Posted on 25/9/2018

Landmark Graphics Corporation – An insight into the UKIPO’s approach to excluded matter and an application of the Aerotel test

We consider how the patentability of computer implemented inventions are determined.

Earlier this year, Landmark Graphics Corporation (LGC) appealed the decision of the UKIPO examiner that seven of their patent applications claimed subject matter that is excluded from patentabilityBL O/155/18 is one of a set of issued decisions which can provide a useful insight into the UKIPO’s current approach to excluded matter.

LGC were the proprietor of seven patent applications relating to computer-implemented methods of working with models of subterranean geology and for modifying or improving various aspects of the visual representation of subsurface formations.  The UKIPO examiner concluded that in the case of each application the invention was excluded from patentability as either a computer program or a mathematical method.

In the UK, patent protection may be afforded to an invention that has novel and inventive features, provided that these features make a “technical contribution” to the state of the art, and that the technical contribution does not fall solely within the exclusions from patentability. Following the guidance of Aerotel [2006], the UKIPO has adopted the following four-step test for determining the technical contribution and its nature:

  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.

LGC argued that the technical contributions of their inventions had been interpreted too narrowly by the examiner. In the particular case of patent application GB1600696.7, the examiner considered the technical contribution to be “a computer program for implementing the mathematical method of gridding a point cloud”. It was under this formulation of the technical contribution that the examiner inevitably concluded that the invention was excluded from patentability.

The Hearing Officer deemed that there was more to the technical contribution than the above, and reformulated the technical contribution to be “a computer-implemented method for creating a representation of a geological structure which relies upon a particular method of gridding a point cloud”. It was held that such a contribution was neither a computer program as such nor a mathematical method as such, with similarities drawn with the decision of Vicom [1987]. LGC were aided in their argument that the data being represented in their model was derived from a physical object in the form of a geological structure, and that said data was not related to excluded subject matter. All of the applications were referred back to the examiner.

This decision illustrates that for computer-implemented inventions to be considered to fall outside the excluded areas it can be sufficient to determine whether the general task performed by the computer program is external to the computer and does not itself fall within one of the excluded. For other computer implemented inventions, where the task performed by the program is limited entirely to what is going on inside the computer, an invention can be patentable if it solves a technical problem relating to the running of computers generally.

If you have a computer-implemented invention and would like advice on whether patent protection can be obtained, or if you require further information regarding patent law, please get in touch to speak to one of our attorneys.

Wilson Gunn