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.

Conquest Planning: Estoppel & res judicata

There has been some excitement over the past few months among the very niche community of UK patent attorneys specialising in AI, following the High Court judgment of Emotional Perception. I wrote about the case here and it was also written about in a slightly more approving way by one of my work colleagues. It was inevitable while the judgment still stood (an appeal is currently pending with a hearing at the Court of Appeal scheduled for May 2024) that attempts would be made to get applications relating to AI through the UK IPO that would previously have been considered unpatentable, particularly given the change in practice in light of the judgment. At least one such attempt has been made, which has resulted in the decision last month in the case of Conquest Planning Inc. (BL O/0259/24). 

The application, GB2311361.6, was a divisional of an earlier UK application that was a national phase entry of PCT application PCT/CA2020/050275. The abstract on the cover page of the published PCT application is probably enough for the reader to have a good guess as to where this, originally Canadian, application was going to go in Europe. This described the invention as "a financial planning system that comprises a Strategic Advice Manager (SAM) module that utilizes an artificial intelligence (AI) module to automate and optimize the financial planning decision-making process". Unsurprisingly, in decision BL O/988/23 from 24 October 2023, the application was refused because the hearing officer found the claimed invention to be a tool for recommending financial plans in which an AI module was used. This related entirely to an administrative process that was computer-implemented but made no improvements to a computer in a technical sense. This resulted in the invention being found to be excluded under section 1(2) for being a method for doing business and a program for a computer as such. The fact that the invention made use of a computer program did not impart any technical contribution, following the usual reasoning from Aerotel/Macrossan and AT&T/CVON. 

Probably expecting this negative result, the applicant had already arranged for a divisional to be filed in July 2023. This application then faced similar objections from the examiner and eventually (although rather more quickly this time, due to the compliance period coming up) came before a hearing officer after the examiner decided that the claims on file as of 8 December 2023 were not patentable for essentially the same reasons as were already provided in the earlier decision. By that time, however, the Emotional Perception judgment had come out, so the applicant ran the argument before the hearing officer that, because the application related to AI, the change in practice should be taken into account. A question then was whether the applicant was trying to have a second go at getting the same invention patented. The issue to be considered was what bearing the previous decision had on the divisional application. The hearing officer noted that, in a previous decision BL O/033/09 (Rajesh Kapur), the principle of estoppel was found to apply to ensure that litigation was final and could not be subsequently fought all over again. The Patents Hearing Manual notes at points 1.96 and 1.97:

"Estoppel by record (doctrine of res judicata) applies where a relevant judgment (and that includes a decision of a tribunal such as the comptroller) has already been given. The judgment stands forever, as between the parties unless it is modified by the normal course of appeal (in which case the modified judgment stands in its place). For example, in an infringement action (Poulton v Adjustable Cover & Boiler Block co (1908) 25 RPC 529 the plaintiff was awarded damages which were ordered to be assessed and paid by the defendant in due course. However, before the damages had been paid, the defendant caused the patent to be revoked on the basis of new evidence. Accordingly, he argued that he need no longer pay the original damages since the patent must, at the time of the first action, have been invalid. He was however held to the terms of the first decision. This judgment although old remains good law - see Coflexip SA v Stolt Offshore MS Ltd (No 2) [2004] EWCA Civ 213, [2004] FSR 34, discussed below with regard to abuse of legal process. See also Unilin Beheer BV v Berry Floor NV and Others [2007] EWCA Civ 364 in which it was decided that a later finding of invalidity of an EP(UK) patent in an EPO opposition would not disturb a finding in the UK Courts that the patent was valid and infringed as between the parties in the UK action, so that any damages must still be paid.

There are two types of estoppel by record. The first is "cause of action" estoppel where the same cause of action lies in a final judgment (cf the example given above). The second is issue estoppel which, per Lord Denning in Fidelitas Shipping Co Ltd's v vlo Exportchleb [1966] 1 QB 630 at p640, applies where, within one cause of action, there are several issues raised which are necessary for the determination of the whole case. Once an issue has been raised and distinctly determined (even if the question was in fact not the subject of any dispute or argument) then as a general rule neither party can be allowed to fight that issue all over again. But not always - cf, for example, Rose Bro's (Gainsborough) Ltds Appln [1960] RPC 247 and Hodgkinson & Corby Ltd & anr v Wards Mobility Services Ltd [1997] FSR 178. Cinpres Gas Injection Limited v Melea Limited [2008] EWCA Civ 9 contains a discussion of the difference between cause of action and issue estoppel - see paragraphs 66 to 77. Estoppel was not established in that case, the judgment holding that there had been perjury by a witness closely identified with one of the parties; (see paragraphs 105 to 107), and adoption of the fraud by the party itself; (paragraphs 108 - 120)."

As a result, the hearing officer found that the applicant was prevented from asserting that the claimed invention was outside of the exclusions from patentability if the scope of those exclusions remained unchanged. Did the Emotional Perception judgment change the scope of the exclusions though? The judge had found that a system for recommending data files using an artificial neural network (ANN) was not excluded as a computer program. The claimed invention in this case involved the step of training an artificial intelligence to develop a financial plan, which the applicant argued was sufficient to determine the question of patentability in their favour. The hearing officer, however, found that this did not relate to a trained ANN or to the training of a ANN but instead to a generic AI. It could not therefore be said to engage the exclusions raised in Emotional Perception. Given the identical facts and identical law, the previous decision must be followed. The application was therefore refused. 

The lesson here then is that, although there may have been a change in practice in light of Emotional Perception, the effect while the judgment stands is likely to be very limited, being specific to the question of whether an ANN can be considered to be a computer program as such. If the claimed invention does not relate specifically to an ANN, the change in practice is not going to be of much use. Another point to note is that the other exclusions, in particular that relating to business methods, will still apply, so even if the computer program exclusion is avoided there may be others that can still prevent a patent being granted. 

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:

Unanimous A.I.

What is commonly described as "Artificial Intelligence" (AI) is often nothing of the sort. A recent case at the UK IPO is a good example of this, as well as a good example of where the boundary between patentable and unpatentable inventions can lie in the area of computer-implemented inventions. 

UK application GB1805236.5, from Unanimous A.I., initially published as WO 2017/004475 A1, entered the UK national phase in 2018. The claimed invention related to a "collaborative intelligence system for determining a group result in real-time from a group of users presented with a group question". Claim 1 of the application, which in its published form is nearly two pages long, defines a networked computer system in which individual users are sent a group question and submit their input. A group result would then be generated and sent out to the users until a final group result was determined. The final group result then represented the collective decision reached by the users. 

The UK IPO examiner objected that the claimed invention was excluded for being a computer program, a business method or the presentation of information as such, finding that the contribution was "a set of apps that solve the business administrative problem of obtaining a collaborative group result for a group question", which fell within excluded matter under section 1(2) and did not define a technical contribution according to any of the AT&T/CVON signposts. The application then progressed to a hearing, prior to which the applicant submitted some amendments that narrowed the invention to a specific implementation involving pointer locations and vector representations (as in Figure 4 of the application shown here).

The hearing officer considered that the way the invention was defined in terms of the input device went to the heart of the contribution, which was a new mechanism to allow multiple users, in distributed locations, to interact together via vector inputs to their individual devices to collaboratively influence the position of a single, shared pointer and hence to make a collective selection. While not all inventions relating to input devices were inherently technical, in this particular case the hearing officer agreed with the applicant's attorney that the contribution was unquestionably technical and plainly more than a computer program. The application was therefore not excluded and was remitted to the examiner to conclude the examination process. 

What is interesting about this decision is not only that it is one of a very small number that result in the hearing officer finding that an invention is not excluded, but that the decision relies on specifics about an input device for an invention that would otherwise be excluded. The concept behind the invention, which is in any case not new, is one that would not be considered patentable in the UK but the way it is implemented can be. This, of course, limits the scope of the patent to that particular implementation, but does at least give us some useful indications of how it might be possible to overcome excluded matter objections if there is enough subject matter in the application as filed to describe the specific implementations. In this case, the way that users are able to provide their input in the form of a pointer on a screen, which are combined into a collective vector that eventually arrives as a collaborative answer from feeding back other users' inputs, is actually the way that the system appears to work in practice. The question of whether this is actually AI is another thing, of course. 

Use Your Imagination

I get quite tired of reading decisions from the UK IPO each month on section 1(2), largely because there are so many of them and they tend to follow the same basic structure, which is:

1. Examiner objects that the invention is excluded as a computer program / business method / mathematical method etc.
2. Applicant ('s attorney) disagrees and argues, often making inconsequential technical sounding amendments.
3. Hearing officer follows the usual route of assessing the invention with the Aerotel 4-step test and AT&T/CVON 'signposts' (see here for more about a technical effect, which has not really changed since 2013 at least).
4. None of the signposts indicate the presence of a relevant technical contribution.
5. Application is refused. 

The stream of applications following this route and being refused as a result has been pretty steady for the past few years, with usually a handful each month. Occasionally there will be a different result, where the applicant has managed to pull out a technical effect that persuades the hearing officer there is something there after all, but these are few and far between and do not affect the general procedure of how borderline cases are assessed. Every so often though, there is one that bucks the trend and comes up with something potentially interesting. There was one last month that I thought interesting enough to comment on, which related to applications in the name of Imagination Technologies Limited (BL O/420/21). 

The applications (there are several) related to a data processing system for determining median values for a stream of data, in which intermediate values were used to allow values already calculated to be used in calculating a subsequent median value, somewhat similar to calculating a rolling average. The applicant had already managed to get one application granted (GB2587590B) to this way of calculating median values for a data stream that was specified as being audio samples of an audio signal or signal samples of a transmitted signal. They also, however, filed three divisional applications to versions of a more general system that was not specifically linked to what the data represented. The difference was in how the invention was claimed, in that the divisional claims included much more specific detail about the system being embodied in hardware on an integrated circuit. The extent of disclosure in the applications of the type of hardware used was limited to the (fairly usual) way of representing hardware, the most detailed one being in Figure 7, shown below. 

The examiner had objected that the way the invention was claimed did not make any difference, and considered that the invention was not allowable because the type of data stream was not specified and the claims had not therefore been 'tethered' to the real world. This, of course, brings to mind the well-established case law dating back to Vicom (T 208/84) at the EPO, which is still being followed at the EPO and UK IPO. According to this case law, provided the data being processed relates to something technical, for example an image (in the case of Vicom), it is possible to be patentable if the method is new and inventive. If this is the case, it does not matter what form the invention is claimed, and claims to computer programs themselves, in whatever form, are also allowable provided they have this 'further technical effect'. Following this principle, it should be clear that it would not make an invention patentable just by specifying that it is embodied on hardware. The Court of Appeal decision in Gale's Application [1991] RPC 305 makes this clear in the UK too. 

In this case, the applicant argued that the invention was technical because it was specifically embodied in hardware and was not therefore a computer program or a mathematical method as such. The hearing officer tended to agree with this and thought that the application did point towards a hardware implementation, largely because the claimed inventions referred to "fixed function circuitry" and "dedicated hardware", which in the hearing officer's view meant the same thing. The invention had therefore to be construed as a piece of hardware and not a computer program. 

On the mathematical method question, the situation was complicated by Gale's Application, in which a ROM was programmed to perform an improved square root calculation method. Substance should rule over form, according to the Court of Appeal, and this could not be enough to escape the exclusion. Nevertheless, the hearing officer agreed with the applicant that, because the invention was in "fixed function circuitry", its implementation was not conventional and was not simply a generic ROM including programmed instructions. This was enough to distinguish it from Gale. This got the application over the line and the remaining steps in Aerotel and AT&T/CVON were passed, resulting in the claimed inventions being allowable. 

There was, however, a twist in the tale. Before sending the applications back to the examiner to get them allowed, the hearing officer noticed that there were still claims in the applications directed to a computer program that would cause the integrated circuit to carry out the claimed method. Rather than finding that this would entirely contradict the applicant's arguments that the way the invention was implemented was specifically on dedicated hardware and not on a computer program, the hearing officer instead simply stated that these claims had to be deleted. 

This is only a decision of a hearing officer at the UK IPO and therefore not precedential. Further decisions may well disagree with it. It does, however, suggest that applications directed to what are in reality mathematical methods embodied on software could be patentable in the UK if they are described as being specifically implemented on hardware. This tends to go against everything that I have seen on this subject since I first started looking, but I expect there will now be others that will want to have a go at the same kind of arguments. Let's see how that works out.

In search of a technical effect

This is a repost of an article that will shortly be appearing in the October 2013 edition of the CIPA Journal. For anyone who doesn't want to know the score before the issue is published, please look away now. Alternatively, read on for a version in which I have incorporated links to the relevant case law and other material. 

Law and practice on what is considered patentable at the UK and European patent offices has been running along parallel lines for as long as the EPC has been in existence. While the direction of travel is always roughly the same, though with occasional diversions, the lines never seem to converge completely. At the risk of a gross oversimplification, this can be largely blamed on the difference between the law of precedent as applied in the UK and at the EPO. On one side, the EPO Boards of Appeal are apparently content to allow "lines of reasoning" to be developed, and sometimes abandoned, as time goes on and technology develops (see for example T 1227/05, commented by me here on the IPKat). Law and practice in the UK on the other hand has followed more of a process of accretion and correction, where previous case law has tended to act as a restraint on any major changes, although changes at the boundary can and do sometimes happen.

There have been six Court of Appeal judgments in the area of patentability under section 1(2) over the period from 1989 to 2013 (see here for a full list). From these, the law in the UK can be considered settled in a way that is roughly based on the four step test put forward by the UK IPO and approved by Jacob LJ in Aerotel/Macrossan from 2006, with various caveats and fudges applied that try to make the test stay in line with earlier Court of Appeal judgments as well as being as consistent as possible with the approach taken at the EPO. To achieve complete consistency between the UK IPO and EPO from the different approaches is, of course, impossible. In an ideal world, the same test would be applied regardless of the office in which an application was being prosecuted, and the same result obtained, not least because the effect of a patent granted by the UK office is the same as one granted by the EPO. This ideal world is not, however, going to appear in the foreseeable future. A change to match the EPO approach in the UK would require abandonment of not just the Aerotel/Macrossan test and related Court of Appeal case law, but also the well-established Windsurfing/Pozzolli test for inventive step. This is because the EPO test for patentability is inextricably linked with the problem-solution approach for assessing inventive step. Barring a highly surprising result from the UK Supreme Court, and ignoring the long-term possibility of the IPO ceasing to grant patents together with UK courts no longer having jurisdiction over UK patents, this is not going to happen. On the other side, it is unlikely in the extreme that the EPO Boards of Appeal would consider abandoning the universally applied problem-solution approach in order to fit with the different approach taken by only one member state. Since a fundamental change in approach is unlikely from either side, the best that could reasonably be hoped for is that outcomes are as closely aligned as possible. As the Enlarged Board of Appeal stated in G3/08 in relation to the exclusion of computer programs, “a uniform understanding of where to draw the line between applications relating to programs for computers as such [...] still cannot be assumed despite considerable convergence in recent court rulings” (point 4.1 of the reasons). However, despite the discrepancies in approach and principles, as Lord Neuberger stated in Symbian, there is clearly a strong desire for the two offices to be “marching together as far as possible”, and “where there may be a difference of approach or of principle, one must try to minimise the consequent differences in terms of the outcome in particular patent cases” (paragraph 61).

Since we can safely assume, at least for the foreseeable future, that the differences in approach and principle are not going to change substantially, the question becomes: how do we ensure that the outcomes are as closely aligned as possible? Now that the heat and antagonism arising from Jacob LJ’s judgment in Aerotel/Macrossan, which claimed that the EPO Boards of Appeal decisions were mutually contradictory, and the resulting response from Herr Steinbrener in T 154/04 accusing the Court of Appeal of missing the point, has dissipated, others have attempted to patch up any differences by using more common language that can be applied to both approaches. A common theme is the unfortunate but seemingly inevitable use of the word “technical”, in particular in the form of tests and checks for whether an invention provides a “technical effect”. Even though no-one has been able to provide a stable definition for what the word “technical” actually means in the context of patentability, this does not seem to matter because decisions from both sides are building up regarding what can and cannot provide a technical effect, while all decisions carefully avoid providing a definition of the exact boundary outside of which there would be no such effect.

In the UK, following the Court of Appeal judgments in Symbian and Aerotel, an attempt was made by Lewison J (as he then was) in Re AT&T Knowledge Ventures LP [2009] EWHC 343 (Pat) to summarise, in the form of a series of useful “signposts”, what aspects of an invention might point towards a relevant technical effect. These signposts are:

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 there is an increase in the speed or reliability of the computer;

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

One benefit of these signposts is that there is no need for the word “technical”; the signposts make just as much sense without it. Hearing officers at the IPO seem to like the signposts, and have used them in practically every decision since AT&T, although in the vast majority of cases to show that a claimed invention does not in fact demonstrate any technical effect. The Court of Appeal, in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 (see here for my comments) has indicated that these are “useful signposts, forming as they do part of the essential reasoning in many of the decisions to which we must look for guidance. But that does not mean to say they will be determinative in every case”, but considered that the fourth was too narrowly put, which should instead ask “whether the computer is a better computer in the sense of running more efficiently and effectively as a computer” (paragraph 51 of Kitchin LJ’s judgment). This has been recently confirmed in Lantana Ltd’s Application [2013] EWHC 2673 (Pat), where Birss J has simply rewritten the signposts as modified by HTC v Apple.

Although the signposts, which are now firmly established in UK practice, are useful pointers towards what might be patentable, they are non-exhaustive and do not necessarily apply in every case. As Lewison J put it in AT&T, “it is still necessary to consider whether the claimed technical effect lies solely in excluded matter” (paragraph 41). This caveat leaves plenty of room for hearing officers and judges to conclude that an invention would still be excluded from patentability. In practice though there have been no decisions from the IPO where one of the signposts has pointed towards a technical effect but where the hearing officer has nevertheless still considered the invention to be excluded. The possibility therefore remains open, but it seems unlikely to be used in practice.

One of the main problems with aligning the UK approach to patentability with that of the EPO’s is that an assessment of patentability is typically made, according to the Aerotel test, without any real consideration of the prior art. The contribution (step two) is often assessed without looking at where the claimed invention differs from the closest prior art, and sometimes even without a search having been carried out. In some cases an assessment of novelty and inventive step is carried out by the examiner, and the issue of patentability is the only issue remaining to be resolved. In most cases, however, there is no real assessment of novelty and inventive step and patentability is the sole issue in question. This approach is completely at odds with that taken at the EPO, where the assessment of patentability is deliberately intertwined with that of inventive step through use of the problem-solution approach. This approach requires the closest prior art to be established, which in some business method cases might be simply a ‘general purpose computer’ (requiring no actual search to be carried out). The difference over this prior art is then established, and what technical effect this difference has. The objective technical problem is derived from the effect, and finally a judgment made as to whether the skilled person would find the difference to be obvious. The assessment of patentability is incorporated in the steps of assessing what the technical effect is. In line with the leading case on the subject, T 641/00, any differences that are not considered to be technical are moved into the problem to be solved, rather than considered as being part of the solution. In this way, any non-technical aspects are considered not to contribute to the technical character of the invention. As stated in T 641/00, “the problem must be a technical problem, it must actually be solved by the solution claimed, all the features in the claim should contribute to the solution, and the problem must be one that the skilled person in the particular technical field might be asked to solve at the priority date” (point 5 of the reasons), and “an invention in the sense of Article 52 EPC can only be made up of those features which contribute to said technical character” (point 6).

A recent decision from the EPO Boards of Appeal, T 1670/07 (commented on by the IPKat here), has reviewed in more detail what would be considered to be technical. As with T 641/00 (which, strangely, was not cited in the decision), the consideration at the EPO is largely a negative one, i.e. there are certain aspects that are considered not to be technical. Based on this decision, which related to patentability of a method of facilitating shopping using a mobile device, selecting multiple vendors for a shopping order and provision of a shopping itinerary based on a user profile are both considered to be not technical. The Board also considered that there were certain ‘fallacies’ in the arguments presented for a technical effect, which in essence claimed that non-technical aspects could in some circumstances contribute to the technical character of an invention. The Board considered that they could not.

How then, in practice, do these different approaches to patentability work, and do they result in decisions where one would favour patentability for particular types of inventions over the other? The answer appears to be in looking at how a technical effect is defined, rather than the overall approach to be followed. Consideration of a technical effect is now at least common to both approaches, even if it is used at different steps in the process. There is also a degree of convergence in what would be considered to be a technical effect, even though the way to assess what such an effect might be is a positive one in the UK (i.e. deciding whether the effect can be found from a list) and a negative one at the EPO (i.e. whether the claimed technical effect is one that has been previously decided not to be technical). In the end though, if there is a technical effect according to the UK approach, there will always be at least an arguable case for the effect to contribute to the technical character of the invention according to the EPO approach. Decisions may vary according to the facts of particular cases, and to how well arguments are made but in general, despite the differences in approach, the good news at the moment is that there should be no significant difference in result. 

Lantana: Mind your language!

A definition of insanity, at least according to some (and credited to various famous figures including Benjamin Franklin, Mark Twain and Albert Einstein), is doing the same thing over and over again but expecting a different result. This is the impression I sometimes get from reading decisions on patentability from the UK Intellectual Property Office. There are, of course, some cases where the applicant manages to pull a patentable rabbit out of their application hat when faced with a hearing, but in most cases the applicant is on a hiding to nothing. This is certainly borne out by the numbers: according to the IPO's decisions database, only 37 decisions in the area of excluded matter over the past 15 years have resulted in an application being allowed or remitted to the examiner, while 371 have resulted in refusal. A hit rate of just over 9% does not sound particularly promising. I suspect the number of applications that have simply been abandoned rather than pursued further at a hearing is much greater.

[Right (Figure 21 from the application): does this look technical enough?]

One tactic often used in such cases that has always struck me as being strange, not least because it never seems to work, is where the applicant (or more probably their patent attorney) rewrites the claims to sound more 'technical' without apparently changing the substance of the invention at all. The reasons for doing this might be more to do with wanting to be seen to be doing something than a belief that such changes might give the application more of a chance. A judgment from the newly-appointed Patents Court judge Mr Justice Birss, Lantana's Application [2013] EWHC 2673 (Pat), illustrates this point quite well. Claim 1 of the application (which admittedly from the outset was quite technical-sounding anyway) was rewritten during prosecution to read as follows:

An electronic data retrieval system comprising a local station, a remote station, a packet switched network to provide a transmission path between the local station and the remote station, and a machine-readable data storage device storing retrievable data files including machine-readable data representing at least one of a visual product and an audio product,
wherein said local station includes:
a data store storing a plurality of machine-readable data retrieval criteria identifying data files among said retrievable data files stored at said machine-readable data storage device to be retrieved;
a packet switched network interface connected to said packet switched network;
a user interface co-operable with said data store and interactable with a user, to enable selection by the user of one or more machine-readable data retrieval criteria; and
an electronic processor configured to produce, in response to the selection by the user of the one or more machine-readable data retrieval criteria, a first e-mail message including the selected one or more machine-readable data retrieval criteria together with a machine-readable instruction for retrieving data files, among said retrievable data files stored at said machine-readable data storage device, using the selected machine-readable data retrieval criteria, and to send the first email message to the remote station via said packet switched network interface and said packet switched network;
wherein said remote station includes:
a packet switched network interface connected to said packet switched network to receive the first e-mail message from the packet switched network;
a filter adapted to parse the first e-mail message to determine whether the first e-mail message includes any machine-readable instruction and any data retrieval criteria; and
an electronic processor to execute the first machine-readable instruction, and upon execution of the machine-readable instruction and in accordance with the selected machine-readable data retrieval criterion, retrieve the one or more required data files among said retrievable data files stored at said machine-readable data storage device from the machine-readable data storage device, produce one or more second e-mail messages, the one or more second e-mail messages including the retrieved one or more data files as one or more attachments, and send to said local station, via the packet switched network interface of the remote station, and the packet switched network, the one or more e-mail messages and one or more attachments.

A total of 378 words seems like a lot to define what is in essence a system with two computers arranged so that one computer could retrieve files by sending an email asking for a file stored on the other computer, which would then send an email back with the file attached. Justice Birss seemed to think so too (see paragraph 8). The rest of the decision is fairly standard, at least to anyone familiar with the UK case law on patentable subject matter, leading up to the Court of Appeal judgment in HTC v Apple earlier this year (see here for my comments). Unsurprisingly, the appeal was dismissed on the basis that Birss J could not see that the contribution made by the claimed invention had any kind of technical effect.

The question I have from this case is not whether the decision was correct (I think it probably was), but whether there are any reasons why the type of technical obfuscatory approach to claim drafting used in the case can be in any way useful. The only one I can think of is that it might sometimes sufficiently bamboozle an examiner into thinking there is more to the application than a more concise claim might suggest. Can anyone think of any other reasons?

HTC v Apple - A broader signpost for patentability

Patentability under UK and European law has been something of an ongoing theme of mine for a few years, particularly in relation to patents for software or business methods (although I have been known to occasionally stray into other areas such as stem cells). The last time I visited the issue in any great detail was in May 2010 when the EPO Enlarged Board decision in G 3/08 was issued (see here), a few months after I summarised the position in the UK and Europe in a 'where are we now' style here, and correctly predicted the outcome of G 3/08. Since then, the issue has been largely left for the EPO to get on with what they were doing already (principally based on the reasoning in Comvik, T 641/00), while the UK approach has developed from the flawed Aerotel/Macrossan judgment, followed and augmented by Symbian, both from the UK Court of Appeal. There have been other judgments in the UK that have tinkered with how the Aerotel four step test should be viewed and how to judge whether something is technical, such as Halliburton (see here for my comments) and AT&T/CVON (see here for some interesting comments), but nothing that has significantly altered the way patentability is assessed according to UK law.

As a result of the case law in the UK not really evolving beyond Symbian, reading through the decisions from the IPO relating to Section 1(2) each month (which I do for the CIPA Journal out of the goodness of my heart) has become something of a mind-numbing process. Seeing the same reasoning and the same relentless refusals time and time again can become a bit boring, so I try to avoid reporting too many of them. Something that seems to turn up every time in a decision relating to patentability is the list of 'signposts' from AT&T/CVON. These were intended to be used as a check to see whether there was any relevant technical effect (bearing in mind the fourth step of the Aerotel test, which Symbian indicated should be taken together with the third), and were of course not meant to be exhaustive, let alone binding. They have, however, been used fairly systematically by the UK IPO to determine the presence of anything technical. The signposts, as set out by Lewison J (see paragraph 40 of the judgment) are as follows:

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 there is an increase in the speed or reliability of the computer; 

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

The fourth signpost is often used by applicants (or more usually their attorneys) claiming a technical effect, where there is at least an arguable case for an improvement in efficiency obtained as a result of a new computer program. UK IPO hearing officers, however, tend to view this signpost quite narrowly, and usually only allow such efficiencies to be relevant if they are somehow tied to something outside the normal operation of software. Simply making a piece of software more efficient is usually not enough to point towards an increase in the speed or reliability of the computer, despite what Symbian might have suggested.

A recent judgment from the UK Court of Appeal, in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 might help in allowing arguments relating to the fourth signpost to be given more weight. The case related to European patents EP2098948 (application number 09154313.2) and EP1964022 (application number 06846405.6), both of which were found by Floyd J in the Patents Court to be invalid (see here). EP1964022 related to the well-known "slide to unlock" feature (shown in the drawing on the right, taken from the patent) used in Apple's iPod, iPad and iPhone products. This was found by Floyd J to be either not novel or to lack an inventive step over the prior art.

EP2098948 was also found to be invalid, although for relating to excluded subject matter, in particular for being a computer program as such. This patent related to how multi-touch gestures were processed so that recognised multi-touch gestures could be directed accordingly to software elements in the device. Apple argued that the invention met all the signposts of AT&T/CVON, meeting the fourth one because the invention simplified application coding. Floyd J disagreed, and considered that the invention was concerned with the way in which software operated on the data relating to touch events, which did not make the computer operate in any new way and there was no evidence of an increase in speed or reliability. On appeal, however, both Kitchin LJ and Lewison LJ (as he now is) considered that the narrow interpretation placed on the fourth signpost was too restrictive. Lewison LJ reflected on the signposts that he formulated and thought that they "may have been expressed too restrictively", preferring the judgment of Mann J in Gemstar-TV Guide v Virgin Media, who said "It would be a relevant technical effect if the program made the computer a better computer in the sense of running more efficiently and effectively as a computer" (paragraph 42). Kitchin LJ also considered that they were "useful signposts, forming as they do part of the essential reasoning in many of the decisions to which we must look for guidance. But that does not mean to say they will be determinative in every case. I have also had the benefit of reading in draft Lewison LJ's judgment in this case. I respectfully agree with that too, including his observation that, in the light of Mann J's judgment in Gemstar-TV Guide International Inc v Virgin Media Ltd [2009] EWHC 3068 (Ch), [2010] RPC 10, he would adopt as his fourth signpost the less restrictive question whether a program makes a computer a better computer in the sense of running more efficiently and effectively as a computer. Indeed, this is, to my mind, another illustration of the still broader question whether the invention solves a technical problem within the computer" (paragraph 51).

I now eagerly await the first decision from the IPO where this newly broadened signpost has been properly taken into account. Although the change will probably not have a great effect on extending the boundary of what is considered patentable for computer-implemented inventions, it will certainly result in some greater consideration at the IPO of what constitutes a technical effect according to UK law.