An improved diagnostic tool isn’t necessarily a technical contribution

The UK IPO’s recent refusal of an application by Ventana Medical Systems sheds some light on the nuanced question of what is considered to constitute a technical contribution when applying the Aerotel test for excluded subject matter.

Ventana had filed a patent application describing a way of presenting digital images of a microscope slide at various levels of detail to a pathologist. The alleged invention was a new arrangement of these images on a screen, which allowed the pathologist to study the images more efficiently and hence perform diagnoses more quickly.

In the course of examination of Ventana’s application, its claims were objected to as relating to no more than the presentation of information and a computer program as such. The applicant was not able to convince the examiner to the contrary and the case was brought to a hearing.

The hearing officer applied the Aerotel test to assess whether the claimed invention was excluded from patentability. The contribution was identified as “an improved way of displaying virtual slides in a virtual microscope”, and the hearing officer acknowledged that “the improved display allows a pathologist to work more efficiently”.

The hearing officer and the attorney representing Ventana broadly agreed that the contribution lay in the fact that the claimed system would allow a pathologist to work more efficiently. Critically, however, the hearing officer remarked that the contribution was not “a new clinical insight or an improved diagnostic method”. The invention did not involve the use of any new kind of medical data nor did it lead to different diagnoses; the contribution lay solely in the way that the information was presented. This pointed towards the conclusion that the invention was indeed in the domain of excluded subject matter.

Ventana’s attorney suggested that the issues at hand were similar to those considered in the well-known Halliburton judgement [1]. In Halliburton, a computer-implemented method for designing drill bits was held to be patentable under the Aerotel test for the reason that designing drill bits is a technical task, and finding a better way of doing so constituted a technical problem.

Drawing an analogy between Halliburton and Ventana’s application, the attorney argued that providing a better virtual microscope that enabled a pathologist to more efficiently make a diagnosis was a technical problem, and that this problem was solved by the claimed invention. The hearing officer rejected this reasoning on the grounds that in Halliburton the contribution lay in the method of designing drill bits, whereas in Ventana’s claimed invention, the contribution lay solely in the way that the images were displayed and not in the technical activity of carrying out a diagnosis.

While the hearing officer recognised that Ventana’s system provided a concrete benefit to a pathologist carrying out a diagnosis, he took the view that this did not confer any technical character on the invention. The application was therefore refused.

The fate of Ventana’s application seems to have been sealed from the moment that the contribution was identified as an improved way of displaying microscope slides; all of the applicant’s subsequent arguments on the advantages of the invention could not move the examiner away from the position that this contribution lay solely in the presentation of information. Given the subtlety of the point on which the application fell down, it is not clear that this outcome could have been predicted with any confidence before the application was filed. Ventana’s experience is nevertheless a potent example of the potentially fatal nature of excluded subject matter objections at the UK IPO.

[1] http://www.eplawpatentblog.com/2011/October/halliburton%20judgment-1.pdf