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Software patents and expert systems – what do you recommend?


The case law on patentability of computer programs and business methods has been reasonably settled in the UK and Europe for a couple of years. The world moves on, though, and it is the nature of inventors that they invent new methods and systems that challenge the status quo. One such area of endeavour is in relation to recommendation systems.

Recommendation systems (aka expert systems) now surround our daily lives. Shopping sites suggest items we would like to buy based on prior purchases of our own or of others. Playlists are automatically generated and deliver multimedia we may like. Social media services ‘know’ enough about us to deliver exactly what we want all of the time. Only they don’t get it right, all of the time. Perhaps not even the majority of the time. This is where our friends the inventors come in and help.

Inventions relating to recommendation systems often involve an insight as to what data is available and how that data may be used. Such insights are really quite clever. Spotting potential correlations between data underlying something on the one hand, and how that data may be used to deliver something useful to us on the other involves a combination of skills: knowledge of the relevant field, and understanding of data and maths. Often lots of maths.

Is this field patentable? The UK Intellectual Property Office (UK IPO) analyses such inventions by asking what the inventor’s work has contributed to the world at large and then asking whether that contribution is in one of the excluded fields (software, mathematical methods and others). The European Patent Office, by contrast, looks only at features that are not in such excluded fields when assessing whether there is a sufficient inventive step. The two approaches involve looking for technical features and often end at the same result, but not always, and not, in particular, for expert systems.

The UK IPO approach is friendlier in some respects. If an invention is deemed to pass the hurdle of not being excluded, then the discussion of inventive merit considers the invention as a whole and often this test is passed too. It is less friendly in others. If an invention is deemed to be excluded there is a low chance of successfully arguing to the contrary. The European Patent Office allows argument of inventive step, at least, but this can be just as problematic. All of that brilliant maths is not necessarily going to be allowed to be considered as contributing to the inventive step.

Recommendations For Successful Patenting Of Expert System Inventions

First, identify some real world examples of how the invention may be used beyond the example you first thought of. Can it be used to control something else? This can help frame the invention appropriately and make the contribution described more technical in nature. Second, be sure to avoid relying too heavily on jargon from the relevant field. This can unwittingly mask a lack of technical nature. Strip away the jargon – it is what the patent offices will do. Last, carefully consider where to file your application. In some cases, it may be appropriate to file in the UK, Europe and other countries to hedge your bets.

I am sure, one day, a recommendation system will be developed to recommend whether to file a patent application. Whether such a system would be patentable itself is, for now at least, for humans to judge.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

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