UK IPO decisions

By David Pearce (Barker Brettell LLP)

Patent decisions of the comptroller can be found on the IPO website (www.ipo.gov.uk) via http://bit.ly/ipodecisions, and opinions issued under section 74A via http://bit.ly/opinion-requests

Patentability: Section 1(2)

Luther Systems

BL O/957/22

3 November 2022

The application related to a system for negotiating and executing financial derivative contracts on a distributed blockchain ledger. The examiner objected that the claimed invention was excluded as a business method and a computer program because there was no technical effect outside of the computer system on which the invention was implemented. The applicant argued that the contribution provided by the invention involved how to improve the management computer for an interest rate swap process.

The hearing officer, taking the claimed invention as a whole, considered that the contribution was a computer-implemented method of managing the use of the blockchain to negotiate an interest rate swap using a management computer.

The fundamental operation of the blockchain was not considered to be part of the contribution, given that blockchains were well known. The contribution therefore lay in using the management of an interest rate swap. Referring to Merrill Lynch’s Application [1989] RPC 561, the hearing officer considered that, if the end result was a business method, then the application was a method of doing business and the manner by which it was done would not help it. The claimed invention was a business method implemented on a computer, which must be excluded as a method of doing business. The applicant argued that there were technical features involved in the system relying on a network of computers that provided benefits including better security, increased transaction settlement speed and reduced costs. The hearing officer, however, considered that these did not change the assessment, since the contribution represented a better system to administer interest rate swaps. The application was refused.

Motorola Solutions Inc

BL O/961/22

4 November 2022

The application related to a system for maintaining a chain of custody for assets offloaded from a portable electronic device, in which each asset recorded on an asset manifest was associated with a unique identifier and a digital signature, the assets being offloaded from the asset manifest dependent on a valid digital signature being obtained.

The examiner objected that the claimed invention was excluded for being a computer program and a business method. The applicant and examiner disagreed on the contribution, which was defined narrowly by the examiner in terms of the series of steps involved in maintaining the chain of custody, while the applicant defined the contribution more broadly as an improvement in the operation of a portable electronic device in offloading digital assets in a way that ensured a valid chain of custody. The hearing officer disagreed with both, considering instead that the contribution required incorporation of the step of offloading a file, together with the various steps leading up to this. The comparison of hashes and a digital signature solved a potential problem of multiple or incorrectly uploaded assets in a system by validating an upload before a file was deleted.

The hearing officer considered that the case was similar to that in Lantana [2013] EWHC 2673, but there was a qualitative difference in that the verification process took the claimed invention beyond simply identifying and transferring a file as was the case in Lantana. The application was consequently found not to be excluded and was remitted to the examiner for further consideration.

BL O/1115/22

16 December 2022

The application related to a method of generating user-defined or user-customised apps (software applications) based on existing apps, in which existing apps were downloaded, elements of the apps extracted and then bundled to form a new app customised to user specifications. The examiner objected that the claimed invention was excluded under section 1(2) and refused to carry out a search. The hearing officer considered that any contribution made by the claimed invention related to a computer-implemented method for generating customised apps based on a plurality of existing apps, which enabled unskilled users to create customised apps.

On considering whether any of the AT&T/CVON signposts applied, the hearing officer considered that:

1. the invention worked only within a single computer, the result of which remained within the executing device;

2. the invention related only to the functioning of apps and not the underlying computer itself;

3. the computer did not operate in a new way;

4. there was no increase in speed or reliability of the computer; and

5. the invention did not propose to solve a particular technical problem.

None of the signposts were therefore considered to apply. Taken as a whole, the claimed invention related only to a computer program and was therefore excluded from patentability. The application was refused.

Mitsubishi Electric Corporation

BL O/1113/22

16 December 2022

The application related to a computer program for operating a smart contract on a blockchain, in which an exchange was performed between first and second users via an exchange floor. The examiner objected that the subject matter of the invention was excluded under section 1(2) for being a method of doing business and a program for a computer as such.

The applicant argued that the problem the invention solved related to implementing exchange floor exchanges that were resistant to denial-of-service (‘DOS’) attacks. The examiner noted that it was not clear how the invention necessarily prevented such attacks and the description provided no details on this feature, nor was it clear to what extent the invention restricted or was more secure against such attacks. The hearing officer agreed with the examiner that the specification did not clearly set out how the invention necessarily prevented DOS attacks. The contribution was nevertheless determined to relate to a program that ensured each exchange interaction between two devices would be perfected in a system with reduced vulnerability to DOS attacks, in which a smart contract issued a virtual bond to the second user and paid back a currency amount when currency from the first user was input.

The hearing officer, considering the AT&T/CVON signposts, determined that the computer of the invention was not the arrangement of physical devices as argued by the applicant but was in a system of terminals, outside of which there was no technical effect. The first signpost was not therefore met. The fifth signpost was also considered, but the hearing officer found that the problem being addressed did not lie outside the realm of a business method, so the problem to be solved was not technical in nature. The contribution was therefore determined to be a program for a computer as such. The application was refused.

