe on this important legal and commercial matter. This was dismissed in no uncertain terms by the court, stating, not unreasonably, that the EPO approach to excluded subject matter, will only work in combination with the EPO approach for inventive step (only taking into account technical features). The court stated that to suggest that you can take one without the other, "will not do"!


To conclude, the position in the UK has been stated clearly. The contribution approach holds, but when considering a computer program, it is necessary to look to see what task it is that the program, or programmed computer, actually performs. When drafting a case in this area, it would be advisable to have this view in mind so as to maximise the chance of success before the UKIPO, or indeed the EPO.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.