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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Reaux-Savonte v Comptroller-General of Patents, Designs and Trade Marks [2021] EWHC 78 (Ch) (22 January 2021) URL: https://www.bailii.org/ew/cases/EWHC/Ch/2021/78.html Cite as: [2021] EWHC 78 (Ch) |
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BUSINESS AND PROPERTY COURTS OF ENGLAND & WALES
CHANCERY APPEALS
Fetter Lane, London, EC4A 1NL |
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B e f o r e :
(Sitting as a Deputy Judge of the Chancery Division)
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MR COREY KAIZEN REAUX-SAVONTE | Appellant | |
- and – | ||
COMPTROLLER-GENERAL OF PATENTS, DESIGNS AND TRADE MARKS | Respondent |
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Dr Stuart Baran instructed by the Treasury Solicitor appeared for the Respondent
Hearing date 2 December 2020
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Crown Copyright ©
Covid-19 Protocol: This judgment was handed down by the judge remotely by circulation to the parties' representatives by email and release to BAILII. The date and time for hand-down is deemed to be 10:30 on 22 January 2021.
DANIEL ALEXANDER QC
INTRODUCTION
LAW
Substantive law relating to s.1(2) of the Act
"8…the leading cases governing the application of s1(2) are two decisions of the Court of Appeal. First Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7 and then Symbian Ltd v Comptroller General of Patents [2009] RPC 1. Aerotel sets out a four step test to be applied, which, as the Deputy Director put it in paragraph 9, Symbian explains was not intended to be a new departure in domestic law. The four steps are:
(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.
9. Symbian also explained that although in methodological terms the approach in the UK and the approach in the EPO may look different, in practice they reach the same result, at least usually. I mention this because it has been a feature of some of these appeals in the past to argue that the UK approach was out of step with the approach in the EPO. Mr Wood made clear that he was not making that submission. The appellant's case takes the UK law as it stands. The submission is that the error was in the application of that UK law to the facts of this case.
10. Also relevant are the signposts identified by Lewison J in AT&T Knowledge Ventures/CVON Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat) and reformulated in HTC v Apple [2013] EWCA 451 as follows:
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."
"45. How then is it to be determined whether an invention has made a technical contribution to the art? A number of points emerge from the decision in Symbian and the earlier authorities to which it refers. First, it is not possible to define a clear rule to determine whether or not a program is excluded, and each case must be determined on its own facts bearing in mind the guidance given by the Court of Appeal in Merrill Lynch and Gale and by the Boards of Appeal in Case T 0208/84 Vicom Systems Inc [1987] OJ EPO 14, [1987] 2 EPOR 74, Case T 06/83 IBM Corporation/Data processing network [1990] OJ EPO 5, [1990] EPOR 91 and Case T 115/85 IBM Corporation/Computer-related invention [1990] EPOR 107.
46. Second, the fact that improvements are made to the software programmed into the computer rather than hardware forming part of the computer does not make a difference. As I have said, the analysis must be carried out as a matter of substance not form.
47. Third, the exclusions operate cumulatively. So, for example, the invention in Gale related to a new way of calculating a square root of a number with the aid of a computer and Mr Gale sought to claim it as a ROM in which his program was stored. This was not permissible. The incorporation of the program in a ROM did not alter its nature: it was still a computer program (excluded matter) incorporating a mathematical method (also excluded matter). So also the invention in Macrossan related to a way of making company formation documents and Mr Macrossan sought to claim it as a method using a data processing system. This was not permissible either: it was a computer program (excluded matter) for carrying out a method for doing business (also excluded matter).
48. Fourth, it follows that it is helpful to ask: what does the invention contribute to the art as a matter of practical reality over and above the fact that it relates to a program for a computer? If the only contribution lies in excluded matter then it is not patentable.
