12 Jul 2022

Excluded subject matter at the UK IPO: tips for succeeding in an ex-parte hearing

Last year the UK IPO conducted 56 ex-parte hearings on excluded subject-matter. Only five were decided in favour of the patentee. Slingsby Partners handled three of those successful five – a 100% success rate for our firm. Here we distil the lessons that we learnt from those hearings.

The legal position

According to section 1(2) of the Patents Act, “anything which consists of … a mathematical method … or a program for a computer” is not considered to be an invention to the extent that a patent or patent application relates to that thing as such. The exclusion may be avoided if the invention provides a technical contribution.

Claim construction is key

Two of our cases[i] claim hardware blocks for performing mathematical operations. The hardware blocks are limited to an implementation in fixed logic or fixed function circuitry. In all other respects, they are claimed functionally. In both cases the hearing officer was prepared to accept, based on information in the description and drawings, that the claimed fixed logic or fixed function circuitry refers to an arrangement of components such as gates, transistors and registers. They are specifically designed hardware blocks that are fixed and not programmable. This led to the conclusion that in neither case is there a processor being told what to do by instructions of a computer program being executed on the processor, so there is no computer program as such. Claim construction – and having the support in the description for our preferred construction – was key.

Hardware must be a substantial part of the invention

Mathematical methods and computer programs are intertwined in many inventions. Gale’s Application, in which the invention (calculating a square root) was embodied as a series of computer instructions stored on a ROM, was rejected because:

“It is a claim to electronic circuitry in the form of a ROM which is only distinguishable from other electronic circuitry in the form of a ROM by the sequence of instructions it contains….those instructions are not patentable, because they constitute a computer program.” Gale’s Application [1991] RPC 305

We persuaded the hearing officers that our hardware was not a confusing irrelevance, but a substantial part of the invention that forms part of the technical contribution. Arguments that were influential included the advantages that arise from the claimed hardware blocks – such as reduced silicon area, reduced power use and reduced processing time. One of the hearing officers did comment that these sorts of advantages are commonly claimed in inventions where the computer program exclusion is at issue[ii]. However, in our two cases, where the inventions are implemented as fixed logic circuitry, the hearing officers considered the argued advantages to be very real.

Where in the computer does the technical effect occur?

Another influential factor was where in the computer the technical effect arises. As one hearing officer commented[iii], the claimed invention resulted in a better tool for calculating mathematical functions, embedded as fixed logic circuitry into the system, which is available for any program to make use of. He considered the technical effect to be at the architecture level of the computer, commenting: “…a computer incorporating this circuitry will be a better computer in that it will run more efficiently and effectively as a computer whenever any program makes use of this circuitry to evaluate mathematical functions.” This distinguished our inventions over Gale’s Application, in which the electronic circuitry of the computer was unchanged by the invention.

Hardware does not need to be new to support patentability

The claims of our final case[iv] also include a combination of functional language and a hardware component. The invention resides in taking a traditional computer vision algorithm and putting it into a form that can be processed by a neural network accelerator. A conventional neural network accelerator cannot otherwise run a traditional computer vision algorithm.

In this case, the claimed hardware component (the neural network accelerator) is known. A fundamental point of disagreement with the examiner prior to the hearing was whether a known item of hardware can be taken into account when assessing the actual contribution of the invention. The hearing officer determined that while the known hardware cannot be the contribution per se, the assessment of the actual contribution must be made by considering what it is the known hardware is programmed to do.[v] This was key, as our technical contribution relied on the combination of the known hardware with a particular type of processing algorithm. Once that combination was accepted as the contribution, the patentability argument followed.

The hearing officer accepted that the claimed method increases the speed of manipulating something tangible (images), which is patentable[vi]. She found that the two main steps of the claims combined to produce a technical effect of processing image data more efficiently – a process that can reasonably said to be “outside” the computer having the accelerator. Our invention was thus considered to fall within AT&T’s[vii] signposts to a relevant technical contribution.

[i] BL O/749/21 and BL O/420/21

[ii] BL O/749/21, paragraph 29

[iii] BL O/749/21, paragraph 42

[iv] BL O/296/21

[v] BL O/296/21, paragraph 19

[vi] T208/84 (Computer-related invention/VICOM)

[vii] AT&T Knowledge Ventures / Cvon Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat), see also HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451

Contact

Sarah Binham

sarah.binham@slingsbypartners.com

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