Wednesday, November 16, 2011

Protecting kids the world over - with patents

internetSafety ghostIn Protecting Kids the World Over (PKTWO) Ltd [2011] EWHC 2720 (Pat) (26 October 2011) we see a successful appeal by an applicant for a patent application relating to the patentability of computer programs as such.

The patent application

UK Patent Application GB 0723964.3 was filed by Protecting Kids The World Over (PKTWO) Limited.  The application relates to a system for monitoring the content of electronic communications to ensure that children are not exposed to inappropriate content or language.

Claim 33, dependent on claim 20, was directed to a data communications analysis engine.  The engine "packet sniffs" data packets from a communications channel for further analysis of their content. The data packets are then monitored using a sequence of "hash tables" which assign a score to the data packet depending on the expressions found in the data packets. An aggregate alert level is assigned to the packet. The aggregate alert level is passed to a security warning algorithm which generates an alert notification to users. There is then a "request and response engine" for sending a notification to an administrator/user such as a parent and for receiving a response from the administrator/user comprising one of several actions to be taken by the computer.

The actions to be taken by the computer include one of (a) alerting a user, (b) terminating the electronic communication on the channel or (c) shutting down the equipment. What is envisaged is that the computer will send the alert notification, in effect an alarm, to a parent by email or SMS message. The parent will be able to send a remote response command of one of the specified types and the computer will respond accordingly.

Relevant technical effect

The Hon Mr Justice Floyd referred to the relevant legislation, section 1(2) of the Patents Act 1977 and Article 52 of the European Patent Convention on which it is based.

He set out the four step approach from Aerotel v Telco/Macrossan's Patent Application [2007] RPC 7, where the exclusions from patentability were engaged:
  1. properly construe the claim
  2. identify the actual contribution;
  3. ask whether it falls solely within the excluded subject matter;
  4. check whether the actual or alleged contribution is actually technical in nature
Identifying the actual or alleged contribution for the purposes of steps 2, 3 and 4:
"…is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended."
In Symbian v Comptroller-General [2009] RPC 1[2008] EWCA Civ 1066 the Court of Appeal declined to formulate any "bright line" test for what did and for what did not amount to a technical contribution in this field. Each case had to be decided by reference to its own particular facts and features, bearing in mind the guidance given in the decisions mentioned.

In ATT&T Knowledge Ventures [2009] [EWHC] 343 Pat, Lewison J agreed that it was impossible to define the meaning of "technical" in this context but considered that there were a number of signposts to what amounted to a relevant technical effect. These are:
  • whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
  • whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
  • whether the claimed technical effect results in the computer being made to operate in a new way;
  • whether there is an increase in the speed or reliability of the computer;
  • whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

In Gemstar-TV Guide International inc v Virgin Media Ltd [2010] RPC 10[2009] EWHC 3068 (Ch), Mann J considered a patent related to a means of controlling the transfer of recorded programmes to a secondary recorder such as a VCR, hard disc or like means.  It was observed that "it does actually achieve something which can be regarded as a physical effect, namely the initiation of movement of data from one disk to another (both metadata and TV programme content)."  Thus the initiation of the movement of data, even if occurring within the computer, may be a relevant effect.

Coming back to the present case, Floyd J observed that:
"the programming of a computer is a technical exercise, and the consequence of so programming it can, again in ordinary language, be regarded as achieving a technical effect. It is therefore the case that in applying the exclusion one is seeking to distinguish a relevant technical effect from one which is irrelevant. An invention which has none of the signposts referred to in Lewison J's judgment is unlikely to involve a relevant technical effect."

What does it do?

Floyd J cited with approval the reasoning of HHJ Birss QC in Halliburton Energy Services' Inc's Application [2011] EWHC 2508 (Pat) (see my blog post), that:
“[t]he question is decided by considering what task it is that the program (or the programmed computer) actually performs.  A computer programmed to perform a task which makes a contribution to the art which is technical in nature, is a patentable invention and may be claimed as such”.
He went on to observe that “I think this reflects the formulation of Jacob LJ in Aerotel at [43], as well the oft-repeated injunction to have regard to the invention “as a whole”: see Vicom T028/84, approved in Symbian at [37].”

Solving a technical problem

The contribution made by claim 33 was held to include the generation of a more rapid and reliable alarm notification.  The particular alarm notification as described and claimed in claim 33 was not known and formed part of the contribution to human knowledge made by the application.

An alarm alerting the user, at a remote terminal such as a mobile device, to the fact that inappropriate content is being processed within the computer was found to be a technical process.  The concept was a physical one rather than an abstract one, akin to Gemstar described above.  The effect, viewed as a whole, is an improved monitoring of the content of electronic communications.  The monitoring was technically superior to that produced by the prior art.  There was present the necessary characteristics of a technical contribution outside the computer itself.

The contribution of the claim was found not to reside wholly within the "computer program as such" exclusion.  This fitted with the AT&T signposts.  The invention was observed to solve a technical problem lying outside the computer, namely how to improve on the inappropriate communication alarm generation provided by the prior art.

Further steps

The appeal was allowed.  The case was remitted back to the UK Intellectual Property Office to deal with other outstanding objections.

Photo courtesy of author Paul Klintworth under Creative Commons licence.

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