O/271/20 – Is the contribution of a claim defined by the whole subject-matter claimed or just the new bit?

Although the Covid-19 crisis has reduced the numbers of decisions published by the UK IPO in 2020 there are still some interesting cases for review. In this patent application, Lenovo sought review of the examiner’s decision that the claims comprised excluded subject matter as a program for a computer and/or a method for doing business, as such.

Lenovo were ultimately unsuccessful, the hearing officer determining that the contribution was “determining one or more content elements that are eligible for compression, along with their compression rate, based on the financial storage cost for the content elements, wherein the storage cost includes power consumption costs and hardware costs.” The hearing officer decided that, since there is no improvement to the actual compression technique used there was no technical contribution.

This is not however where the interesting points lay in the decision.

In arguing that the claims were patentable, Lenovo asserted that it is the whole subject-matter claimed and not the inventive step that should be considered as the contribution and that the position of the office was inconsistent with the Patents Act. It was noted that the position of Lenovo was that “as long as there is a technical contribution in the claims then there is a technical contribution in the invention, notwithstanding that the technical element might be known from the prior art.” The hearing officer interpreted Lenovo’s position to be that “there should be no difference between the contribution and the claim [and] that the contribution should not be only what the claim has provided to human knowledge”.

In dismissing this argument the hearing officer noted that the contribution is all-important and noted that identifying the contribution is an exercise in judgment involving the problem said to be solved, how the invention works and what its advantages are; essentially, what it is the inventor has really added to human knowledge, looking at substance, not form. It was concluded that Lenovo’s arguments would result in a matter of form over substance.

The approach of both Lenovo and the officer here contrast with the EPO approach to a similar challenge where the EPO might consider a purpose to be technical (i.e. the whole contribution) but would then rule that the invention is not inventive as the technical steps are obvious (ignoring those steps they consider non-technical).

It will be interesting to see if Lenovo appeals this decision and puts these arguments before the courts. They have been successful in doing so recently.

On the specifics of this application, Lenovo argued that the contribution was best characterised as an apparatus, method and product which provides a compression algorithm for a computer. Although they acknowledged that how to compress is known and that no new compression technique itself is included, Lenovo asserted that because the invention provides a new way of determining what to compress it provides a new algorithm for compression overall. The hearing officer disagreed.

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