About the authors:
Parminder Lally is a senior associate at Appleyard Lees IP LLP. Parminder specialises in drafting and prosecuting patent applications for computer-implemented inventions. She has built a substantial reputation working with high-growth start-ups, spin-outs and SMEs in Cambridge, and has in-house experience.
Debora Dorn is a trainee patent attorney at Appleyard Lees IP LLP. A background in physics, mathematics and machine learning helps Debora understand new innovations and protect client’s intellectual property. Debora has broad insight into various areas of physics and mathematics. She has a particular interest in machine learning and its various applications – from health care to self-driving cars.
Some estimates suggest that the number of virtual voice assistants might soon equal the number of people on the planet. Most people who have used a digital assistant though, know that they are great at some tasks but will probably fail if you ask them to do anything which they have not been programmed to do.
In this article, we look at a patent application for virtual assistant technology, and provide advice on whether this sort of software-based innovation is patentable.
Background to GB1714456.9 (“Enhancing functionalities of virtual assistants and dialog systems via plugin marketplace”)
How to tailor and improve the functions of a virtual assistant is the subject of UK patent application number GB1714456.9, filed in the UK. The application is a UK national phase application, that stems from a PCT application originally filed in the US in 2016, and claims priority to another US application. After the PCT application was filed, it appears that the applicant changed to Google.
The application describes how it is useful to be able to update the functionalities of a dialogue system, which could be a chatbot or voice-based assistant. The original PCT application from which this UK application stems, was searched by the USPTO during the International phase. The USPTO considered some claims to be novel, some to lack novelty, and all the claims to lack inventiveness. Generally speaking, the International search report is non-binding, and many Patent Offices will perform their own search and examination during the national phase. Thus, after the PCT application was entered into the UK national phase, the UK IPO performed their own search and examination. The UK IPO identified new prior art and considered the claims to lack novelty and inventiveness in view of the new prior art and the prior art identified in the International search report. This is completely normal – Patent Offices routinely identify new prior art, and because the law on what is considered patentable and what is considered inventive varies a little across jurisdictions, Patent Offices may raise different objections to the same invention. Your patent attorney can help you to formulate a patent filing strategy and can guide you on what to do if different objections are being raised against your patent applications in different jurisdictions.
However, more significantly on this case, the UK IPO stated that an inherent patentability objection might be raised against at least some of the claims. The UK IPO considered some of the claims might relate to a computer program and/or a method for doing business. The reason the UK IPO only said ‘might’ at this stage was because they deferred full analysis until the novelty and inventiveness objections had been dealt with, as the claims might be amended in such a way that inherent patentability is no longer an issue.
In the second Examination Report, the UK IPO formalised their inherent patentability objection, as they were not persuaded by the Applicant’s arguments. The UK IPO remained unconvinced when the Applicant replied to the second Examination Report, and thus, the UK IPO referred the matter to a hearing officer. The hearing allows patent applicants to explain their case to the hearing officer, who is trained to be independent and to look at all sides of the arguments. They then make a decision about the case.
Why was GB1714456.9 considered to relate to excluded subject matter?
The patent application relates to a way for users to customise the functionalities of dialogue systems by adding plugins or extensions obtained from an online marketplace. A dialogue system typically performs natural language processing (NLP) to understand a user and generate an appropriate response to the user’s query. Usually, the NLP methods of virtual assistants are very good at certain tasks, such as looking up information, but perform poorly at others – something anyone who has ever used a virtual assistant will be aware of. Using plugins to enhance performance has the advantage that the virtual assistant can be customised to perform tasks that it could not do before – the plugins allow you to add different functionalities to your virtual assistant. The virtual assistant then only has to decide whether to use its own core functionalities or one of the plugins.
Generally speaking, patents are granted for inventions in all fields of technology that are new, not obvious and industrially applicable. In addition to this, the UK Patents Act includes a list of things which are not permitted to be patented. This includes computer programs ‘as such’ – meaning that an invention that only relates to software without a further technical effect is not patentable.
