Daaci - The final Aerotel test

As we all now know, the Aerotel test for assessing patentability in the UK is no more. We are currently waiting for the UK IPO to reassess the application from Emotional Perception following the Supreme Court remitting the case to the Hearing Officer, who first dealt with the application in 2022. Last month's decision in the case of Daaci Limited's Application (BL O/0086/26) was the last time the test will have been used in a decision from the Hearing Officer at the UK IPO. The decision is therefore largely of academic interest, but there are a few aspects that intrigued me, the main one being that the same attorney that handled the Emotional Perception case was also representing the applicant in this case. 

Daaci Limited (previously named Heresy Artificial Intelligence Limited) is a curious entity, and with an interesting patenting history in the UK. They have had some success in patenting inventions relating to automatic musical compositions in the US, with 6 granted US patents to their name so far. Given the subject matter, you might expect their success rate in the UK to be not great. They did, however, manage to get 3 patents granted in 2024, apparently on the back of the High Court judgment in Emotional Perception (which issued in November 2023), but surprisingly all 3 have since ceased due to non-payment of renewals. The company nevertheless continued to pursue two other applications, one of which was decided on last month. Another is currently awaiting a hearing following a request that the case be heard after the Supreme Court decision. 

There are another couple of curious features about Daaci Limited. One is that they have stated their IP assets to have a value of over £12 million, although the company is currently in liquidation. The company is also stated to be a "sister company of Emotional Perception AI Limited" (according to the representative), presumably because they share a company director in the form of Philip Walsh. 

The decision last month related to GB2104696.6. As with the other applications mentioned above (which are divisionals of this one), the application related to a system and method for automatically generating a musical composition based on a "briefing narrative describing a musical journey with reference to a plurality of emotional descriptions for a plurality of musical sections along the musical journey". The system involved a database of musical artefacts that were reduced to constituent elements (termed ‘form atoms’) and linked together based on stored rules to assemble a composition having regard to the briefing narrative and provided as an audible musical output. 

Figure 3 of the patent application. 

As one might expect for such an invention, the examiner objected that the claimed invention was excluded from patentability as being a program for a computer as such. Following the Aerotel test, the examiner assessed the contribution as a system for automatically generating musical compositions using form atoms, which allowed a user to generate a musical composition having musical features such as melodies, harmonies, chords, and rhythms that reflected and conveyed textural descriptions of a supplied briefing narrative. This contribution was found not to be technical. 

Before the Hearing Officer, the representative argued that the invention contained elements that were not merely a computer program but were functional and interacted with physical elements, such as the database storing novel structures as code. The representative also argued that the ‘form atom’ feature was not a computer program per se and the claim as a whole did not therefore relate to a program for a computer as such. A similar type of argument was made by the same representative in the Emotional Perception case, where the arrangement of an ANN was argued not to be excluded under the computer program exception. This argument had some success at the High Court before an obviously very inexperienced judge, but was knocked down at the Court of Appeal and the Supreme Court. 

The Hearing Officer, with knowledge of the Court of Appeal decision, disagreed on this point, and referred to the caselaw in this area that dated right back to Merril Lynch [1989] RPC 561, in which Fox LJ considered that it could not be permissible to patent an item excluded by section 1(2) under the guise of an item which contained it (a similar point was made in Gale's Application [1991] RPC 305). It was instead decisive what contribution the invention made to the known art, for example a substantial increase in processing speed as in Vicom (T 208/84). 

The applicant also argued that the assembly of unique pieces of music was a technical process and that the invention was in the area of musical technology, referring to Article 27 of the TRIPs Agreement, which states "patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application". The hearing officer dismissed this argument too, considering that the Aerotel test did not exclude entire fields of technology but stepped through a careful analysis to assess each invention on its merits and determine whether the invention was anything more than those integers excluded under the Act. Incidentally, how this argument was thought to have the remotest chance of success, given that TRIPs dates back over 30 years and all arguments about its effect on patentability in the UK and Europe (which were effectively zero) had been settled at least 20 years ago, is quite beyond me. 

