Hewlett-Packard applied to register a patent for a computer implemented method of selecting an image to insert into an electronic document. An Intellectual Property Office examiner initially rejected the application on the basis that the patent applied for related to a mental act, or a mathematical means of performing a mental act electronically. UK patent applications can be refused on various grounds, one of which is if the patent subject matter falls within an excluded type, such as pure business methods or a method for performing a mental act.
A hearing officer at the Intellectual Property Office has allowed Hewlett-Packard’s appeal against the rejection. The appeal was allowed following the consideration of previous cases, in particular the High Court’s ruling in Halliburton, which concluded that mental acts could be patented where mathematical calculations with software and are technical enough to be patentable, and that the exclusion of patentability for mental acts should be interpreted narrowly. The application was sent for further examination by the IPO following the decision.