Update: Computer-implemented inventions at the UKIPO

Two decisions [1, 2] relating to computer-implemented inventions have recently been handed down by the UK Intellectual Property Office (UKIPO).

The decisions are of interest for different reasons. One gives an example of what the UKIPO considers to be patentable subject matter and the other could serve as a test case for directly comparing the approaches of the UKIPO and the European Patent Office (EPO) when assessing computer-implemented inventions.

In New Voice Limited’s application [1], the hearing officer considered that the invention fell outside the computer program exclusion.

The application related to computer-telephony integration and claim 1 recited:

“1.     A method of providing computer-telephony integration comprising:

receiving by a computer-telephony system an incoming call;

obtaining by the computer-telephony system telephony information relating to the call;

sending a request by the computer-telephony system to a search engine to perform a search based on the obtained computer-telephony information, wherein the search is performed across a heterogeneous collection of material not primarily intended for call handling by the computer-telephony system to locate search results comprising material that is likewise not primarily intended for call handling;

forwarding the incoming call by the computer-telephony system to an agent; and

using the search results to provide information to the agent receiving the call.”

As explained in the application and in the decision (at paragraph 10):

“… the invention seeks to overcome a number of problems associated with prior methods of computer-telephony. In prior systems information relating to a call is passed to a dedicated computer-telephony integration (CTI) server. This information may comprise calling line identification, and or dialling number identification. Further information may be obtained in response to voice or keypad entered information such as for example account numbers. This further information is similarly passed to the CTI server. The CTI server subsequently forwards the call to an 'agent', the agent is also provided with the obtained information. The CTI server may also have access to a customer relationship management (CRM) database, this database may be searched with respect to the obtained information, and further customer information passed to the agent, for example name and address data. A problem associated with this arrangement is the limitation of the CRM database. A CRM database must be provided and maintained this may be difficult if call centre systems are out-sourced to a third party. Such databases must also be compatible with CTI systems being operated. This is of particular limitation to small clients who may not have the capacity to properly maintain the databases and are thus unable to fully exploit CTI services”.

The hearing found that the method and system provided new functionality and that:

"Such functionality was not previously possible in computer-telephony systems. Thus although elements of the invention are implemented in software the contribution is technical as it provides a new and enhanced call handling system."

(paragraph 31)

Thus, the decision gives another example of a positive outcome to UK hearing on the matter of excluded matter.

There was no such happy outcome, however, in The Court of Edinburgh Napier University’s application [2].

The case related to digital forensic analysis and claimed:

“1.     A digital forensic analysis method comprising the steps of:

collecting system call data from a digital computing system (DCS), said system call data comprising requests made between a user space and a kernel space of said DCS;

converting the system call data to a sequence format;

selecting from a system call sequence database a test sequence of system calls; and

performing a sequence matching step using a gapped local biological sequence matching algorithm to detect matches between the test sequence of system calls and the sequence derived from the collected system call data.”

and

“16.     A digital forensic system comprising:

data collection means for collecting system call data from a digital computing system (DCS) said system call data comprising requests made between a user space and a kernel space of said DCS;

data formatting means arranged to convert the collected system call data to a sequence format; and

sequence matching means arranged to apply a gapped local biological sequence matching algorithm to detect a match between said sequence derived from the collected system call data and a test sequence of system calls.”

In this case, the hearing office found that:

“Whether or not the digital forensic analysis amounts to data mining, what it is doing is organising and analysing the collected data using mathematical techniques. The purpose, according to the application, is to identify suspicious patterns of activity. Moreover, according to the application the forensic analysis ultimately produces data for display to an operator assessing the activities taking place on the digital computing system. There is no change to the performance of the computer or to a process external to the computer.” (paragraph 16)

Thus, the hearing officer found that the digital forensic method and system related to a program for a computer and a mathematical method as such.

This decision is interesting for the reason that is may provide an opportunity to compare the practice at the UKIPO and the EPO when assessing computer-implemented inventions.   As explained in a recent article [3], this opportunity does not arise often.

The Edinburgh Napier University’s decision was issued on an international application which had entered early into the UK national phase.  What makes this case unusual is that the international application has also entered into the European regional phase before the EPO.

Therefore, there is the prospect that the same claims which were refused by the UKIPO will be examined by the EPO.  It will be interesting to whether the EPO comes to a different conclusion.

Of course, the EPO may come to the same conclusion.  Moreover, if the claims are amended, then even if the EPO comes to a different conclusion, this can be used to explain the different result.

Notwithstanding this, these applications might provide valuable clues as to whether and to what extent UK law is aligned with that of the EPO.

So, let’s see what the EPO does next…

 

[1] O/163/11 dated 13 May 2011, http://www.ipo.gov.uk/pro-types/pro-patent/pro-p-os/o16311.pdf

[2] O/164/11 dated 16 May 2011, http://www.ipo.gov.uk/pro-types/pro-patent/pro-p-os/o16411.pdf

[3] Symbian – What the Patents Court and UK IPO did next, Inside IP Magazine, Winter 2009/2010, and http://www.vennershipley.co.uk/show-news-id-206.html

Pawel Piotrowicz 24 May 2011

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