In assessing the contribution and how the invention worked, the Hearing Officer considered that the claimed invention allowed a user to generate multiple alternative compositions quickly, resulting in a more effective way of providing a system to generate a musical composition. The key question was, in analogy with Vicom, whether this composition of music based on an emotional briefing was a technical process. The output had a subjective and cognitive effect on the user in the manner of the aesthetics or emotional impact of the music. This was not considered to be a technical effect outside of the computer but instead was the automation of a creative process. The invention was considered to be a sophisticated and clever way of encapsulating the sort of knowledge, rules and ‘ear’ that a creative composer may possess, but the process being emulated was a creative one that was not technical in the sense that a creative process itself was excluded. The claimed invention was found to fall solely within excluded matter and was not technical. The application was therefore refused.

Given how applications of this type have been assessed over the years using the Aerotel test, the outcome is not at all surprising or unusual. How would such an application fare in light of the abandonment of Aerotel and with the (as yet officially undefined) new test that should instead incorporate the concept of technical character from the EPO problem-solution approach? Readers will know that I have proposed just such as test, which involve six steps so that the EPO approach can be combined with the UK Pozzoli approach to inventive step. The following is an abbreviated attempt to figure out how the application might be assessed, and if it would make any difference to the outcome. 

Claim 1 of the application in the form placed before the Hearing Officer is as follows:

1. A computer-based auto-generative composition system, comprising:

an input coupled to receive a briefing narrative describing a musical journey with reference to a plurality of emotional descriptions for a plurality of musical sections along the musical journey;

a database comprising a multiplicity of Form Atoms having self-contained constructional properties within metadata associated with the Form Atom and where the self-contained properties are derived from an historical corpus of music and where each Form Atom has:

a generative set of heuristics that support generation of a set of chords in a chord scheme or many different sets of chords in the same or different tonics that achieve the same form function and which thus have similar associated emotional/musical connotations, and heuristics that space out temporally any number of generated chords for any given length of musical time;

a tag that describes compositional heuristics of its respective Form Atom;

a chord list in a local tonic where the chord list defines branching structures giving options for generation of different chords from the local tonic, and a progression descriptor in combination with a form function that expresses musically one of a question, an answer and a statement, and wherein the metadata creates a meta-map of a chord scheme in a musical section that is linkable to one or more secondary Form Atoms in generation of a musical composition in which, upon automated selection and concatenation of musically related Form Atoms by a computing system operationally arranged to identify and select different Form Atoms, musical good form is established in the generative composition based on compatible heuristics, chord lists and progression descriptors of each Form Atoms selected for adjacent concatenation, and wherein musical good form is compliant with conventions in accepted musical composition and musical good form contrasts with musical bad form in which there is no obvious or known linking that makes any discernible musical sense between successive musical phrases and in which musical bad form fails to communicate structure because sound signals cannot logically be processed into a sensually resolvable anticipatory order;

wherein musical transitions between Form Atoms are mapped to identify and then record established transitions between Form Atoms in multiple original scores and such that, within the system, groups exist in which Form Atoms are identified as having similar tags but different constructional properties; and

processing intelligence, within the system, responsive to the briefing narrative and coupled to the database, wherein the processing intelligence is arranged to:

assemble, automatically, a generative composition having regard to the briefing narrative through selection and concatenation of Form Atoms having tags that align with emotional descriptions timely required by respective ones of the plurality of musical sections; and

select and substitute Form Atoms into the generative composition, the substitute Form Atom:

derived from the historical corpus of music; and

having its compositional heuristics aligned with the emotional descriptions; and wherein

the processing intelligence is further arranged to cause output of the auto-generative composition as musical output created from applied heuristics within a texture generator of the generative system, said texture generator arranged to select and apply

musical instrumentation and arrangements to sequential chord schemes, formed from Form Atoms selected to generate a harmonic palette, for orchestration of the auto-generative composition and whereby the musical output is made audible from a speaker

receptive of the musical output; and

generating automatically a different generative composition in response to at least a change in the briefing narrative.

