Legal Updates

Intellectual Property Law – Patentability of Computer Program – Presentation of Information

The case of Autonomy Corporation Ltd v Comptroller General of Patents Trade Marks and Designs [2008] concerned the patentability of computer programs. On the 11th of February 2004, the appellant in this case filed a patent application with the UK Patent Office (now UK IPO).

The application concerned a method for generating links which related to the content of an active window displayed on the user’s computer screen. An embedded icon relating to those links would then appear on the title bar of the active window.

It was conceded that the contribution of claim one of the applications could be suitably summarised as:

• Automatically analysing the text in the active window and generating a list of links related to that content; and
• Providing an icon that represented a category of such links. A summary of the content of a particular link would also be displayed when the cursor was moved over it.

Claim two of the application explicitly required the icon to be embedded in a suitably convenient, yet unobtrusive place.

The examiner decided that the claimed invention should be excluded from patentability due to the operation of s.1(2) of the Patents Act 1977. The reason for this decision being that the application was a program for a computer and concerned the presentation of information.

The claims were revised, however the objections were maintained. Accordingly, the appellant requested a hearing.

Unfortunately the hearing officer upheld the examiner's objections due to the fact that the invention consisted of a computer program. He did however hold that he would not have excluded the second element of the contribution on the ground that it amounted to the presentation of information.

With regards to the second element of the contribution, the hearing officer accepted the appellant's argument that the addition of an icon conveniently positioned for accessing relevant documents extended beyond the nature of the information displayed or the manner in which it was presented.

The appellant appealed against the decision. The respondent alleged that the hearing officer ought to have upheld the examiner's conclusion that the invention was unpatentable due to it amounting to the presentation of information.

On appeal, the issues to be decided were whether:

• The contribution of claim one was of solely of excluded matter, being a computer program as such; and
• The second element of that contribution was excluded as relating to the presentation of information.

The appeal was dismissed for the following reasons:

• The hearing officer had been right to conclude that the claimed invention was a computer program and therefore unpatentable. Automatic text analysis, comparison and results generation was an example of a case in which the contribution fell perfectly within excluded matter, namely a program for a computer.
• The claimed contribution, as far as the first element was concerned, did not exist independently of its implementation by use of a computer. It depended on a computer to process and display information in an active window. It also depended on a search programme to analyse that information, compare it and to generate results.
• Furthermore, the contribution did not require any new hardware or a new combination of hardware, and as such it was held that it did not result in a better computer. The only effect produced by the invention was an effect caused by the running of the program, which consisted merely of the manipulation of data. It was therefore deemed to be a claim to a better search engine program.
• In addition, the second element of the contribution was also held to be a computer program. That element concerned program design, the inventor having chosen to denote the output from its text analysis and comparison exercise by means of a series of representations (icon, link, contents summary).  When one considered how that was provided, it was obvious that it was done by the operation of part of the computer program. Again, this meant that the claimed contribution did not exist independently of the computer. It did not require new hardware or a combination of hardware, and did not result in a better computer. Accordingly, the only effect was produced by running the computer program which, so far as the second element was concerned, consisted of the display of information.
• The hearing officer ought to have held that the second element of the contribution of claim one was excluded because it was related to the presentation of information. Manipulating where to display information and how that information is displayed still amounted to the presentation of information. As such the patent application was rejected.

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© RT COOPERS, 2008. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.