Autonomy Corporation Ltd v The Comptroller General of Patents, Trade Marks & Designs

Patentability of computer-related inventions requires the four-stage approach: construe the claim, identify the actual contribution, ask whether it consists solely of excluded subject matter, and check whether it is technical. Automatic text analysis, comparison and results generation, together with graphical-interface features implemented by program design, remain computer programs as such where they do not exist independently of a computer, require no new hardware, improve no computer and produce only effects caused by running the program. Presenting links, summaries, categories or threshold results through icons is also presentation of information. A technical effect cannot rescue an invention which fails at the excluded-matter stage.

Autonomy appealed against the Comptroller’s rejection of amended claims in an application entitled Automatic Searching For Relevant Information. The claims concerned analysing text in an active computer window, automatically searching for relevant material, generating links, and displaying those links and summaries through embedded icons.

The Hearing Officer upheld the objection that the invention was a computer program as such but rejected the separate objection based on presentation of information. The Comptroller defended the first conclusion and, by Respondent’s Notice, challenged the second. The central issues were whether the claimed contribution consisted solely of excluded subject matter under section 1(2) of the Patents Act 1977, and whether the subsidiary claims altered that conclusion.

1. Appeal dismissed. The amended claims, including the apparatus claim whose fate depended on claims 1 to 4, were excluded from patentability.
2. The applicable framework was the four-stage test in Aerotel v Telco; Macrossan’s Application [2007] RPC 7: construe the claim; identify the actual contribution; determine whether the contribution consists solely of excluded subject matter; and check whether the contribution is technical.
3. The first element of claim 1 was automatic text analysis, comparison and results generation. It depended on computer processing, required no new hardware or new combination of hardware, did not produce a better computer, and produced only an effect caused by running the program. It was therefore a computer program as such.
4. The second element was the graphical-interface implementation: embedding an icon, displaying links when it was activated, and displaying a summary when the cursor moved over a link. Those features were matters of program design and were also presentation of information. Convenience, unobtrusive positioning, categorisation and highlighting did not remove the features from the exclusions.
5. The fourth step could not revive an invention which failed at the third step. Any technical effect in such a case was technical effect arising solely from excluded matter.
6. Claim 2’s unobtrusive display area was presentation of information and program design. Claim 3’s category-based icons likewise concerned presentation of information and program design. Claim 4’s threshold-relevance determination was a function of the computer program, while the highlighting was presentation of information, or both.

The appeal was from the decision of the Comptroller’s Hearing Officer dated 7 November 2007. The Hearing Officer upheld the computer-program objection but rejected the presentation-of-information objection. The High Court dismissed the appeal and upheld the exclusion of the claims on both grounds.