Tuesday, 1 November 2011

Protecting Kids The World Over, while chipping away at the Section 1(2) exclusions

Not so long ago, I wrote about a recent decision from the Patents County Court, Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat), in which HHJ Birss considered that the exclusion under section 1(2) relating to methods for performing mental acts should be viewed narrowly rather than broadly, as the UK-IPO had been doing. This was all very helpful for applicants faced with such problems at the IPO with their applications, but I was then concerned about what would happen as a result. Would the IPO simply switch to using the exclusion of programs for computers as a backstop? It turns out that my pessimism was not necessarily fully justified, as another decision has now arrived that follows Halliburton and deals with exactly this issue.

The applicant, strangely named Protecting Kids The World Over Limited (or PKTWO for short), appealed against a decision of a UK-IPO hearing officer (BL O/439/10) refusing their application (GB 0723964.3, published as WO 2006/094335 A1) relating to a system for monitoring electronic communications.  The hearing officer had found the claimed invention to be excluded from patentability because it related to a computer program and to a method for performing a mental act as such.

The application claimed a system for monitoring electronic communications, in which packets of data were analysed for expressions matching with a stored hash table of expressions (right: a small sample of an XML arrangement of some of the less offensive expressions, as taken from the published application). An alert score was assigned according to matching expressions, and a raised aggregate alert level triggered a notification to an administrator.  A response from the administrator could result in one of a number of actions, including terminating the communication and shutting down the user equipment.

The hearing officer had considered, following the four-step test from Aerotel Ltd. v Telco Holdings Ltd & Ors Rev 1 [2006] EWCA Civ 1371, that the invention did not make a technical contribution because there was no increase in the speed or reliability of the computer that was independent of the program running or the data being processed, and that the invention did not operate at the architecture level of the computer but at the application level. 

Prior to the appeal hearing, the UK-IPO indicated that the mental act exclusion was no longer being relied on, in light of the recent decision in Re Halliburton.  The objection relating to the application being excluded for being a computer program was, however, maintained. 

Floyd J, following the judgment of HHJ Birss in Halliburton, considered whether generation and transmission of an alert notification was a relevant technical process for being assessed as part of the contribution of the invention.  The IPO argued that it was not, while the appellant argued that it was, particularly when considering the claimed invention as a whole. Referring to Gemstar-TV Guide International Inc. v Virgin Media Ltd [2009] EWHC 3068 (Ch), in two out of the three patents considered in that case the contribution related to information being simply displayed on a screen, which was judged to be not technical.  In the present case, however, in which an alarm alerted a user at a remote terminal to the fact that inappropriate content was being processed within the computer, the contribution was considered by Floyd J to be qualitatively different (paragraph 34).  The contribution did not simply produce a different display, nor did it rely on the output of the computer and its effect on the user.  The effect of the invention, when considered as a whole, was judged to be an improved monitoring of the content of electronic communications, which was said to be technically superior to the known prior art.  The contribution had the necessary characteristics of a technical contribution outside the computer itself, and was therefore not excluded for being a computer program as such.  The appeal was allowed, and the application remitted to the IPO.

The decision appears to be another blow to the IPO's way of considering excluded matter, which they have been insisting follows the reasoning of the string of Court of Appeal cases of Aerotel, Symbian et al. It is certainly going to provide some useful ammunition for applicants and their attorneys in trying to get over objections from examiners where the same old familiar material is wheeled out. As Floyd J states, however, in following Symbian "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" (paragraph 12). There is consequently still plenty of wriggle room for IPO examiners to continue arguing their case. I would not be surprised if the IPO left their practice notice on computer programs largely unchanged as a result.

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