In Reaux-Savonte v Comptroller-General of Patents, Designs and Trade Marks [2021] EWHC 78 (Ch), the High Court has dismissed an appeal from the Intellectual Property Office refusing an application for a patent claiming a system for AI.
The case was an appeal from a decision of the Deputy Director UKIPO acting for the Comptroller General in which he held that a patent application should be refused because the alleged invention consisted of subject matter excluded from patentability under section.1(2) of the Patents Act 1977. The application related to a structured array of data that was said to enable the evolution of artificial intelligence. The examiner cited a lack of technical detail in the application and the view, based on what could be gleaned from the description, that the invention was nothing more than data structured in a modular, hierarchical and self-contained manner, which fell to be excluded under section 1(2)(c) as a program for a computer.
The inventor appealed on several grounds, but the key argument was that the hearing officer applied the law relating to the exclusion from patentability in an overly restrictive manner. There was no argument over the underlying law.
The inventor said that the invention in question is an AI genome. It is composed of three distinct parts:
- the first is the genome itself – a self-contained, modular and hierarchical code structure designed to resemble the composition of a biological genome.
- the second part is the organiser – a manifest file containing what would be considered the genetic information of the genome.
- the third part is the controller – a program that monitors and records activity involving the genome, as well as controls the functions and use of the genome.
Like a biological genome, this AI genome defines the entities it was designed to help create.
The inventor also argued that the examiner and hearing officer had interpreted the tests for software patent eligibility in the most restrictive way possible, and used the allowed discretion of their opinion to define what does and does not constitute a technical effect, even ignoring vital parts and uses of the invention to do so, and had ignored the interpretation and assessing rules of the Manual of Patent Office Practice for computer-implemented inventions.
The High Court’s decision
The court dismissed the appeal. It concluded that the hearing officer’s approach to identification of the contribution of the application was not open to objection. It was, in any event, well within the range of reasonable evaluations of the contents of the application as a whole.
The High Court pointed out that in general the Manual does not have the force of law. There was limited value in detailed examination of its gloss on what is itself a gloss on the statutory test.
The statutory exclusion must be evaluated by reference to the Act and relevant case law. The specification set out a hierarchical system of computer code that facilitates evolution over time. This did not inherently have a technical effect carried out outside of a computer. The statutory exclusion did not cease to apply merely because a particular structure of a computer program can be applied over a wider area than mere data manipulation and may be manifested in the context of robotics especially as the application did not provide sufficient guidance to a skilled person as to how that should be done.
The core aspect of the invention as described was that it had a structure that enabled the code to change in a manner which had some analogies with biological systems. The concept of an effect being produced at the level of architecture, was not in the court’s view, what was contemplated in the application. A computer system operating on new code does not imply that the system works in any way differently to how it would with the old code. There was nothing in the application that suggested that a computer system is being made to operate in a new way.
The Manual has a specific section on AI. The court pointed out that it was guidance and each case including those in the field of AI, must be decided on its own facts. However, it was consistent with the requirement in the case law to focus on the actual contribution made by the invention as disclosed. The Manual did not suggest that if an application does not contribute a solution to a technical problem relating to a technical process outside the computer, it will automatically escape objection on the basis that it suggests that the subject matter might be used in such a context. Having regard to the manner in which the alleged invention was characterised in the application and what was (and was not) disclosed, the hearing officer had sufficient basis for concluding that the statutory exclusion applied.
