In the UK, it is possible to protect your software and AI inventions if they satisfy some key criteria. In particular, it is crucial that your software inventions have a “technical effect”. It can be difficult to understand what “technical effect” means because software inventions are implemented using computers, computers are inherently technical, and therefore software running on a computer must be somewhat technical. However, the law in the UK is clear – the mere fact that software runs on hardware is not enough to make a software invention patentable. Instead, it is necessary to demonstrate that what the software does – i.e. the function of the software – has an effect on a technical process that goes beyond the normal interactions between software and hardware. This can be difficult to demonstrate for inventions that are focussed on having an impact on a human or a human process.
In this article, we look at a recent UK case that illustrates how even a user-centric invention that utilises hardware components, such as sensors and displays, can still fail to have an effect on a technical process. We also discuss how we can help you to determine whether your user-centric invention is likely to be patentable or not patentable in the UK.
Introduction
Many of us wear headphones in the office – whether to participate in an online meeting, or to block out background noise, or because to enjoy a podcast. However, it can be difficult for colleagues to know whether to approach you, whilst wearing them. Your colleagues might wonder: “Do they have their headphones on because they are in an important meeting, or are they just using the noise-cancelling function in the open-plan area?”
This is a problem that Motorola Mobility LLC tried to tackle via their UK patent application GB2107099.0, which describes providing a personal status identifier on electronic devices such as smartphones, to help third parties know whether someone should not be disturbed or can be interrupted. Technologies that aim to improve a user’s experience while they use an electronic device are becoming more commonplace, and many of these are implemented using ‘normal’ software or artificial intelligence. However, although they may indeed make devices more user-friendly or accessible, such technologies may not always be inherently patentable.
Subject matter of the patent application
GB2107099.0 describes utilising the curved screen edge of a smartphone to indicate a user’s status to third parties in their vicinity. While many smartphones only have a front screen that is visible only to the user, more recent and higher-end devices have a curved edge display which extends the front screen around the edges of the device. By changing the output of pixels that lie along a curved edge to display different colours, such as red, yellow or green, the status of the user can be indicated to third parties. For example, third parties cannot tell if the user is in an online meeting without looking at the front screen, which may be difficult without invading the user’s privacy. Motorola’s status indicator allows third parties to determine, from a distance, whether the user of the smartphone can be disturbed or not.
The GB patent application originally included a method claim, which relates to how the status of a user may be detected and how the status indicator can be changed in response. That is, the detection of the status and controlling the status indicator is performed by software. The GB application also included a corresponding apparatus claim, which essentially states that a processor performs the steps to detect user status and change the status indicator.
Summary of the prosecution history
The UK IPO outsourced the search and examination of the patent application to the European Patent Office, as part of a well-established work-sharing agreement. In the Combined Search and Examination Report (prepared by the EPO), the novelty and inventiveness of Motorola’s method claim was questioned. (If you’d like more information about what novelty and inventiveness mean, see our glossary of patent terms here.) Specifically, with respect to inventiveness of the method, the Examiner indicated that the prior art discloses changing the colour of indicators to indicate different states. Furthermore, the Examiner stated that the prior art discloses edge displays and the skilled person, who has to make a choice about whether to put the indicators, would logically choose to place them in the edge so that third parties can see the user’s status easily. At this stage, the Examiner did not raise any inherent patentability objection, but this is not surprising because the EPO rarely raises such objections outright.
In response, the Applicant amended the method claim to incorporate the features of a dependent claim which was considered to be novel. The amended claim refers to sensors that are used to detect the change in status. Brief comments on the inventiveness of the amended claim were also submitted.
The UK IPO prepared the second examination report themselves, and in this they raised an “excluded subject matter” objection. Unfortunately, we have observed this on other cases – a relatively positive first opinion produced by the EPO under the work-sharing agreement is overturned by the UK IPO when the case is assessed under UK law. It is frustrating for patent attorneys and patent Applicants alike.
The UK IPO stated that the claims relate to a “program for a computer” and to “the presentation of information” and therefore, are excluded from patentability. Their reasoning is that the software is solely concerned with a process to allow a user to display their status, and the display of status is itself a presentation of information. The choice of where to place the indicator is no more than a choice of where to present information. As a result, the UK IPO stated that the overall contribution of the invention is not technical in nature since the indicator only provides non-technical information (the user’s status), and the associated process of generating and providing the information is merely a computer program.
The Applicant responded by amending the method claim further and by arguing that the invention causes the electronic device to be operated in a new way (AT&T signpost iii – see below for explanation) and provides solves a technical problem (AT&T signpost v).
The UK IPO was not convinced by the submissions and a hearing was scheduled to decide on whether the claimed invention relates to presentation of information and/or a computer program.
Recap of UK patent law
The UK Patents Act 1977 states in Section 1(1) that a patent can only be granted for an invention if it is new, inventive, capable of industrial application, and not one of the things that is explicitly not considered to be an invention by the Act. Section 1(2) of the Patents Act states that, among other things, “a program for a computer” and “the presentation of information” as such are not considered inventions. This is what the UK IPO Examiner relied upon to raise the objections outlined above.
