The UK Intellectual Property Office acknowledges that a “user interface” can be technical!
March 01, 2020
In a boost for developers, a recent patent decision indicates a continued softening of the UK approach to patentability of software/computer-implemented inventions. We take a look at what can be learnt from this decision.
Despite the UK Intellectual Property Office (UKIPO) and the European Patent Office (EPO) using the same criteria to assess whether or not an invention is excluded from patentability, there has historically been divergence between how the criterion that excludes “a computer program as such” is interpreted. The EPO has been rather more permissive routinely allowing inventions at the “user interface” level, whereas the UK courts have of late been on a journey from being very restrictive to firstly allowing an invention at the operating system level (Symbian) and then, more recently, at the application programming interface level (HTC v Apple).
This recent decision (Lenovo BL O/017/20) is of interest because it shows a further development indicating a new willingness at the UKIPO to allow an invention at the user interface level. This is a very interesting development and brings the UKIPO more closely into line with the EPO.
Previously our advice to clients has been to pursue patent protection for user interface inventions via the EPO and not via the UKIPO. While it is perhaps too early to change this advice, we are following developments carefully. It will be particularly interesting to see if the next edition of the Manual of Patent Practice follows the lead set by the decision in this case.
The UK Law
Section 1(2)(c) of the UK Patent Act, excludes from patentability an invention for a program for a computer as such.
The current leading case law in this area- the 4-step test of Aerotel/Macrossan for assessing excluded matter. The steps are:
Step 1: Properly construe the claims
Step 2: Identify the actual or alleged contribution
Steps 3 & 4: Ask whether the contribution falls solely within the excluded matter; Check whether the actual or alleged contribution is actually technical in nature.
In this case, the outcome is determined by the outcome of the second step.
The invention in this case
The invention lies in processing handwriting strokes to determine candidate input words, spell-checking these and then presenting the results to a user based on combined weighted scores of both the candidate and spell-check processes and providing the top-ranked result as an input to a user application on the device. The invention thus determines what a user most likely meant to write by combining analysed input stroke data with a range of predetermined possible intended outputs. This differs from previous systems because the analyses are combined and ranked based on combined confidence scores to improve their reliability (i.e. to more closely match what was intended).
This case involves a hearing (similar to an appeal) at the UKIPO which reviews the examiner’s decision to reject the patent application because the invention relates to a computer program as such.
The issues revolve around the dilemma of how broadly to formulate the contribution at step two. Should there be a narrow focus on novelty as per the examiner; or a broader focus on user benefit as per the applicant.
The Hearing Officer focused on the problem to be solved (as described in the patent application) and decided that the invention as claimed provides an improved text input to a (user) software application, based on user-input handwriting strokes. The Hearing Officer reformulated the examiner’s definition of the invention placing greater emphasis (indicated by underlining below) on the input strokes and the output to a user application: The contribution is…
“receiving handwriting strokes and processing these to provide candidate machine input words, supplying these to a spell-checker which provides a list of spell-check words for each of the machine input words, ranking the list using both candidate machine input scores and spell-check confidence scores and displaying this list to the user with the best word highlighted in some way, and providing the highest-ranking word as input to a user application.”
In deciding to identify the contribution broadly the Hearing Officer referred to the case Landmark Graphics BL O/112/18 (a computer-implemented method for creating a representation of a geological structure). In that case the Hearing Officer took a step back from the actual advance and simply identified the field of endeavour. A forensic analysis of the difference between the invention and the prior art not is not necessary when it is clear that the invention is limited to a very specific task or application that is not itself excluded. As that field of endeavour is a technical one then there is a reasonable chance of it being a patentable invention under section 1(2).
In the current case, the Hearing Officer was satisfied that the specific task of disambiguating user input, or stepping back, of user interaction whilst controlling a computer, is a technical field of endeavour and so formulated the contribution broadly to include the user handwriting input and application text input.
The Hearing Officer broke new ground considering the sign-post requirement for a “better computer” (AT&T signpost iv ) is met by improved user interaction with the computer.
The Hearing Officer emphasizes that because he has considered the general field of endeavour to be technical, he has consequently formulated the contribution broadly and has, on balance, concluded signpost (iv) satisfied. The Hearing Officer also indicated a possible change in perspective emphasising that a reasonable case for the invention being patentable has been made, and contrasted this with expelling any doubt altogether.
The Hearing Officer also acknowledged differences between this case and one of the current leading cases in this area (HTC v Apple). In that case the benefit was to the software developer and the cost and complexity of software, whereas in the present case the advantage is to the user and the accuracy and reliability of input data. However, the Hearing Officer concludes that, nonetheless, the result is the same; an improved user input device. Also in that case, the invention was an improved application programming interface (API), whereas in the present case the invention is an improved user interface. However, the Hearing Officer concludes that “user interaction and control of computers per se is not excluded and I am comfortable that disambiguating user input and providing improved input data to the computer is technical”.