Software Patents: Adobe Systems Incorporated's Application

Intellectual Property Office

Crown copyright: all rights reserved, reproduced with kind permission of the  IPO

Jane Lambert

Intellectual Property Office (Mrs C L Davies) Re Adobe Systems Inc.'s Application O/549/19 19 Sept 2019

This was an appeal by Adobe Systems Incorporated against the examiner's refusal to allow its application for a patent for a method and system for recommending software actions to create an image and recommending images to demonstrate the effects of software actions to proceed to grant. The examiner objected to the application on the grounds that it was for a program for a computer and a mathematical method within the meaning of s.1 (2) (a) and (c) of the Patents Act 1977.

That subsection declares that mathematical methods and programs for computers among other things are not inventions for the purposes of the Act but that declaration is subject to the proviso that it "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." That phrase and art 52 (3) of the European Patent Convention which contains a corresponding provision has generated a lot of case law from the European Patent Office as well as the Senior Courts of England and Wales.

The first of those cases was Vicom, T 0208/84 (Computer-related invention) of 15.7.1986 [1987] OJ EPO 14, (1986) T208/84, [1987] 2 EPOR 74, where the Technical Board of Appeal held:

"I. Even if the idea underlying an invention may be considered to reside in a mathematical method a claim directed to a technical process in which the method is used does not seek protection for the mathematical method as such.
II. A computer of known type set up to operate according to a new program cannot be considered as forming part of the state of the art as defined by Article 54(2) EPC.
III. A claim directed to a technical process which process is carried out under the control of a program (whether by means of hardware or software), cannot be regarded as relating to a computer program as such.
IV. A claim which can be considered as being directed to a computer set up to operate in accordance with a specified program (whether by means of hardware or software) for controlling or carrying out a technical process cannot be regarded as relating to a computer program as such."

That case was followed by the decisions of the Court of Appeal in Aerotel Ltd v Telco Holdings Ltd and Macrossan’s Application [2007] 1 All ER 225, [2006] Info TLR 215, [2007] RPC 7, [2007] BusLR 634, [2007] Bus LR 634, [2006] EWCA Civ 1371 and Symbian Ltd v Comptroller General of Patents [2009] RPC 1, [2009] Bus LR 607, [2008] EWCA Civ 1066.  In Aerotel, the Court offered the following four-point test for the assessment of excluded matter:

• Step one: properly construe the claim 
• Step two: identify the actual contribution (although at the application stage this might have to be the alleged contribution) 
• Step three: ask whether it falls solely within the excluded matter 
• Step four: check whether the actual or alleged contribution is actually technical in nature.

In Symbian, the Court made clear that the Aerotel test is not intended to provide a departure from the previous requirement set out in case law, namely that the invention must provide a "technical contribution" if it is not to fall within excluded matter.  In Re AT&T Knowledge Ventures LP  [2009] FSR 19, [2009] EWHC 343 (Pat), [2009] Bus LR D51, Mr Justice Lewison suggested a number of signposts which have been modified slightly in subsequent decisions:

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. 

v) Whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

Adobe's application describes techniques for recommending actions for an asset provided by the designer (e.g., for an image being edited by the designer) selected according to a distance measure between the asset provided by the designer and a plurality of representations of actions.  In that regard, it differed from previous asset processing applications that are based on a history of edits applied by a designer to show the designer new or unexplored features of an asset processing application.  It is described in detail in paragraphs [4] to [15] of the decision of the hearing officer, Mrs C L Davies, on behalf of the Comptroller.

There appears to have been no dispute between Adobe and the examiner on the relevant law.  Adobe's case was summarized by the hearing officer at paragraph [25[ of her decision:

“where an applicant makes a reasonable case that their invention is patentable then [the Examiner is] bound to find in their favour”.

