A comprehensive analysis of the approach to patentable subject matter in the UK and EPO

Article 52(2) and (3) European Patent Convention sets out what matter shall be excluded as patentable subject matter and to what extent. Although transposed into s 1 of the UK Patents Act 1977, the approaches of the EPO and UK IPO and courts as to interpretation and application of these provisions has not been consistent, but has coincided and clashed at various points. The EPO and UK IPO both consider only technical subject matter to be patentable but then diverge as to what constitutes “technical in practice”. Having tried to keep consistent with the EPO, in the last decade the UK courts have appeared to diverge from the EPO, sticking to their own path. In this article the author sets out the legislative background and then provides a thorough critique and analysis of the EPO and UK approaches respectively. The approaches used in relation to patentable subject matter vary markedly between the UK and the EPO. The UK uses the four-step Aerotel test, based on the “technical effects” test, whereas the EPO uses the “any hardware approach”. Although UK patent law has tied itself in knots to stay consistent with the EPO the two remain firmly at odds.