The claim is very long and is hardly a model of clarity, having many features that appear to serve no purpose other than to provide obfuscation. The overall gist, however, appears to be reasonably clear, which is that the claimed invention is about automatically generating a musical output from a briefing narrative with use of a database of 'form atoms'. 

Step 1: construe the claimed invention and determine the technical character

Claim 1 defines a "computer-based auto-generative composition system", which comprises an input to receive a briefing narrative, a database with various features, and a "processing intelligence" responsive to the briefing narrative and coupled to the database, which is arranged to cause a musical output based on heuristics in the database. The claimed invention has technical character because it involves computer hardware on which the system is provided, which receives an input and generates an output. The initial hurdle is therefore overcome, and the invention is not excluded for being a computer program as such. 

Step 2: Determine the closest prior art

This was not determined in the Hearing Officer decision, but WO 2009/036564 A1 was cited during prosecution and discloses a similar type of system in the form of a "flexible music composition engine", which generates music in real time based on provided inputs, and uses an "emotional mapper" to generate musical lines and harmonic patterns. This seems a reasonable starting point, at least to establish that computer-implemented musical generating tools are known. 

Step 3: Determine the features that contribute to the technical character

Both the input and output are in the form of cognitive information relating respectively to literary and musical works, which cannot themselves contribute to the technical character of the invention. The computer on which the system operates has technical character, so any feature of the computer could in theory contribute to the overall technical character of the invention, although as we have already established this would need to contribute to improving the computer itself in some way, given that the output is not technical. 

Step 4: Identify the inventive concept

The inventive concept outlined in the description (under the summary of the invention, pages 11-12) relates to a generative composition system that reduces existing musical artefacts to constituent elements, which are linked together through Markov chains. To provide a new composition, a set of heuristics define how musical sections are concatenated following a supplied briefing narrative. 

Step 5: Identify what, if any, differences exist

The features of the invention that could in theory contribute to the technical character, i.e. the computer as a whole or the database and processing intelligence operating on the computer, are not defined in claim 1 in a way that operates on the hardware level but as descriptive and functional elements that relate to heuristics and metadata, and therefore relate only to subjective cognitive features that would be implemented as a program for a computer to output a musical composition. There are therefore no features in claim 1 that could support novelty or inventive step over the closest prior art, even if there are any differences in how the system operates. 

Step 6: Would these differences be obvious to the skilled person?

There is no need to answer this because there are no features that can support even novelty, let alone inventive step. 

In conclusion, the claimed invention is not patentable because there are no features that can support novelty or inventive step over the prior art. The application would therefore be refused under this new test, although the reasoning is a bit different. 

A Supreme Court Fudge - 6 Steps for Emotional Perception

As everyone knows by now, the Supreme Court handed down its judgment in the Emotional Perception case last week. There is plenty of commentary around on the judgment itself, so I won't go into the detail of it here. For background, I wrote about the case at the UK IPO stage in the September 2022 CIPA Journal, at the High Court here and at the Court of Appeal here. In brief, the invention is about the use of an artificial neural network (ANN) to compare two media files to determine how similar they are semantically, the main described application being for recommending a music track based on similarities with other music tracks. The application was refused by the UK IPO Hearing Officer in June 2022. The applicant then appealed to the High Court, which overturned the decision (and in my opinion got it completely wrong - see here for why). The Court of Appeal then reversed this finding (correctly in my view) and the Supreme Court has upheld in part the Court of Appeal's decision but decided that now is the time to abandon the Aerotel approach for determining patentability. What this is to be replaced with, however, is not yet clear. 

A new hurdle and some steps. 