It was based partly on paragraph [17] of the hearing officer's decision in Landmark Graphics Corporation's application BL O/112/18 and partly on paragraph [8] of Mr Justice Mann's decision in Macrossan.  In Landmark, Mr H Jones, the hearing officer, said:

“Mr Russell and Dr Jones suggest that an applicant should be given the benefit of the doubt unless there is no reasonable doubt to be had. Insofar as this reasonable doubt is the same as the substantial doubt to which Mann J refers, I can agree with this principle. I consider that the question for me is whether or not there is such substantial doubt regarding each of these seven applications, such that where an applicant makes a reasonable case that their invention is patentable then I am bound to find in their favour. I shall proceed on this basis.”

The passage in Mr Justice Mann's judgment is as follows:

"Mr Birss, in his written submissions for the Comptroller, points out that Whitford J was not addressing a question of principle in what he said. I agree with that, but his statement nonetheless seems to reflect a principle or principles which are consistent with what Laddie J said in Fujitsu. That principle seems to involve the onus being on the person alleging that the alleged invention is within the exclusion. The reference to the benefit of the doubt is probably intended to signify that if there is substantial doubt then the burden has not been fulfilled. I do not consider that it means that if there is any doubt (legal or factual) then the application should succeed. It is not intended to import something like the criminal burden of proof into the proceedings. The tribunal still has to consider whether the exception applies, and it can come to the conclusion that it does without having to find that there is no doubt at all about it."

Adobe's attorney submitted that his argument at least met the "reasonable case" standard and accordingly the claims of the present application should not be rejected as constituting excluded matter. Mes Daveis noted at paragraph [26] of her decision that the examiner had agreed that should he view the argument put forward as providing any “reasonable argument” that the current application passed the Aerotel test, then it would be wrong to pursue the objection.  "However", Mrs Daveis emphasized,  "it is of course the case that that is not just any argument, but rather one which provides reason to believe that the test is met." She added at paragraph [27]:

 "I agree with the hearing officer’s conclusion that the question for me is whether or not there is such substantial doubt regarding this application, such that where an applicant makes a reasonable case that their invention is patentable then I am bound to find in their favour. I shall proceed on this basis."

Mrs Davies then proceeded to consider the application having regard to Vicom and the Aeritel/Symbian tests.

At paragraph [46] Mrs Davies compared the invention in Vicom to Adobe's application:

"As I see it, the contribution in Vicom is an improved image processing method and the Board of Appeal clearly felt that it provided the necessary technical contribution. In the present case however, the contribution is not the image processing method, rather it is a means for autonomously determining a recommended set of actions for an asset representation based on analysis of the asset representation (including a distance in vector space between the asset representation and the set of actions) and pre-processing the asset representation with said set of actions while recommending the actions to a user. The pre-processing of the asset representation, whether an image or not, results in editing the asset with suggested edits thus providing a more targeted recommendation. To my mind it is a very different contribution to that in Vicom. I do not consider that Vicom can be taken to mean that any invention involving the processing of an image necessarily makes a technical contribution and is patentable. That the Board of Appeal decided that the Vicom invention made a technical contribution does not mean the present invention does."

At [48] she agreed "with the examiner’s view that the contribution is not addressing any underlying problem. Rather the pre-processing amounts to circumvention of any later processing speed issues."  It followed that the contribution made by the invention was not a technical contribution and fell within excluded matter as a program for a computer. Applying similar reasoning, she held at paragraph [50] that "preprocessing an asset representation e.g. editing an image was not a technical process but a mathematical method.  Accordingly, she held at paragraph [51]:

"In my view there is a clear distinction between Vicom and the present invention as discussed above. To my mind the arguments put forward by Dr Baker do not create substantial doubt that the present application should be refused. In my view, merely the presence of a difference in interpretation of case law cannot be sufficient to create such a substantial doubt. The nature of the disagreement in this case does not create any doubt in my mind, it is my view that the present invention is not analogous to Vicom."

She concluded by dismissing Adobe's appeal.

Adobe has 28 days from 19 Sept 2019 in which to lodge a notice of appeal. It will be interesting to see whether it does so.

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