Excluded subject matter – a reminder of the importance of applying the statutory test

By Katharine Stephens

02-2021

Katharine Stephens considers the decision in Reaux-Savonte v Comptroller-General of Patents, Designs and Trade Marks which serves as a reminder from the English High Court not to lose sight of the statutory test when considering whether an invention is excluded from patentability. In this case, a patent application for a structured array of data to enable the evolution of AI was held to be excluded from patentability.

Facts

Mr Reaux-Savonte applied for a patent, published as GB 2546236, entitled "The genome and self-evolution of AI". The examiner was of the view that there was a lack of technical detail in the application and that the invention was nothing more than data structured in a modular, hierarchical and self-contained manner, and therefore was excluded under section 1(2)(c) of the Patents Act as a program for a computer. The Hearing Office was of the same view and, in his decision, refused the application. Mr Reaux-Savonte appealed to the High Court, his central contention being that the Hearing Officer applied the law relating to the exclusion from patentability in an overly restrictive manner. Daniel Alexander QC, sitting as a deputy judge, dismissed the appeal.

Approach

This was a slightly unusual case in that that it involved only one objection to patentability - the computer program exception. Mr Alexander noted that cases usually involve the interplay between at least two exclusions, e.g. a mathematical method and/or a program for a computer and/or a business method. This did not mean that a single objection was impermissible, but he needed to proceed with appropriate care.

Mr Alexander also discussed how the contribution or alleged contribution in the patent application should be identified, and the extent to which appellate Courts should take it upon themselves to evaluate the primary facts. He accepted that what an applicant said about the technical contribution should be taken into account but noted that the "primary point of reference" for the technical contribution had to be the patent application document. As to considering this matter on appeal, Mr Alexander recorded that the appellate Court should not interfere with the Hearing Officer's assessment unless there was an error of principle or the evaluation was "sufficiently clearly erroneous".

The decision

The Hearing Officer had identified the invention's contribution to the art as being a particular way of structuring and organising data that may allow for the production and evolution of future AI code, the word "genome" being used in the application purely by way of analogy to refer to characteristics of a particular kind of computer code.

Having assessed the contribution, the Hearing Officer turned to consider whether the contribution was technical. In finding that it was not, Mr Alexander held that he correctly applied the signposts identified in AT&T Knowledge Ventures/CVON Innovations v Comptroller General of Patents [2009] EWHC 343

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