Jayvinder Singh A/L Surjit Singh

BL O/1101/22

14 December 2022

The application related to a system for matching providers of security services, or chauffer services, with users requesting such services, in which a user module, a candidate module and an admin module running on different computing devices would communicate with each other over a communications network.

The examiner objected that the claimed invention was excluded for being a computer program and a business method as such, refusing to carry out a search. The applicant argued that the claimed invention provided a technical contribution because it did not relate to a single program running on a single computer but to three different software applications running on three different computers.

The hearing officer, referring to Lantana [2013] EWHC 2673 (Pat), considered that an invention which would be excluded under section 1(2), if implemented on a single computer, was not saved from exclusion merely by implementing the invention across multiple networked computers. The claimed invention was considered to be excluded as a method of doing business as such. Since the external process enacted by the invention was a business method, the software applications did not provide an effect on a technical process carried on outside of the computers. The claimed invention was therefore also excluded as a computer program as such. The application was refused.

Inventive step: Section 3

Sistemic Scotland Limited

BL O/980/22

9 November 2022

The application related to a method of testing for undifferentiated pluripotent stem cells (‘PSCs’) in a PSC-derived cell population for use in cell therapy, the method using a quantitative PCR test to determine the presence of two or more micro-RNAs (miRNAs) from a cluster of four miRNAs indicative of the PSCs.

The examiner objected that the claimed invention did not involve an inventive step because the skilled person would be aware of the need to minimise the presence of undifferentiated PSCs in a cell therapy product and of specific tests to detect markers such as the claimed panel of four miRNAs. The applicant argued that the skilled person would be a biologist concerned with cell therapy treatments, whereas the examiner considered that the skilled person would be concerned more specifically with cell therapy treatments derived from PSCs. The hearing officer, referring to Schlumberger Holdings v Electromagnetic Geoservices [2010] RPC 33, considered whether the notional team making up the skilled person would include both a molecular biologist involved with differentiation of PSCs and a biologist concerned with cell therapy treatments with a knowledge of PSC cells. The marriage of both would indeed be obvious, given that the problem the applicant was trying to solve was contamination of cell therapy products derived from PSCs by residual undifferentiated PSCs.

The skilled team would know that identification and removal of residual undifferentiated PSCs was required before cells could be used in therapy because failure to do so could result in teratoma or neoplasm formation. The skilled team would also be aware of methods suitable for the identification of markers on contaminating cells that could be applied to miRNAs, which were known to be present in PSCs.

The inventive concept was defined as a method of determining the presence of PSCs by assaying for specific miRNAs. The difference between the inventive concept and the closest prior art document was in the use of specified miRNAs to detect the PSCs. The question was therefore whether the skilled team would consider these miRNAs as candidates for identification of the PSCs. Such miRNAs were described in other cited documents. Referring to Pfizer’s Patent [2001] FSR 16, the hearing officer noted that the documents were all from the same technical field and there was no incompatibility. The specific miRNA cluster was considered by the hearing officer to be ‘lying in the road’ (referring to Genentech’s Patent [1989] RPC 147) because it was a well-known marker for pluripotency. The claimed invention was consequently found to lack an inventive step. The application was refused.

Peter J Mollick

BL O/1082/22

8 December 2022

The application related to a composition comprising the herb thyme for use in treatment of Covid-19. The examiner objected that the claimed medical-use invention lacked sufficiency and support in the application because the specification lacked material enabling the skilled person to determine that the medicament treated

the condition, pure assertion

being insufficient.

The applicant argued for support based on his personal experience of an assumed case of Covid-19 that was prompted by consumption of ice cream, which he treated with thyme and subsequently recovered from. The hearing officer, considering the question of sufficiency of medicaluse claims, referred to the UK Supreme Court’s decision in Warner-Lambert [2018] UKSC 56, in which the relationship between plausibility and sufficiency was considered. The hearing officer noted that a second medical-use claim could not be supported by mere assertion but must derive support from the application as originally filed, confirmed in Prendergast’s Application [2000] RPC 446. The applicant argued that, because the application disclosed some experimental evidence, the claim was more than a mere assertion and there was adequate material to satisfy the requirement for support. The hearing officer, however, considered that more than just some evidence was required. What was required was, according to Prendergast’s Application, enough material to enable the skilled person to say that the medicament did treat the condition. The threshold required was more than the mere provision of some evidence because this had to be viewed and interpreted through the eyes of the skilled person. The evidence of efficacy did not, however, require the results of a clinical trial and could be relatively rudimentary.

Based on the specification at the priority date of April 2020, the hearing officer considered that the skilled person would not accept that the illness the applicant suffered was likely to be Covid-19, since no test was done and no confirmed cases had been reported at the relevant time in the applicant’s location. The skilled person could not therefore be sure based on the application that the illness was Covid-19. It was not therefore necessary to consider whether there was adequate evidence that the consumption of thyme resulted in recovery. The hearing officer concluded that the specification did not provide enough material to enable the skilled person to come to the view that thyme actually treated Covid-19. The application did not therefore meet the requirement for support under section 14(3) and was refused.