Patents - Reaux-Savonte v Comptroller

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Jane Lambert

Patents Court (Daniel Alexander QC) Reaux-Savonte v Comptroller-General of Patents, Designs and Trade Marks [2021] EWHC 78 (Ch) (22 Jan 2021)

This was an appeal by the inventor, Corey Kaizen Reaux-Savonte, against Mr Huw Jones's decision of 19 May 2020 to uphold the examiner's objection to Mr Reaux-Savonte's patent application number GB1520019 for The Genome and Self-evolution of AI (see Corey Kaizen Reaux-Savonte's application  O/284/20).  The appeal came on before Mr Daniel Alexander QC sitting as a judge of the High Court on 2 Dec 2020. By his judgment which he handed down on 22 Jan 2021, Mr Alexander dismissed the appeal (see Reaux-Savonte v Comptroller-General of Patents, Designs and Trade Marks [2021] EWHC 78 (Ch) (22 Jan 2021)).

The examiner had objected to the application on the ground "that the invention was nothing more than data structured in a modular, hierarchical and self-contained manner, which fell to be excluded under section 1 (2) (c) as a program for a computer".   It is to be remembered that s.1 (1) of the Patents Act 1977 sets a number of conditions for the grant of a patent for an invention one of which is that the grant of a patent is not excluded by s.1 (2).  That subsection declares that certain things including a program for a computer are not inventions for the purposes of the Patents Act 1977.   It is not, however, a total exclusion because the end of the subsection states that "the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such."   While a computer program "as such" cannot be patented, there are plenty of software-implemented inventions that can be and are accepted.

In Aerotel Ltd v Telco Holdings Ltd and others Rev 1 [2007] Bus LR 634, [2007] RPC 7, [2006] EWCA Civ 1371, [2007] 1 All ER 225, [2006] Info TLR 215, [2007] BusLR 634 and Symbian Ltd v Comptroller General of Patents  [2008] EWCA Civ 1066, [2009] RPC 1, [2009] Bus LR 607, the Court of Appeal provided the following guidance to determine whether an invention is more than a computer program:
"(1) Properly construe the claim;
(2) identify the actual contribution;
(3) ask whether it falls solely within the excluded subject matter;
(4) check whether the actual or alleged contribution is actually technical in nature."

The most recent case where that approach had been applied is Mr Justice Birss's decision in Lenovo (Lenovo (Singapore) PTE Ltd v. Comptroller-General [2020] EWHC 1706 (Pat) which I discussed in Patents - Lenovo (Singapore) v Comptroller on 14 July 2020.

Mr Jones, the Hearing Officer, had carried out that exercise and had concluded at para [17] of his decision that the claimed invention was excluded under s. 1 (2) because it relates to a computer program as such. He added that he had read the specification carefully and could see nothing that could reasonably be expected to form the basis of a valid claim. He, therefore, refused the application under s.18 (3) if the Patents Act 1977.

Mr Reaux-Savonte's main grounds of appeal were as follows:

"i. The invention in question is an Artificial Intelligence Genome. It's composed of three distinct parts:

• The genome itself- a self contained, modular, and hierarchical code structure designed to resemble the composition of a biological genome.
• The organiser - a manifest file containing what would be considered the genetic information of the genome.
• The controller - a program that monitors and records activity involving the genome, as well as controls the functions and use of the genome.

Like a biological genome, this AI genome defines the entities it was designed to help create.
ii. Subjective and Highly Restrictive Interpretation of Precedent-Defining Rules Examiner and hearing officer interpreted the 5 signposts test for software patent eligibility in the most restrictive way possible, and used the allowed discretion of their opinion to define what does and does not constitute a technical effect, even ignoring vital parts and uses of the invention to do so, as well as the wording of the test questions as they are stated, and the interpretation and assessing rules of the MoPP for computer-implemented inventions."

There was also a third ground that the hearing officer had not correctly construed what the applicant had said at the hearing which had resulted in the invention being rejected under "false pretences",   That argument was not developed at the hearing before Mr Alexander.