49. Fifth, and conversely, it is also helpful to consider whether the invention may be regarded as solving a problem which is essentially technical, and that is so whether that problem lies inside or outside the computer. An invention which solves a technical problem within the computer will have a relevant technical effect in that it will make the computer, as a computer, an improved device, for example by increasing its speed. An invention which solves a technical problem outside the computer will also have a relevant technical effect, for example by controlling an improved technical process. In either case it will not be excluded by Art 52 as relating to a computer program as such."
"43. The second step—identify the contribution—is said to be more problematical. How do you assess the contribution? Mr Birss submits the test is workable—it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form—which is surely what the legislator intended".
44. Mr Birss added the words "or alleged contribution" in his formulation of the second step. That will do at the application stage—where the Office must generally perforce accept what the inventor says is his contribution. It cannot actually be conclusive, however. If an inventor claims a computer when programmed with his new program, it will not assist him if he alleges wrongly that he has invented the computer itself, even if he specifies all the detailed elements of a computer in his claim. In the end the test must be what contribution has actually been made, not what the inventor says he has made."
Identification of alleged contribution
Approach to appeal
"79. An experienced patent judge faced with a challenge to a patent on the ground of obviousness, and who has heard oral evidence including cross examination, carries out an evaluation of all the relevant factors, none of which alone is decisive but each of which must be weighed in the balance in reaching a conclusion. In Biogen Inc v Medeva plc [1997] RPC 1, 45, Lord Hoffmann emphasised the need for appellate caution in reversing the judge's evaluation of the facts where the application of a legal standard involved no question of principle but was simply a matter of degree. He held that it would be wrong to interfere with the judge's assessment if no question of principle were involved.
80. What is a question of principle in this context? An error of principle is not confined to an error as to the law but extends to certain types of error in the application of a legal standard to the facts in an evaluation of those facts. What is the nature of such an evaluative error? In this case we are not concerned with any challenge to the trial judge's conclusions of primary fact but with the correctness of the judge's evaluation of the facts which he has found, in which he weighs a number of different factors against each other. This evaluative process is often a matter of degree upon which different judges can legitimately differ and an appellate court ought not to interfere unless it is satisfied that the judge's conclusion is outside the bounds within which reasonable disagreement is possible….
81. Thus, in the absence of a legal error by the trial judge, which might be asking the wrong question, failing to take account of relevant matters, or taking into account irrelevant matters, the Court of Appeal would be justified in differing from a trial judge's assessment of obviousness if the appellate court were to reach the view that the judge's conclusion was outside the bounds within which reasonable disagreement is possible. It must be satisfied that the trial judge was wrong…"
THE DECISION
The invention and the claims
"4. The invention is described as follows. For the complexities of AI to evolve without human intervention, the structure of the AI must be designed in a way that allows the AI to pass on who it is and/or what it knows with as much ease as possible, using a "genome" that contains the genetic information of the AI. For the AI genome to be used in machines, three components are required: the genome itself, structured similar in nature to the structure of a human genome; the "Artificial Intelligence Genome Organizer", containing information about the genome; and "Artificial Intelligence Genome Controller", a program used for the automation of genome activity. Much like the human genome, the AI genome (AIG) structure contains parts within parts, for as many levels as is necessary, required and/or wanted. The AI genome is structured in a similar manner to the human genome, with Raw Data being equivalent to DNA, Segments being equivalent to genes, Code Blocks being equivalent to chromosomes and the Core being equivalent to the complete genome.
5. The application has four independent claims (1, 9, 17 and 20) filed on 28 December 2016, which read as follows:
1. An Artificial Intelligence Genome (AIG), wherein a modular, hierarchical structure of self-contained data within a system and/or machine contains and is used to give the AI in which it inhabits traits and/or abilities, without having direct control over the actions or operations of the Al but while being able to influence, in part or in full, one or more of the traits, abilities and/or functions of the Al.
9. An Artificial Intelligence Genome Organiser (AIGO), wherein a list of data pertaining to the design and genetic information of an Artificial Intelligence Genome (AIG) contains at least one or more of the following, including but not limited to: structural information; identifying information; traits and/or abilities.
