High Court Judgment Highlights Importance of Professional Representation

23 February 2021

The recent case of Reaux-Savonte v Comptroller-General of Patents ([2021] EWHC 78 (Ch)) concerns an appeal from a decision of the Comptroller General, dated 19 May 2020, in which the Comptroller held that a patent application (GB1520019.9) should be refused because the application was excluded from patentability under section 1(2)(c) of the Patents Act 1977 as a program for a computer. This decision was upheld in the appeal proceedings by Daniel Alexander QC, sitting as a deputy judge of the High Court. 

The inventor and applicant, Mr Reaux-Savonte, took a substantial risk in prosecuting this application without professional representation. Not only was the patent refused, but a costs order was made, awarding the Comptroller £8,000 in costs, payable by Mr Reaux-Savonte, for the expenditure of public funds to handle the first instance and appeal proceedings ([2021] EWHC 270 (Ch)). 

The application itself purported to describe a way of mimicking the way biological systems evolve, using computer code in a hierarchical or modular arrangement that facilitates evolution over time so that the computer code is able to modify, adapt, change and improve over time in a similar way that biological code evolves. 

In arriving at the first instance decision, the Comptroller considered the actual contribution of the invention to be a particular way of organising and structuring data that may allow for the production and evolution of AI code. To assist in identifying any technical contributions, the Comptroller considered the signposts identified in AT&T Knowledge Ventures/CVON Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat) and reformulated in HTC v Apple [2013] EWCA 451. However, both the Comptroller and Mr Alexander held that none of these signposts were satisfied. 

Since no technical effect was identified, Mr Alexander upheld the Comptroller’s decision to refuse the application for being excluded from patentability. 

The result of the appeal proceedings was not particularly surprising, especially given that the patent application itself gave very few details about how the invention could actually be put into practice and could likely also have been refused on grounds of insufficiency. 

The lengths that the applicant went to without any professional representation are extraordinary. They included drafting and filing the application, corresponding with the UK patent office, representing himself at a hearing with the Comptroller, and representing himself in the appeal at the High Court. 

The UKIPO reminds every unrepresented applicant filing an application that only 4-6% of such patent applications reach grant. The chance of success is likely to be even lower where the application relates to computer implemented inventions, which in practice require the application to be drafted with knowledge of the UK’s attitude towards software based inventions. 

Patent applications filed by unrepresented applicants also place a higher burden on the UKIPO, which goes to additional lengths to guide unrepresented applicants through the patent prosecution process. The UKIPO also provides additional opportunities for unrepresented applicants to withdraw their application and receive a refund of the search fee. In the decision on costs in this case, the additional amount of work required by the UKIPO in view of the unrepresented applicant was used to justify the £8,000 figure. It was also noted by Mr Alexander in the appeal decision that the decision would have been shorter had the applicant been represented. Thus, it is not only in the applicant’s interest to be represented, but such representation also results in a more efficient operation of the patent system in the UK.

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