Upon finding that the EPO's "features which contribute to the technical character" approach to assessing patentability, as set out on G 1/19, was to be preferred to the Aerotel "technical contribution" test, rather than setting out a new test the Supreme Court decided to send the case all the way back to the UK IPO Hearing Officer to consider the matter. Given that the assessment of inventive step as set out in Pozzoli was explicitly not overturned, the Hearing Officer now has the task of figuring out how to put together (in what the UK IPO argued would be a "Frankenstein monster") a test that takes parts of the EPO's problem-solution approach as applied to patentability and combines these with the Pozzoli test for inventive step. Presumably novelty will also need to be assessed somewhere along the way. How to do this, however, is not at all obvious, and no suggestions were made as to how to do this from either the applicant's representatives or from the contributions made by CIPA and the IP Federation. Regardless of what the IPO now come up with, the result will inevitably be further discussion and arguments about whether the test is correct and how to apply it. It may even end up in a further appeal that could go all the way back up to the Supreme Court, although more likely will end up at the Court of Appeal again, where a new test will be settled. All this is bound to take some time. 

For the time being, we have to try to figure out what all this means in terms of the test we have to apply. To a first approximation, given that the main gist of the Supreme Court's decision was to make the UK approach more in line with that at the EPO, it would be reasonably safe to assume that following the EPO's problem-solution approach will more or less work, although some parts will need to be adjusted to align with UK law. Taking the relevant parts from the EPO approach, as set out in T 258/03 (Hitachi), T 641/00 (Comvik) and T 154/04 (Duns Licensing) and combining this with the Pozzoli four-step test for inventive step, a possible test could be something like the following.

1. Construe the claimed invention and determine its technical character. This is a necessary first step because it establishes whether the claimed invention gets over the Article 52(2) / Section 1(2) 'hurdle', as for example set out in Hitachi. This is a low bar, as the presence of any hardware (even pen and paper) will enable a claimed invention that would otherwise be excluded to get over the hurdle. The step is also necessary to establish what the nature of the technical character of the claimed invention is, as this will need to be looked at later. 

2. Determine the closest prior art. This is step 1 of the Pozzoli test, and includes an assessment of the identity of the skilled person and their common general knowledge. It also corresponds to the first step of the problem-solution approach, although we are not going to use this to assess what technical problem is to be solved. 

3. Determine the features of the claimed invention that contribute to the technical character. This is a requirement that was set out in Comvik, which applies to so-called 'mixed' inventions, i.e. those comprising a mixture of technical and non-technical features. 

4. Identify the inventive concept. This is step 2 of the Pozzoli test, but with the difference that only those features that contribute to the technical character (step 3) can contribute to the inventive concept. This requirement is set out in part (F) of the summary in G 1/19 of Duns (point 30 of the reasons), in which features that do not contribute to the technical character of the invention are to be ignored for assessing both novelty and inventive step. 

5. Identify what, if any, differences exist. This is step 3 of the Pozzoli test, but again adapted such that only those features identified as being part of the inventive concept can be taken into account. If there are no such features, the claimed invention is not patentable. 

6. Would these differences be obvious to the skilled person? This is the final step of the Pozzoli test, in which any differences, if these have been identified at step 5, are assessed in light of what the skilled person knows and would find obvious. Even if an invention has been found to have features that do contribute to the technical character, they could still be found to be obvious in light of what the closest prior art is and what the skilled person is presumed to know. 

The above is only a first pass at what I guess the new test will need to involve. The details and the particular order in which some of the steps are taken may vary (steps 1 and 2, for example, could probably be done the other way around) but I think all of these steps will be needed in some form to take into account everything required for an assessment of patentability that also includes novelty and inventive step. 

Although all the Court of Appeal level decisions on patentability leading up to Aerotel are to be abandoned, some other features of existing UK case law may usefully be taken into account, for example the 'signposts' set out in AT&T/CVON (not mentioned in the Supreme Court decision), which could apply when considering step 3. Although these signposts were provided to help decisions on the final Aerotel step, i.e. whether the contribution is technical, they should also be useful for assessing whether any feature contributes to the technical character of the invention since similar criteria apply. 

