Patent

Application - Refusal

Re patent application in the name of Protecting Kids The World Over (PKTWO) Ltd: Chancery Division, Patents Court (Mr Justice Floyd): 26 October 2011

The applicant company made UK Patent Application No. GB 0723964.3 in the name of 'PROTECTING KIDS THE WORLD OVER (PKTWO) LTD', which related to a system for monitoring the content of electronic communications to ensure that users, namely children, were not exposed to inappropriate content or language. As claimed in claim 33, the invention comprised a data communications analysis engine which sampled, or in jargon 'packet sniffs', data packets from a communications channel for further analysis of their content.

The data packets were then monitored using a sequence of 'hash tables' which assigned a score to the data packet depending on the expressions found in the data packets. An aggregate alert level was assigned to the packet. The aggregate alert level was passed to a security warning algorithm which generated an alert notification to users. There was 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 included one of: (a) alerting a user, (b) terminating the electronic communication on the channel; or (c) shutting down the equipment. What was envisaged was that the computer would send the alert notification, in effect an alarm, to a parent by email or SMS message. The parent would be able to send a remote response command of one of the specified types and the computer would respond accordingly.

The applicant claimed that claim 33 was both novel and inventive, and that the process which carried out the monitoring of the electronic communication did so more rapidly and reliably than the prior article. The hearing officer, acting for the defendant Comptroller General of Patents (the comptroller), rejected the claimant's patent application.

He took the view that claim 20 (on which claim 33 was dependent), lay wholly within the excluded fields as set out in article 52 of the European Patent Convention, relying on the computer program and mental act exclusions set out therein. With respect to claim 33, he decided that it was also excluded from patentability because it related to a computer program and to a method of performing a mental act. The applicant appealed. Prior to the hearing of the appeal, the comptroller informed the applicant that he no longer relied on the mental act exclusion.

However, the applicant asked that the appeal be allowed with claim 33 as it stood. In the alternative, it asked that claim 33 be allowed but with an amendment that the request and response engine be operable to shut down the user equipment if no response was received within a predetermined time. Other amendments were put forward to earlier claims, namely claims 1, 5 and 20. Each of those claims was proposed to be limited by a further feature 'means for automatically transmitting to a remote terminal, via a telecommunications network, an alert message in response to said aggregate alert levels reaching or exceeding a threshold'.

The applicant contended that claim 33 was novel and inventive: the process which carried out the monitoring of the electronic communication did so more rapidly and reliably than the prior article. In a letter dated 14 May 2010, the examiner had reported that he was persuaded that the claims were novel and inventive over the cited prior article. He further accepted that the hash table approach might produce a reduction in analysis time, whilst not accepting that the approach meant that the computer functioned better generally.

Although the comptroller was not bound by those observations, they demonstrated that the applicant had a serious case that the contribution of the claim resulted in a more rapid and reliable processing of the expressions. If the processing of the expressions was more rapid and reliable, then the relevant alarm notifications were sent out more rapidly and more reliably as well. The applicant argued that by analysing the contributions of claims 20 and 33 in two separate parts, the hearing officer had lost sight of the contribution of claim 33 as a whole. The appeal would be allowed.

It was settled law that in considering whether the exclusions from patentability had been engaged, the court had to: (1) properly construe the claim; (2) identify the actual contribution; (3) ask whether it fell solely within the excluded subject matter; and (4) check whether the actual or alleged contribution was actually technical in nature. Although it was impossible to define the meaning of 'technical' in that context, it was well established that there were a number of signposts set out in established authority as to what amounted to a relevant technical effect, namely: (i) whether the claimed technical effect had a technical effect on a process which was carried on outside the computer; (ii) whether the claimed technical effect operated at the level of the architecture of the computer; namely whether the effect was produced irrespective of the data being processed or the applications being run; (iii) whether the claimed technical effect resulted in the computer being made to operate in a new way; (iv) whether there was an increase in the speed or reliability of the computer; and (v) whether the perceived problem was overcome by the claimed invention as opposed to merely being circumvented.

An invention which had none of the aforementioned signposts was unlikely to involve a relevant technical effect. When assessing whether the inventor's contribution was technical, it was well established that it was helpful to have regard to what task it was that the program (or the programmed computer) performed. It was accepted that there was no formulated test for what did and did not amount to a technical contribution in the field. Each case had to be decided by reference to its own particular facts and features, bearing in mind the guidance given in the relevant authorities (see [10], [12], [13]-[15] of the judgment).

In the instant case, the contribution made by claim 33 included, in addition to the features identified by the hearing officer, the generation of a more rapid and reliable alarm notification. Viewed in that way, although, at a high level of generality, alarm notifications had not been novel, the particular alarm notification described in the specification and claimed in claim 33 had not been known and formed part of the contribution to human knowledge made by the application.

Given the different view taken of the contribution made by claim 33, it was necessary to re-assess whether that contribution resided wholly in excluded matter. What was at play in the instant case was namely an alarm alerting the user, at a remote terminal such as a mobile device, to the fact that inappropriate content was being processed within the computer. The effect there, viewed as a whole, was an improved monitoring of the content of electronic communications.

The monitoring was said to be technically superior to that produced by the prior article. That seemed to have the necessary characteristics of a technical contribution outside the computer itself. Accordingly, the contribution of claim 33 did not reside wholly within the computer program as such exclusion. Such a conclusion was in accordance with the signposts set out in established authority. In particular, the invention solved a technical problem lying outside the computer, namely how to improve on the inappropriate communication alarm generation provided by the prior article (see [31]-[33]-[35] of the judgment).

Claims 1, 5 and 20 would have to be amended as proposed, and the matter would be remitted to the UK Intellectual Property Office as there were outstanding objections in relation to added matter (see [36] of the judgment). Aerotel Ltd v Telco Holdings Ltd; Re Macrossan's Application [2006] All ER (D) 346 (Oct) applied; AT & T Knowledge Ventures, Re; Re CVON Innovations Ltd [2009] All ER (D) 27 (Mar) applied; Patent application in the name of Halliburton Energy Services Inc, Re [2011] All ER (D) 78 (Oct) applied; Symbian Ltd v Comptroller General of Patents [2008] All ER (D) 75 (Oct) considered; Gemstar-TV Guide International Inc v Virgin Media Ltd [2009] All ER (D) 67 (Dec) considered.

Keith Beresford of Beresford & Co for the applicant; Charlotte May (instructed by the Treasury solicitor) for the comptroller.