In the UK, in order to determine whether a claimed invention is one of the things the Act considers not to be an invention, and therefore, to be excluded from patentability, it is necessary to apply the Aerotel test:
- Properly construe the claim.
- Identify the actual contribution.
- Ask whether it falls solely within the excluded subject matter.
- Check whether the actual or alleged contribution is actually technical in nature.
For step 1 of the Aerotel test, the UK IPO’s Hearing Officer had no trouble determining what the method claim means. For step 2, the UK IPO Hearing Officer identified the invention’s contribution as: “Use of an edge display of an electronic device to indicate the status of a user of the device, the status being updateable by the user using sensors associated with the device, wherein the edge display provides improved visibility of the status to passers-by”
As a result, for steps 3 and 4, the Hearing Officer determined that the contribution of the invention “appears to be nothing more than a different way of presenting particular information in a particular way on a known electronic device” and that, although there may be benefits in relation to the visibility of the information, these benefits are not technical. That is, the benefits are effectively to the user of the electronic device who is now only disturbed when their status indicates they can be. This is a human or personal benefit, rather than a technical one.
Nevertheless, the UK IPO Hearing Officer also considered all five of the AT&T signposts, which help to determine whether a computer program makes a technical contribution. The five signposts are:
i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
iii) whether the claimed technical effect results in the computer being made to operate in a new way;
iv) whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer; and
v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
Generally speaking, signpost (i) can be applied if the software is being used to control a technical process outside of the processor. Here, the Hearing Officer acknowledged that the software causes the pixels in the edge of the display to change colour to indicate the user’s status. However, the Hearing Officer did not consider this effect to be technical because although the pixel colour is being controlled, the effect of the change in colour is not itself technical. The effect is on a process performed by a third party, i.e. should they disturb the user or not?
Signposts (ii) to (iv) effectively say that if the software causes the computer hardware itself to run differently, then the software makes a technical contribution. In this case, the Hearing Officer concluded that no effect occurs at the hardware level of the computer. The Hearing Officer also disagreed with the Applicant’s arguments that the program makes the computer run in a new way because the way that the pixels are controlled is not different at a hardware-level.
Signpost (v) asks whether the software actually solves a technical problem or provides a solution that get arounds the problem entirely. The Applicant had argued that providing personal status information to people nearby is the problem being solved. However, the Hearing Officer disagreed that this is a technical problem and states “it is no more than a convenience for the user to avoid unnecessary interruptions”.
Therefore, the Hearing Officer concluded that the UK IPO Examiner’s earlier objections were correct and that the invention falls under both the “program for a computer” and “presentation of information” exclusions. As a result, the application for a patent was refused.
Key takeaways
This hearing and decision is useful for anyone innovating with user-centric design in mind. Some software innovations that are designed to improve user experience or even improve accessibility for users may not be considered patentable in the UK if the only effect of those features is on a user (or on a third party!) Here are some key takeaways if you’re considering patenting your user-focussed software innovation:
- Improved user experience is not necessarily a technical effect. The Hearing Officer stated that simply providing information in a more convenient location, such as a curved edge screen, does not provide a technical effect. This is also true for some accessibility features, such as using larger fonts or certain colours to help users to interact with software/computer programs, or which lower the cognitive burden on a user. The effect is improved experience for a user, and not on a technical process or component.
- Presenting information to a user can have a technical effect in some circumstances. For example, presenting information may be technical if it credibly assists a user to perform a technical task by means of a continued or guided process of human-machine interaction. Another example is presenting visual or audio stimulus to a person in order to measure a physiological reaction that can be measured for the purpose of assessing a medical condition. Here, the technical effect is the measurement of the physiological reaction.
- Real-world effects of an invention must be technical to be patentable. Although the Motorola invention may initially seem to have a real-world technical effect, i.e. the changing pixel colours, the only reason the colours were changed was to provide information to third parties, which meant the effect was considered to fall squarely within the “presentation of information” exclusion. Patent applications involving user interfaces and information display must go beyond mere convenience or aesthetic improvements. They need to demonstrate a tangible technical contribution that goes beyond presentation of information.
- Inventions that use AI must also have a technical effect in order to be patentable. Even if your innovation uses complex technologies, such as Artificial Intelligence or Machine Learning, to provide improved user experience, it is the overall technical effect that the Patent Office is interested in. Thus, currently, merely using AI to enhance user experience, whether that’s how information is displayed or providing recommendations to users, is unlikely to make an excluded invention acceptable – it all hinges on what the end result or purpose of the AI is.
- Our experts can help you identify the patentable technical features of your invention.
It can be difficult for you to assess whether your software invention is patentable, but this is where we can help! We have a team of software and AI experts who are very experienced in determining whether your software invention could be patented in the UK, Europe, the US and elsewhere. We can draw out the features of your invention that are most useful in demonstrating a technical effect and ensure these are highlighted clearly in your patent application.
In conclusion, the Motorola decision serves as a reminder of the requirements for patentability under Section 1(2) of the Patents Act 1977. If you are innovating in a similar area and want to know if you can patent your invention in the UK or Europe, we would be happy to have a confidential discussion with you.