17. An Artificial Intelligence Genome Controller (AIGC), wherein a program comprising one or more of the following: abilities and permissions to create and/or handle an Artificial Intelligence Genome (AIG); and abilities and permissions to create and/or handle an Artificial Intelligence Genome Organiser (AIGO); controls the automation of functions and tasks of or involving an AIG.
20. A computer implemented method, wherein an AI is able to evolve without human intervention through the use of an Artificial Intelligence Genome (AIG), an Artificial Intelligence Genome Organizer (AIGO) and an Artificial Intelligence Genome Controller (AIGC), the method comprising: storing traits and/or abilities within an AIG; storing genetic information about the genome within an AIGO; and using an AIGC to control and manipulate an AIG based on the genetic information of an AIGO."
The hearing officer's evaluation
"11. The first two steps in assessing whether a computer-implemented invention such as the one described in the application is patentable involve construing the claims and identifying the contribution made by the invention. The first step of construing the claims presented the examiner with some difficulty due to the lack of technical detail in the description. She eventually concluded that it was simply a particular way of structuring and organising data. Mr Reaux-Savonte assesses the contribution differently: he says that it is the creation of a functioning artificial genome, which allows for the production, reproduction, and evolution of artificial organisms, both digital and physical. It seems to me that there is very little difference in substance between these two positions, with Mr Reaux-Savonte's explanation of the contribution being set in the context of its eventual use and benefits, namely the production and evolution of future AI code. Having considered the application as a whole, I assess the contribution to be a particular way of structuring and organising data that may allow for the production and evolution of future AI code.
12 The next step is to determine whether the contribution is technical. The examiner has assessed the contribution with respect to each of the AT&T signposts and concluded that it is not technical. Mr Reaux-Savonte disagrees. I shall deal with each signpost in turn.
13 The first signpost suggests that a technical contribution can be found when the computer-implemented invention has an effect outside the computer. The examiner argues that the ordering and structuring of data does not have an external effect outside of the computer, while Mr Reaux-Savonte suggests that the invention enables the healing and reproduction of AI genomes in an analogous way to biological genes in nature, thereby allowing the creation of physical systems outside a computer. The application does not describe in any detail how the way of structuring and organising data leads directly to the creation of physical systems outside a computer, it merely suggests that replicating the structure of computer code in the same way that the building blocks of biological life are understood to be organised should lead to the same results in computer systems as observed in nature. It seems to me that the effect described by Mr Reaux-Savonte is purely theoretical and it is not the direct external effect envisaged by the first signpost.
14 The second signpost points to a technical effect when the contribution is made at the level of architecture of the computer or where the effect is produced irrespective of the data being processed or the applications being run. There was some discussion of this at the hearing, with Mr Reaux-Savonte rightly saying that this signpost relates to inventions in the operating system of a computer and also within the firmware of system components. Mr Reaux-Savonte says that the invention defines what type of system an artificial organism is, what it looks like, and what it is able to do; in other words, it can define the digital and physical architecture of an artificial organism. The examiner says that the invention is intrinsically related to the data being processed, i.e. the AI code. I agree with the examiner: the organisation and structuring of AI code does not operate at the architecture level, so no technical effect can be found here.
15 The third signpost suggests that a technical effect can be found when the invention results in the computer being made to operate in a new way. Mr Reaux-Savonte says that no computer has ever been defined, built, or operated based on an artificial genome before, nor has one ever reproduced or evolved. However, 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. I have been unable to find anything in the application that suggests that a computer system is being made to operate in a new way.
16 Mr Reaux-Savonte accepts that the fourth signpost is not relevant to his invention. His argument in relation to the fifth signpost (where technical problems are solved by technical solutions as opposed to being circumvented by non-technical workarounds), is that the problem of the impossibility of evolutionary artificial organisms is overcome simply by making it possible. I agree with the examiner that it is not clear how this is achieved, and there is no evidence that this problem, or indeed any other technical problem for that matter, has actually been overcome using the system described in the application."