In his judgment, the learned deputy judge considered the specification, the appellant's skeleton argument and the appellant's dialogue with the hearing officer to ascertain the invention.  In that dialogue, the appellant and hearing officer agreed that 

"the invention is computer code, a sort of hierarchical or a modular arrangement of computer code that facilitates evolution over time so that the computer code is able to modify, adapt, change and improve over time in the same way that biological code evolves through ...... reproduction."

Mr Alexander characterized it at para [25] of his judgment as "a hierarchical system of computer code that facilitates evolution over time, as a result of its arrangement."   The hearing officer and appellant also agreed that the contribution that is provided by the invention is a hierarchical system of computer code that facilitates evolution over time.   Mr Alexander concluded at [28] that the hearing officer's approach to the identification of the contribution of the application was not open to objection and was, in any event, well within the range of reasonable evaluations of the contents of the application as a whole.

At para [20] of his judgment, Mr Alexander said:

"The heart of the appeal concerns the application of the signposts which the appellant submitted had been done incorrectly and in an overly restrictive manner, having regard to the guidance in the Manual of Patent Office Practice ("the Manual"). He contends that the hearing officer ignored vital parts of the disclosure and exercised his discretion wrongly to define what did and did not constitute a technical effect."

Before considering Mr Reaux-Savonte's contentions, Mr Alexander reminded himself that the Manual does not have the force of law and that there was limited value in detailed examination of its gloss on what was itself a gloss on the statutory test. The statutory exclusion had to be evaluated by reference to the Act and relevant case law.

Mr Reaux-Savonte's first contention was that "when being used in the creation of robots, for example, this invention directly affects how said robot is put together, and that putting together of a robot is an outside process." He reasoned that such outside process has a technical effect in that it is a process that is carried on outside the computer.  Mr Alexander was not persuaded by that argument.   He said at [32]:

"It is true that the specification refers to the possibility of the use of the software described in robotics but it is not confined to that. The invention is about the way in which the computer software is said to evolve, regardless of whether it is implemented in any given context. A hierarchical system of computer code that facilitates evolution over time does not inherently have a technical effect carried out outside of a computer in the sense required by this signpost."

The problem with the contention was that the application did not describe in any detail how the way of structuring and organizing data led directly to the creation of physical systems outside a computer. It did not describe any actual system which did this, or how it should be designed. 

The appellant's second contention was that the "invention defines what components are used in the creation of any physical or digital system". Mr Alexander was not sure exactly what was being said by Mr Reaux-Savante in that respect and the discussion at the hearing did not make the substance of the point clearer. The deputy judge was not persuaded that the hearing officer was wrong in his conclusion on the point.

The third contention was that: 

"current systems are not initially designed and built based on a genome, they do not function based on a genome, their use of function modules aren't monitored and recorded, there isn't a genome function to autonomously choose which functions are to be kept and which are to be discarded when creating descendent genomes, there isn't a genome program to create the descendent genomes, and, circling back to the beginning, a new system isn't designed and built based on the new genome. No current systems operate like this – physical or digital."  

Mr Alexander noted that the hearing officer had said of this point that a computer system operating on new code does not imply that the system works in any way differently to how it would with the old code. He concluded that he was unable to find anything in the application that suggested that a computer system was being made to operate in a new way.  The deputy judge had no criticism of the hearing officer's conclusion.

Mr Reaux-Savonte produced two articles that were alleged to show at least 2 different collaborative groups of computer scientists from different universities and organisations around the world using or theorizing the use of the exact same invention for the same types of use described in the originally filed application.  Mr Alexander restated the fundamental objection at para [51]:

"The application in this case does not show how a person skilled in the art could make robots that will "reproduce on their own" using the "AI Genome". If a patent application refers to the merely theoretical possibility of applying an alleged invention to which the statutory exclusion does apply to aspects of robotics but does not provide sufficient information about how that should be done, the mere possibility of that being implemented in a way that the patent has not enabled does not mean that the patent application will escape the excluded subject matter objection. The statutory exclusion focuses on the contribution made and disclosed in the patent application under consideration, not on the contribution which may be made (possibly by others) using the subject matter of the application to create products or system to which an excluded subject matter may not apply."

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