We will have to wait and see what the UK IPO come up with, but I think it will have to be something along these lines. If they do come up with something similar, in the particular case in question my educated guess is that the claimed invention will probably not get past step 3 or may fail at step 5. I think it very unlikely that it will get all the way to step 6. I also think that, whatever happens, the boundary of what is patentable in the UK will not get significantly extended as a result.

Emotional Perception at the Court of Appeal

I wrote a few months ago about the, in my view, deeply flawed judgment from the High Court in the case of Emotional Perception AI Ltd, which was an appeal from a UK IPO hearing officer decision that refused the application in question for being excluded under Section 1(2) as a program for a computer. There were a few things that were, in my view, wrong about the judgment but the main one was the finding by the judge that an Artificial Neural Network (ANN) was not a computer program. The reasoning by the judge was along the lines of computer programs needing to be written by a human to count as being computer programs, while ANNs were instead generated by training. My opinion at the time on the judge's reasoning was this:

"Although it should not be necessary to point out to anyone reading this with any knowledge of computers at all, the single major flaw in the reasoning of this judgment is that the ANN, whether in hardware or software, would in actual fact be defined by software in the form of computer code defining connections and weights of the ANN and how it operates. It should go without saying that computer software does not need to be written by a human being for it to be a computer program. Indeed, all computer software in the form it is ultimately used, i.e. object code, is not human readable at all but is a string of 1s and 0s that is only readable by a computer. It is still, however, a program for a computer within the meaning of section 1(2) or of Article 52(2) EPC. How the computer program is generated, whether this is by compilation of human-written source code or the result of a training process (or, in this case, a combination of both), is not relevant to whether it is considered a program for a computer. It is also not relevant, according at least to Gale's Application, whether the program is implemented on hardware instead of software. Both are defined by code that defines how hardware operates, either by programming a general purpose piece of hardware or by defining a specific arrangement created or burned into circuit form in hardware".

The IPO appealed the High Court decision on four grounds, the first two of which related to whether the "program for a computer" exclusion was engaged in the case of ANNs. The other two related to whether the mathematical method exclusion applied and whether there was a substantive technical contribution.

At the Court of Appeal, Lord Justice Colin Birss took the lead judgment, with Lord Justice Richard Arnold and Lady Justice Nicola Davies following. Readers will recall that Colin Birss has been involved in cases like this going right back to the Aerotel judgment in 2006, where he was the barrister representing the Comptroller in their appeal. There could not therefore be a more suitably qualified appeal judge for this case. 

Much of the judgment goes into describing the technical detail and background to the claimed invention, which I don't need to go into here. The key part is where the first two grounds of appeal are discussed (paragraph 56 onwards). A few dictionary definitions were referred to regarding what a computer program is, which Birss LJ decided came down to a computer program being "a set of instructions for a computer to do something" (para 61). Importantly, this was consistent with the Aerotel judgment, which referred to a computer program being simply "a set of instructions". 

The applicant's argument attempted to push the idea that a computer program required the involvement of a human computer programmer, but Birss LJ found that was neither relevant nor helpful. Code written by a human would be in the form of a high level programming language, but computers actually worked by running machine code that was generally not human readable. There was no justification for a distinction between code written by a human and code created by a computer. Since an ANN was a computer, whether implemented in hardware or software, the inputs used to define it (such as the connections and weights of the network) amounted to a computer program. It followed that the computer program exclusion was engaged, contrary to what the High Court judge decided. 

Birss LJ also found that the High Court judge erred in finding that the output of the claimed invention, which was in the form of a recommended file (e.g. a music file selection based on a matching process done by the ANN) involved a technical contribution. This was found to be nothing more than the standard transmission of a file representing a recommendation, which the IPO hearing officer found at first instance had no technical effect. Instead, any effect was only in terms of the semantic meaning of the file selected. None of the AT&T signposts were of assistance with this. 

