March 16, 2021
Mr Corey Kaizen Reaux-Savonte appealed against the Decision of the Comptroller General, in which he held that the patent application should be refused on the basis that it was excluded under s 1(2)(c) of the Patents Act 1977 as a program for a computer.
The application related to a structured array of data that was said to enable the evolution of artificial intelligence without human intervention using a “genome” containing the genetic information of the AI to allow it to pass on who it is and/or what it knows.
Mr Reaux-Savonte said that the hearing officer had applied the law relating to the exclusion from patentability in an overly restrictive manner.
The hearing officer had referred to the four steps to be applied when considering s 1(2), as set out in Aerotel Ltd v Telco Holdings Ltd  RPC 7: (i) properly construe the claim; (ii) identify the actual contribution; (iii) ask whether it falls solely within the excluded subject matter; and (iv) check whether the actual or alleged contribution is actually technical in nature.
The hearing officer had also referred to the non-prescriptive signposts identified in AT&T Knowledge Ventures/CVON Innovations v Comptroller General of Patents  EWHC 343 (Pat) and reformulated in HTC v Apple  EWCA 451, as follows:
- whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
- whether the claimed technical effect operates at the level of the architecture of the computer, i.e. whether the effect is produced irrespective of the data being processed or the applications being run;
- whether the claimed technical effect results in the computer being made to operate in a new way;
- whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer; and
- whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
As neither the application nor the specification documents were sufficiently clear, Mr Alexander QC, sitting as a Deputy Judge of the Chancery Division, found that it was appropriate for the hearing officer to consider how the applicant, Mr Reaux-Savonte, described the invention himself. Mr Reaux-Savonte said:
“The invention is a modular, autonomously self-modifying AI genome used to create digital and physical entities.
Present in an entity, it monitors and records the use of functions it provides to the entity.
At a point of amalgamation, it creates a new genome by selecting which modules to implement into a new genome and which to discard, and then doing it.
The genome is able to upgrade, backup, and fix itself”.
Mr Alexander QC said that the problem with this characterisation was that it involved language to describe what was, in substance, a function implemented in software by using analogies from the field of biology that did not have a clear or unambiguous meaning in the context of computer science or artificial intelligence. An “AI genome” was not a term of art in this field, he said. In fact, Mr Reaux-Savonte did not contend that this description was any more than using an analogy to describe characteristics of the software-implemented functionality. That was also clear from the specification, and the way in which Mr Reaux-Savonte described the invention as a “self-contained, modular, and hierarchical code structure” with the controller being a “program”. These were both characteristic features of a computer program. In Mr Alexander QC’s view, the use of biological analogies needed to be treated with caution to determine what the actual subject matter of the invention was.
Mr Alexander QC said that the oral evidence given by Mr Reaux-Savonte to the hearing officer confirmed that the term “genome” in the application was used purely by way of analogy to refer to characteristics of a particular kind of computer code, whose purpose was to enable other computer code to change and evolve in the same way as biological code evolves. The substance of the invention was therefore a hierarchical system of computer code that facilitated evolution over time, as a result of its arrangement. Mr Alexander QC said that this characterisation sufficiently summarised the invention as described in the application at the relevant level of generality to determine whether the s 1(2) objection applied. Therefore, the hearing officer’s approach was not open to objection. It was, in any event, well within the range of reasonable evaluations of the contents of the application as a whole.
Mr Alexander QC also rejected Mr Reaux-Savonte’s arguments in relation to the signposts. For example, Mr Reaux-Savonte argued that using the invention for the creation of robots was “an outside process”, i.e. the claimed technical effect had a technical effect on a process that was carried on outside the computer. Mr Alexander QC found that the invention was about the way in which the computer software was said to evolve, regardless of whether it was implemented in any given context. Further, it was not good enough for Mr Reaux-Savonte to say that, because characteristics of software were described at such a high level of generality, that made it applicable over a wider field, which satisfied the requirement of operating at the level of architecture. In Mr Alexander QC’s view, the invention described characteristics of software, not the architecture of the computer. The appeal was dismissed. (Mr Corey Kaizen Reaux-Savonte v Comptroller-General of Patents, Designs and Trade Marks  EWHC 78 (Ch) (22 January 2021) — to read the judgment in full, click here).