In the recent case of Autonomy Corporation Limited v The Comptroller General of Patents, Trade Marks and Designs [2008] EWHC 146 (Pat), the Comptroller successfully appealed against an application for a UK patent on the ground that it consisted of a computer program “as such” and a presentation of information.

On 11 February 2005, Autonomy Corporation Limited (Autonomy) filed an application for a UK patent relating to a method for improving the interface between a user and a computer. This improved interface was established by analysing the text in an active window, executing a search on the user’s computer, the internet, or other sources based on the content of that text and displaying an icon that leads to a list of the generated links.

The Patent Examiner rejected the application on the ground that it related to a program for a computer and the presentation of information, both of which are excluded from patentability under Section 1(2) of the UK Patents Act 1977. Because the Examiner maintained the objections after a revision of the claims, Autonomy requested a hearing. The Hearing Officer upheld the objection, as far as the computer program was concerned, and set aside the objections against the presentation of information. Autonomy and the Comptroller appealed to the Patents Court against the rejection of the application and the Comptroller appealed against the fact that the Hearing Officer set aside the objection relating to the presentation of information.

Referring to the Court of Appeal’s judgment in Aerotel, [2007] RPC 7, Lewison J. paid no further attention to the UK Patents Act and decided the matter based on Article 52 of the European Patent Convention.

Although Article 52(2)(c) excludes computer programs from patentability, a myriad of UK cases provide the possibility of patenting a computer program, if, among other requirements, it is not a computer program “as such”. To determine whether Autonomy’s method comprised a computer program “as such”, or patentable subject matter, Lewison J. followed the four steps as set out in the Aerotel judgment.

The only difficulty that arose in the first step, construing the claim, was brought up by Autonomy, which stated that the claim extended beyond computers to, for example, televisions. Taking the patent’s specification into account, Lewison J. concluded that, although not explicitly stated, the claim was entirely concerned with the use of computers. In the next step, the actual contribution of the claim was identified as being an automatic analysis of the text in an active window and the generating of a list of related links that can be accessed by means of an icon for each category of links. In the third step, Lewison J. held that both the means of generating the links and the icon to access these links do not exist independently of the computer, do not require new hardware or a new combination thereof and do not lead to a better computer. Therefore, they are computer programs “as such”, which are excluded by Article 52(2) EPC. Furthermore, Lewison J. held that the convenient positioning of the icon did consist of anything more or other than the presentation of information. Given the outcome of the third question, the fourth question, whether the contribution is technical, did not need to be answered and the appeal was dismissed accordingly.