In conclusion, the appeal was allowed and the hearing officer's decision to find the invention excluded from patentability was upheld. We are now back to where we were before, with some clarification now that ANNs are computers and the way they are configured is by way of computer programs*. 

*Edited - see comments below.

If you like this ...

I was hoping that someone else would by now have critically analysed the recent High Court judgment in Emotional Perception AI Ltd [2023] EWHC 2948 (Ch), which issued on 21 November 2023, but it appears that nobody has yet. There has been a recent article in the CIPA Journal, but the less said about that the better. Even the IPKat has said nothing about it so far, which is a pity. It appears therefore to fall to me to do the necessary explanation and (to give the game away somewhat) point out that the judgment is a definite outlier and is not in line with higher level case law, including several judgments from the Court of Appeal, nor is it in line with case law at the EPO. There have been several articles published that have, rather excitedly, announced the judgment as some kind of breakthrough for AI inventions because it finds, in effect, that a trained artificial neural network (ANN) is not a program for a computer under section 1(2) of the Patents Act 1977. This is, of course, in reality complete nonsense. As a consequence, the reasoning goes, this will result in AI inventions now being much more patentable than they were before. The UK IPO have even changed their practice to instruct their examiners that, as from 29 November 2023, objections should not even be raised to inventions involving an ANN for excluded subject matter. This is great news for inventors working in the field of AI who want patent protection (which may not be all of them), and also great news for their patent attorneys. I, however, am not so sure it will work out well in the longer run, and suspect this will be a temporary aberration, although I may of course be wrong.

I have been following case law on patentability in the UK and at the EPO for the past 17 years or so, coincidentally starting roughly around the time of the Court of Appeal judgment in Aerotel/Macrossan [2006] EWCA Civ 1371, which issued while I was sitting my UK Finals in 2006. Looking at my IPKat posts from around that time (see here for example), there was much discussion in the follow-up to Aerotel about whether the 4-step test was actually in line with the EPO, which instead applied the problem-solution approach according to Comvik (T 641/00). After a bit of disagreement about the validity of computer program claims (see here), the issues in the UK appeared to settle. Although the tests applied at the UK IPO and the EPO are very different, the core issues are essentially the same, which is whether there is a 'technical effect' (which I wrote about in 2013 here). I have revisited this several times in the intervening years, most recently when writing a chapter for the IPKat's 20th anniversary book. Although there has been some tinkering around the edges, the general principles have not really changed for at least 10 years and, for better or worse, have been applied with reasonable consistency by the UK IPO. These principles can be found in any of the numerous decisions that have come from UK IPO hearing officers, which I have had the dubious pleasure of reviewing for the CIPA journal for the past 17 years. You may even have read one or two of my reviews, although I suspect very few people do.

Firstly, according to Aerotel/Macrossan, the way to deal with 'excluded matter' under section 1(2) (i.e. things that are not inventions for the purposes of the Act), was to: 

i) properly construe the claim; 

ii) identify the contribution (which may be the actual or alleged contribution, depending on whether a search has been performed); 

iii) ask whether the contribution falls solely within excluded matter; and 

iv) if step iii) hasn't already covered it, check whether the contribution is actually technical. 

Secondly, in considering whether a computer program makes a technical contribution, the later decision in AT&T/CVON, which was supported and slightly amended by the Court of Appeal judgment in HTC v Apple [2013] EWCA Civ 451, set out the following five 'signposts', any one of which may indicate the presence of a technical contribution according to step iv) of the Aerotel test:

i. Whether the claimed technical effect has a technical effect on a process which is carried on outside the computer. 

ii. Whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run. 

iii. Whether the claimed technical effect results in the computer being made to operate in a new way. 

iv. Whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer. 

v. Whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

It is worth noting at this point that, although Kitchin LJ stated, "these are useful signposts [...] But that does not mean to say they will be determinative in every case", in practice at the UK IPO, rightly or wrongly, these signposts have been determinative in every case where they have been applied. There has not been a single case where the signposts have been used and yet the invention has still been found to have a technical contribution. I would certainly have noticed and pointed it out with great excitement if there had been. To at least a first approximation therefore, if the contribution in a computer-implemented invention is not found to be within at least one of the signposts, it is not patentable.

