Could Hewlett Packard patent a computerised method for processing images and categorising features of them into a searchable database? Perhaps surprisingly, and maybe worryingly for big brands with large image banks, the UK Intellectual Property Office has said HP can. Jonathan Mayner reports.
Topic: Intellectual property
Who: Hewlett-Packard Development Company; Intellectual Property Office
When: 21 December 2011
Law stated as at: 31 January 2012
A hearing officer at the Intellectual Property Office ("IPO") has decided that an invention by Hewlett-Packard ("HP") which automatically catalogues and facilitates retrieval of images is patentable, contrary to the IPO examiner's opinion. The IPO hearing was not concerned with particular commercial applications for the claimed invention, however it can be surmised that such an invention would be of particular interest to marketing and media businesses whose activities require them to manage large collections of images.
The invention (described on the patent application as "Image management through lexical representations") relates to computer software which scans images and automatically catalogues them by assigning words denoting the contents of the image. A database of the images can then be interrogated by use of those words to search for images which match the search criteria.
The Patents Act
Section 1(2) of the Patents Act 1977 (the "Act") states that certain things, are not patentable inventions (often referred to as "excluded matter") for the purposes of the Act:
"It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of:
(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) the presentation of information;
but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such."
This provision makes it difficult to obtain patent protection for software and software-related inventions, but not impossible. The case of Aerotel Limited v Telco Holdings and Macrossan's Application  EWCA Civ 1371 (as clarified by Symbian Limited's Application  EWCA Civ 1066) established a four step test for the assessment of excluded matter:
1. Properly construe the claim made in respect of the invention;
2. Identify the actual contribution the claimed invention makes to the state of the art;
3. Consider whether that contribution is solely excluded matter or is in some way technical; and
4. Consider whether any technical contribution is novel and inventive (i.e. patentable).
In the context of software this can be summarised thus: is the claimed invention solely a computer program (and therefore excluded from patentability) or does the program have some technical effect or give rise to some technical contribution?
The image management invention
The examiner at the IPO dealing with HP's application for the image management invention was of the view that the claimed invention was no more than a computer program and was therefore excluded from patentability. HP persisted with the application and, as the situation was not resolved in correspondence between the examiner and HP's patent attorneys, the matter was referred to a hearing officer at the IPO.
The hearing officer was satisfied that the claims made in the patent application are directed not only to a computer program but to technical processes to which images are subjected, such as the generation of a simplified version of the image to which the software is able to assign the descriptive words. In considering whether the invention fell solely within excluded matter the hearing officer applied the European Patent Office's decision in the case of Vicom/Computer-related invention  1OJEPO. The Vicom decision (which had been cited by HP's patent attorneys) held that an invention for processing and improving the quality of images was deemed to be patentable. The hearing officer decided that, notwithstanding the differences between the inventions, the Vicom decision was applicable to the invention claimed in HP's application.
Why this matters:
The decision will be of interest to advertising agencies, graphic designers, publishers and other media entities for whom cataloguing and exploiting a large collection of images is a crucial part of their creative and internal governance processes.
The fact that HP are now more likely to have a patent granted in respect of the claimed invention may prevent competing products reaching the market but will likely bolster HP's own efforts in developing and marketing these sorts of products and services.