GROUNDS OF APPEAL
"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."
DISCUSSION
(i) Characterisation of the invention
"9. The invention is a modular, autonomously self-modifying AI genome used to create digital and physical entities.
10. Present in an entity, it monitors and records the use of functions it provides to the entity.
11. 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.
12. The genome is able to upgrade, backup, and fix itself."
"MR. REAUX-SAVONTE: Okay, so the way the actual system was designed, this was actually made, in the actual application I make a direct comparison between the art of machine (inaudible) arm and the biological one just in case there was any misunderstanding. So a genome, a biological genome is essentially the code for a living organism and even biological genomes are split up into modular parts. So at the lowest level we just have DNA and a group of DNA create a gene, groups of genes make a chromosome, and use of chromosomes make a complete genome. The way I have done it in the invention is computers have raw code but then that code can also be made modular. It is in the same way as a biological genome makes it. So in the application, with the raw code we can make up segments which makes up a code and which makes up the genome core. I directly relate each one of those to the biological modular segments of an actual genome. So the computational genome is a modular hierarchy of computer code by designing a specific way to allow the easy extraction and recombination of segments to form new genomes because that has to be the way it is done. It cannot be code – it can but it is just much more complicated, but where things are modular it is easy just to split and then reassign, combined with something else. It follows the pattern of biological genomes, that is exactly how they work where any code section, whether it is a genome or a chromosome, can be combined in other related similar sections to form a new genome, which is what happens during a reproduction process.
THE HEARING OFFICER: Okay, so if I have understood that correctly, what you have said or what I have understood you to say is that your 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, I think you said, reproduction.
MR. REAUX-SAVONTE: Yes.
THE HEARING OFFICER: Okay. Is that a sort of fair characterisation of your invention?
MR. REAUX-SAVONTE: Yes.
THE HEARING OFFICER: So, I can take it that the contribution that you have made or that is provided by the invention is a hierarchical system of computer code that facilitates evolution over time.
MR. REAUX-SAVONTE: Yes."
(ii) The Signposts and the Manual of Patent Office Practice
First signpost
Second signpost
"All aspects of the design of a system are architectural level. Also, this invention being the thing which directly controls what a machine is able to do without the need of software at a level above or below it – in the case of robots, for example – axiomatically means it has to operate at an architectural level because it can only then be firmware."
Third signpost
Other points on the signposts
"Inventions involving artificial intelligence ("AI") are generally computer-implemented, so their assessment in respect of excluded matter will therefore mirror that of any computer-implemented invention. For example, if the invention uses conventional hardware (see 1.21.1) the assessment will focus on the process that the hardware is programmed to perform considering all the guidance found above in 1.35-1.39.2. Inventions involving AI may also be viewed as involving a mathematical method or algorithm so the guidance under 1.29-1.29.5 should also be considered. If an AI invention is directed to a specific technical process outside of a computer or if it forms part of the internal workings of a computer, then it will likely not be excluded. However, where an AI invention is directed to an excluded process (e.g. a business method) and there is nothing more to it, it will likely be excluded. Likewise, if an AI invention is directed to a non-specific purpose it may also fail by way of encompassing excluded processes (see 1.15 & 1.19). AI inventions or algorithms that provide an improvement in programming will likely be excluded following Gale unless they make a technical contribution (see e.g. 1.29.4)."
Other points
"Scientists in a fascinating field known as evolutionary robotics are trying to get machines to adapt to the world, and eventually to reproduce on their own, just like biological organisms. As in, someday two robots that are particularly well-adapted to a certain environment could combine their genes (OK, code) to produce a 3D-printed baby robot combining the strengths of its two parents. If the approach works, it could lead to robots that design themselves building beautifully adapted morphologies and behaviours that a human engineer could never dream up".
CONCLUSION
Order