With that all established, a computer-implemented method in a patent application such as the one put forward by Emotional Perception AI Limited (previously known as Mashtraxx Limited), would be expected to face a difficult time in getting granted. The application itself related to a method of training and implementing an ANN to identify a pair of similar data files, a particular example being music files. In simple terms, the claimed invention was about matching data files based on closeness of written descriptions and of the data itself. The actual claimed invention is a classic example of technical obfuscation, with the latest version of claim 1 reading as follows:

The IPO examiner objected that the claimed invention was not patentable because it related to a mathematical method and a computer program as such, objecting that the contribution made by the claimed invention (leaving aside clarity and sufficiency issues with claim 1) was to software for training an ANN to identify similar files by extracting measurable signal qualities from two files, assembling a multidimensional feature vector for each file based on these qualities, determining the distance between the two vectors and adjusting the ANN's weights to provide a measure of similarity between the files. In effect, the invention (in my words, not the examiner's) was about analysing music files to provide an output of the type "if you like this, then you might also like this". The examiner found that this did not solve a technical problem, and especially not a technical problem within a computer. The invention was computer-implemented, but used conventional hardware that was programmed to perform a non-technical function. It was not directed to a process outside of the computer, nor did it form part of the internal workings of the computer. In conclusion, the examiner found that the invention was "directed to an excluded process and there is nothing more to it" (examination report 13/10/21, page 10/11). 

After reaching this impasse with the examiner, the applicant then went for a hearing before the (very experienced) hearing officer Phil Thorpe. Among the arguments run by the applicant, one involved a comparison with the seminal EPO Board of Appeal decision from 1986 of Vicom (T 208/84), which decided that an image processing algorithm could be technical because the output was an improved image, which was considered to be technical. The hearing officer did not, however, consider that the comparison was a good one, because in this case there was no change to the data files, but only an output that provided an indication of a pair of semantically similar files. The claimed invention, in the hearing officer's view, did not therefore define a technical process and the contribution was found to relate wholly to a computer program as such, resulting in the application being refused. 

At that point, I would expect any normal applicant to give up and take the loss, given the very low hit rate of getting computer-implemented inventions facing excluded matter objections granted at the UK IPO. In this case, however, the applicant and their attorney did not give up and instead took the matter to appeal before Sir Anthony Mann in the High Court. Although obviously a highly experienced legal mind, Sir Anthony has not come to my attention at all previously in the area of patent cases, let alone the highly specialised area of patentability of computer-implemented inventions. As it turns out, this is I think one of the key problems with the judgment. 

Sir Anthony first set out how he understood the invention, which he considered could be envisaged as a 'black box' "which is capable of being trained as how to process an input, learning by that training process, holding that learning within itself and then processing that input in a way derived from that training and learning" (paragraph 3). He then described the claimed invention as being an improved system for providing media file recommendations to an end user, particularly for music files, the advantage of which was to offer suggestions of similar music in terms of human perception and emotion by passing music through a trained ANN. Claim 1, which had been (rather confusingly) amended from the above claim 1 to a "system for providing semantically relevant file recommendations" was defined by Sir Anthony as "a product by process claim", while another independent claim defined a corresponding method, both defining the steps of training the ANN and providing an output of relevant files. My initial problem at this point is that claim 1 as presented in the judgment (see here) is not really a product by process claim, but is a system defined by its features of operation, which is not in line with how a typical product by process claim is defined (see for example the EPO Guidelines F-IV 4.12). 

