New approach to software inventions put to the test at the UKIPO

The Supreme Court’s decision in Emotional Perception AI (EPAI) brought much-awaited clarity on how software inventions should be examined at the UKIPO. The decision brought the UK approach into alignment with that taken by the EPO, in which eligibility and substantive patentability are considered separately, and features which do not have technical character are filtered out when assessing inventive step. A recent Hearing at the UKIPO, O/0673/26, has put this new approach into practice and shows that whilst eligibility may be simple to decide, the determination of which features have technical character may be harder to resolve. 

The application in question relates to a virtual dial gauge for marine navigation which displays a measured value, such as wind speed, to a user and does not display unnecessary gauge information. Claim 1 defines how a first segment of a gauge, including the measured value, is displayed to the user. Claim 1 further defines how upon the measured value reaching a second value, the display pans to a second segment of the gauge according to a predetermined time delay utilizing hysteresis. Claim 1 was considered to be a computer-implemented method during examination and was initially held to lack inventive step under the Aerotel test. Following the Supreme Court’s Decision in EPAI, the Examiner issued a further examination report using the new EPAI approach but maintained that claim 1 lacked inventive step. On this basis, the matter was considered by the Hearing Officer.

In the Hearing, the Hearing Officer examined claim 1 based on what they considered to be the EPAI approach, which is to:

1. Properly construe the claim; 
2. Determine whether the claim involves the use of any hardware, also known as the “any hardware" test; 
3. Perform an intermediate step: determine whether a feature contributes to the technical character of the invention as a whole and filter out features which do not contribute to the technical character of the invention viewed as a whole; and
4. Consider novelty and inventive step based on matter cited as forming part of the “state of the art”. Features which are filtered out at the intermediate step are not considered for inventive step.

After considering construction at step (1), the Hearing officer straightforwardly agreed with the Examiner that claim 1, which includes hardware features such as a “logic device”, passed the “any hardware” test at step (2). The consideration of the intermediate step (3) was much more nuanced. The Hearing Officer had a more favourable view of the technical character of claim 1 compared to that of the Examiner. In contrast to the Examiner, who considered many features associated with the dial segments to relate to the presentation of information and thus lack technical character, the Hearing Officer asserted that they do have technical character because they relate to the sensed data which is used for the technical purpose of displaying navigation information. Unlike the Examiner, the Hearing officer considered the “predetermined time delay utilizing hysteresis” to have technical character but agreed that switching between first and second segments by “panning” lacked technical character, although he did acknowledge he may have erred on this point. The Hearing Officer did not go as far as to give a verdict on inventive step and has remitted the application back to the Examiner to decide.

The Hearing Officer’s deliberation highlights the challenges in deciding if a feature has technical character. Whilst “technical character” is elaborated in the EPC Guidelines and clarified in the recent Decision G1/19 for software inventions, the determination is not always clear cut. It is a crucial step when seeking protection for software inventions, however, since the inventive step assessment hinges on the features considered to possess technical character. At Marks & Clerk, we are well positioned to help you navigate these evolving patentability requirements to help you protect your software inventions.

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