Reaux-Savonte v Comptroller-General of Patents, Designs and Trade Marks

For a computer-implemented invention, the court must identify the substance of the invention and its actual contribution, rather than rely on the form of the claims or biological analogies used to describe software. The Aerotel four-step approach and the AT&T signposts remain guides, not prescriptive rules. A theoretical possibility that software may be used in robotics does not establish a technical effect outside the computer where the application does not disclose how that result is achieved. The statutory exclusion for computer programs may apply even where the alleged invention is novel or inventive, if its actual disclosed contribution remains excluded subject matter.

The appellant appealed against the decision of the Deputy Director of the UK Intellectual Property Office dated 19 May 2020, refusing patent application GB1520019.9 under section 1(2) of the Patents Act 1977. The application concerned an alleged artificial-intelligence genome comprising structured data, an organiser and a controller, intended to allow AI code to evolve without human intervention.

The central issues were whether the hearing officer had correctly characterised the invention and whether the application disclosed a technical contribution sufficient to avoid the computer-program exclusion.

1. Appeal dismissed. The hearing officer had correctly concluded that the application was excluded from patentability.
2. The substance of the invention was a hierarchical system of computer code arranged to facilitate evolution over time. The terms “genome”, “organiser” and “controller” were biological or functional analogies for software features. They did not alter the true subject matter. The specification, rather than the appellant’s separate description of his invention, remained the primary reference point.
3. The claims had to be considered by substance rather than form. No meaningful distinction arose between the apparatus and method claims. The contribution was properly assessed as a particular way of structuring and organising data that might facilitate the production and evolution of future AI code.
4. The Aerotel four-step test and the AT&T signposts were applied as guidance, not as prescriptive rules. The signposts did not establish a technical contribution. The alleged effect outside the computer was merely theoretical; the application did not explain how the data structure would create physical systems or robots. Describing software architecture at a high level did not amount to operating at the architecture level of the computer, and operating a computer with new code did not itself show that the computer operated in a new way.
5. The Manual of Patent Office Practice did not have the force of law. The statutory exclusion had to be assessed by reference to the Patents Act 1977 and the relevant authorities. The possibility of applying the software to robotics, without sufficient disclosure to enable that application, did not avoid the exclusion.
6. On an appeal from the hearing officer’s evaluative decision, the court could intervene only for an error of law or where the evaluation was sufficiently clearly erroneous. The appeal impermissibly invited a fresh and more generous evaluation. The later technical articles did not establish that the application disclosed a solution to the problem of self-replicating or evolving robots.

The application was refused and the appeal dismissed.

• High Court (Chancery Division): appeal from the decision of the Deputy Director, UKIPO, dated 19 May 2020, dismissed.