My next problem with the judgment is Sir Anthony then going on to "assume for the moment that the ANN itself is a hardware system (as opposed to a software emulation)" (paragraph 8). Why this assumption is made is completely beyond me. There is no justification for it from the application, nor is there any sensible reason why the ANN would be assumed to be hardware. In the Court of Appeal judgment of Gale's Application [1991] RPC 305, which is supposed to be in line with the current Aerotel test, Aldous LJ found that putting instructions on hardware did not make an invention patentable. The invention in that case related to a new way of calculating a square root on a computer. Aldous LJ found that "if Mr. Gale's discovery or method or program were embodied in a floppy disc (software) neither the disc nor a computer into whose RAM that programs had been inserted could be patented, it must, in my view, follows that the silicon chip with its circuitry embodying the program (hardware) cannot be patented either" (para 332). Simply switching from software to hardware did not therefore, based on this reasoning, make an invention patentable if it did the same thing. Sir Anthony, however (who did not appear to be aware of this judgment as he made no reference to it, nor was it pointed out to him by the UK IPO) managed to change the argument about whether the invention in this case was patentable by arbitrarily assuming that the ANN was implemented on hardware and entirely ignoring the valid line of reasoning that this should make no difference. 

The next problem I have with the judgment is another apparent misunderstanding by Sir Anthony, apparently led by the applicant's representatives, where he came to the view that the ANN training model was not programmed to include all its detailed logical steps but adjusted itself through training to produce a model which satisfied the training objective. This led him to ask the question of where the computer program was that was said to engage the exclusion. This resulted in a confused bit of reasoning about where the program would be in the case of a hardware ANN (which had already been wrongly assumed), with the UK IPO's representative implausibly conceding that "there would in that case be no program to which the exclusion applies" (para 43). This inevitably resulted in Sir Anthony, having been well and truly led up the garden path by the applicant's attorney and the IPO's problematic representation, that there was in fact no computer program because the ANN was not operating on a set of program instructions at all but "was emulating a piece of hardware which had physical nodes and layers, and was no more operating or applying a program than a hardware system was". It becomes very difficult at this point to take the judgment seriously any more because the reasoning is so preposterous and wrong that anything further is bound to be wrong. And so it turned out to be, with Sir Anthony concluding that the ANN in substance operated at a different level from the underlying software on the computer and operated in the same way as a hardware ANN, resulting in the emulated ANN not being a program for a computer and therefore not excluded. 

Although it should not be necessary to point out to anyone reading this with any knowledge of computers at all, the single major flaw in the reasoning of this judgment is that the ANN, whether in hardware or software, would in actual fact be defined by software in the form of computer code defining connections and weights of the ANN and how it operates. It should go without saying that computer software does not need to be written by a human being for it to be a computer program. Indeed, all computer software in the form it is ultimately used, i.e. object code, is not human readable at all but is a string of 1s and 0s that is only readable by a computer. It is still, however, a program for a computer within the meaning of section 1(2) or of Article 52(2) EPC. How the computer program is generated, whether this is by compilation of human-written source code or the result of a training process (or, in this case, a combination of both), is not relevant to whether it is considered a program for a computer. It is also not relevant, according at least to Gale's Application, whether the program is implemented on hardware instead of software. Both are defined by code that defines how hardware operates, either by programming a general purpose piece of hardware or by defining a specific arrangement created or burned into circuit form in hardware.

As if the judgment wasn't wrong enough at that point, Sir Anthony then went on to decide whether there would be a technical effect to the invention, having nevertheless already decided that it wasn't excluded. After going through some of the usual case law on the subject, including the somewhat dubious decision in Protecting Kids, Sir Anthony went on to agree with the applicant that "moving data outside the computer system in the form of the file that is transferred [...] provides an external (outside world) effect". This is, of course, entirely out of line with all existing case law on the subject, both in the UK and at the EPO. Sir Anthony nevertheless went on to find that there was a technical effect in providing an (entirely unchanged) file selection to a user as an output of the claimed invention, and allowed the appeal. 

At this point, the only comment I have to add is the following: