Autonomy lose UK patent appeal

In another appeal from the Comptroller General of Patents, Trade Marks and Designs following swiftly on from Astron Clinica (see previous IPKat posts here and here), the Honourable Mr Justice Lewison in the Patents Court has dismissed Autonomy's appeal against a refusal of their patent application relating to automated computer searching. The judgment, released only yesterday, has made its way very swiftly on to the BAILII servers, and is available here.

The application related to a method for generating links relevant to the content of an active window displayed on a computer screen, and for embedding an icon representing the links within a part of the window. The claimed invention involved analysing text in an active window, performing search queries based on the test without user input, and displaying to the user links relating to the content of the window, in the form of icons and lists activated by clicking on an icon. Autonomy had argued in their appeal before a hearing officer at the UK-IPO (here) that the contribution their invention made was an “improved man-machine interface”, which the hearing officer did not consider as being helpful in terms of the problem to be solved or of any advantages provided by the claimed features. The hearing officer considered that the contribution provided was an improved graphic user interface having an icon which allowed convenient access to a list of documents relevant to the content of an active window. This was viewed as being an improvement in the way a computer program interacted with the user. The contribution therefore lay within a computer program as such, and the application was refused.

After going through the (by now very familiar) background to the four-step Aerotel/Macrossan test, Lewison J gave a very useful summary of where he considered the state of the law to be regarding the computer program exclusion, in the form of the following list:

i) A computer program is not merely a set of instructions to a computer, but can include the medium (e.g. floppy disc or CD ROM) which causes the computer to execute the program (Aerotel) or a programmed computer (Cappellini [IPKat commentary]);

ii) However what is excluded from patentability is not a computer program but a computer program "as such". Accordingly the mere fact that a claim relates to a computer program does not necessarily disqualify it from patentability (Astron Clinica);

iii) In order to decide whether a computer program is excluded from patentability because it is a computer program "as such" one must consider the substance of the claimed invention (Cappellini);

iv) If the claimed contribution exists independently of whether it is implemented by a computer, in the sense of embodying a technical process lying outside the computer, then the contribution will not be a computer program as such (Gale; Raytheon [IPKat commentary]);

v) This will be the case even though the only practicable way of implementing the contribution is by means of a computer (Raytheon);

vi) If the contribution requires new hardware or a new combination of hardware, or consists of a better computer or solves a technical problem in the functionality of a computer it is unlikely to be a computer program as such (Aerotel; Raytheon);

vii) On the other hand, a mere new hardware test is not enough if the newness consists of a computer program on a known medium (Aerotel commenting on Gale);

viii) The mere fact that a computer program reduces the load on the processor or makes economical use of the computer's memory or makes more efficient use of the computer's resources does not amount to making a better computer, and thus does not take it outside the category of computer program as such (Aerotel commenting on Gale; Raytheon);

ix) An effect caused merely by the running of the program will not take a program outside the exclusion (Aerotel);

x) The manipulation of data stored on a computer (whether on the computer in use or on a remote computer) is unlikely to give rise to a contribution that exists independently of whether it is implemented by a computer (Bloomberg);

xi) Even if the claimed invention is not a computer program as such, it is still necessary to ask whether the contribution lies solely in some other field of excluded matter. If it does, then the contribution will not be patentable (Oneida [IPKat commentary]);

xii) In such a case, although the contribution may well be described as having a technical effect, it is not the right kind of technical effect, and so does not count (shoppalotto [IPKat commentary]; Aerotel; Oneida).

On the invention in question, after construing the claim the contribution was determined to be:

a) Automatically analyzing the text in the active window and generating a list of links related to that content; and

b) Providing an icon that represents a category of such links which, when activated, displays the list of links (which further displays a summary of the content of a link when the cursor is moved over that link).

Lewison J then considered whether this contribution would be excluded:

"In my judgment, as Mr Tappin [representing the UK-IPO] submitted, automatic text analysis, comparison and results generation is a paradigm example of a case in which the contribution falls squarely within excluded matter, i.e. a program for a computer. The claimed contribution, so far as the first element is involved does not exist independently of whether it is implemented by a computer. On the contrary, it depends on a computer processing or displaying information in an active window, and on a search program to analyse it and to compare and generate results. Nor does it require new hardware or a new combination of hardware; and it does not result in a better computer. The only effect produced by the invention is an effect caused merely by the running of the program, which consists of the manipulation of data. It is in short a claim to a better search program.

The second element of the claimed contribution is also, in my judgment, a computer program as such. What the second element of the claimed contribution does is to provide an icon on a graphical user interface which represents a category of links which can be revealed (as can a contents summary). This is done by embedding the icon, displaying the links when the icon is activated, and displaying the contents summary when the cursor is placed on the link. This element of the claimed contribution lies in program design, i.e. the inventor has chosen to denote the output from its text analysis and comparison exercise by means of a nested series of representations (icon, link, contents summary). As Mr Tappin submitted, when one considers how this is provided, there can be no doubt that this part of the contribution relates to a computer program as such. A computer program has been designed to embed an icon, display the links and display the contents summary on appropriate mouse / cursor actions.

Again the claimed contribution does not exist independently of the computer. It is described in terms that envisage the display of an icon on a computer screen and the underlying links being accessible via the icon. It does not require new hardware or a combination of hardware; and it does not result in a better computer. Again the only effect is produced by running the computer program, which so far as this element of the contribution is concerned, consists of the display of information. In my judgment the Hearing Officer was right to conclude that the claimed invention is a computer program as such" (paragraphs 40-42).

The IPKat wonders whether the same decision would have been arrived at if heard before an EPO board of appeal (if it even got that far). It seems quite plausible to him that the above contribution, if rearranged into the EPO-style problem and solution approach, could well have resulted in a granted patent. Unfortunately, it seems that we will not have a chance to find out, since Autonomy only chose to file applications in the UK and US for the invention in question. It looks like the US application will, however, get through without too much trouble.