AT&T Knowledge Ventures LP, Re

The Aerotel four-stage approach remains the governing framework for computer-program and business-method exclusions, although it should not be applied mechanically. The inquiry must identify a relevant technical contribution, while disregarding a technical effect arising solely from excluded matter. Relevant signposts include an effect outside the computer, an architectural improvement operating independently of the data or application, a new way of operating the computer, increased speed or reliability, and solving rather than circumventing a technical problem. A computerised business method remains excluded where the claimed contribution merely selects or implements a business choice, even if it delivers useful content, reduces delay or improves the business process.

AT&T Knowledge Ventures LP and CVON Innovations Ltd appealed under the Patents Act 1977 from separate UKIPO decisions. Each application concerned a computer-implemented system: AT&T’s system selected digital content compatible with a user’s device, while CVON’s messaging system authenticated group membership through subscriber-initiated interaction with a third-party database.

The Comptroller’s representatives maintained that the claimed contributions remained business methods or computer programs as such. The central issue was whether either claimed contribution made a relevant technical contribution sufficient to avoid the exclusions in section 1(2).

1. Both appeals dismissed. The claimed inventions were excluded from patentability under section 1(2) of the Patents Act 1977.
2. The four-stage test in Aerotel v Telco; Macrossan’s Application [2007] RPC 7 remained the law, but should not be followed blindly. The question whether the contribution is technical must be addressed within the inquiry, whether at the third or fourth stage.
3. The relevant technical-effect signposts were: an effect on a process outside the computer; operation at computer-architecture level irrespective of the data or application; a new way of operating the computer; increased speed or reliability; and solving, rather than circumventing, a technical problem.
4. For AT&T, the device-profile table was no more than a computerised list of device characteristics. It did not alter computer operation, operate independently of the data processed, solve format incompatibility, increase speed or reliability, or produce a new technical effect. Supplying useful rather than unusable content was a business result.
5. For CVON, subscriber-initiated updating and authentication changed the direction of information flow but did not alter the operation of the computer or messaging system. The choice of authentication method was a business choice, and the reduction in time lag was not a relevant technical effect. The invention therefore amounted to an improved business method implemented using conventional hardware and internet techniques.

• UKIPO: Separate decisions dated 2 July 2008 and 15 August 2008 found the AT&T and CVON inventions unpatentable.
• High Court (Patents Court): The appeals were dismissed.