In the UK, there is a long-established legal test to determine whether a patent application falls solely within excluded subject matter. This test requires you to first identify the actual contribution of the invention claimed in your patent application, which can also be phrased as “What has the inventor really added to human knowledge” (Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1  RPC 7). Next, you need to check whether the actual contribution falls solely within excluded subject matter or is technical in nature.
Identifying whether a contribution is technical in nature can be tricky, which is why the law provides some signposts that indicate whether a computer-implemented invention, i.e. a patent application that is directed to software, is excluded from patentability or not (AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents  EWHC 343 (Pat)). These five signposts are:
- Whether the claimed technical effect of the invention also has a technical effect on a process outside of a computer, for example, if the computer controls an improved technical process. For example, computer-controlled car braking would be patentable, since the braking system is external to the computer and the software used in this case has an effect on the braking system. In this case, neither the hearing officer nor the applicant thought that this signpost was applicable , because the invention relates to processes that happen entirely on a computer.
- Whether the claimed technical effect operates at the level of the architecture of the computer, which means that it does not matter which data the computer is processing or which applications it is running. In this case, however, the claimed invention is concerned with processing very specific data, and again, neither the applicant nor the hearing officer argued that this signpost was applicable.
- Whether the claimed technical effect means that the computer operates in a new way. This doesn’t appear to be relevant here, since the focus is on plugins for virtual assistant devices and not on changing how a computer operates.
- Whether the claimed technical effect improves how the computer runs, for example, more efficiently or effectively – in essence creating a better computer. In this case, the applicant argued that using plugins does result in the computer running more efficiently and effectively because the plugins improve the user interface and therefore user interaction. That is to say, the applicant argued that when the dialogue system is able to understand the user’s instructions better, that the dialogue system runs more efficiently. By improving the dialogue system’s ability to understand user inputs, the dialogue system is able to provide improved outputs. However, the hearing officer disagreed and believed that the problem that is overcome is not about better understanding the user but about adding functions to and customising dialogue systems. The hearing officer argued that the invention’s contribution does not fulfil the requirements of this particular signpost.
- Whether the claimed technical effect actually overcomes the perceived problem instead of merely circumventing it. Again, the hearing officer argued that the problem that is overcome is not technical – the invention does not overcome the problem of better understanding the user but just relates to customising a dialogue system. Hence, the hearing officer held that this signpost does not apply either.
As a result, the hearing officer considers that the claimed invention is excluded from patentability, as it relates to a computer program ‘as such’. Consequently, the patent process has terminated and the application has been refused.
Is this subject matter excluded in other countries?
The above-described test is specific to UK patent law. Not all countries assess computer-implemented inventions in the same way. To illustrate this, let’s consider whether the patentee has been able to get this invention patented in other countries.
There is a corresponding US patent application which has been granted. The claims of US patent number US10,311,492 are very similar to the UK claims which were assessed and refused at the hearing.. However, the US Examiner raised a similar objection regarding patentability in the first US office action, stating that the invention merely relates to an ‘abstract idea’, which is not patentable under US patent law. In response to this, the applicant’s representatives in the US argued that use of the plugins reduced the use of system resources in general, and also the amount of network traffic. Similar arguments were made in the UK but they were not considered persuasive because the UK IPO stated that such benefits were not described in the application as filed.
As explained above, the UK test for whether or not an invention is patentable has been determined by case law. The same is true for the US, and therefore the answer to whether or not a computer-implemented invention is patentable depends on jurisdiction. It can be useful to frame the invention in a way that it appears to relate to, or has advantages that link to, one or more of the above-mentioned signposts. Thus, including statements in the patent application at the drafting stage that explain how the computer-implemented invention may result in an improved computer or has an impact on something technical outside of the computer may be helpful during prosecution of the application. Since it is not possible to add any matter to a patent application once it has been filed, it is important for jurisdictions like the UK IPO, to add these statements into the description when drafting an application.
Of course, sometimes, during the patent drafting stage we will determine that none of the signposts are satisfied. In this case, we may advise you against filing a patent application or of the risks associated with proceeding. Deciding what to do next will depend on your reasons for wanting to file a patent application. If you are developing computer-implemented inventions or software and would like to discuss how you can protect your innovation, get in touch with us. We can advise you on whether the patent route is suitable for your software and your business goals.