Protecting Kids the World Over (PKTWO) Ltd, Re

This is an appeal from a decision of the Hearing Officer (acting for the Comptroller General of Patents), Mr B. Micklewright, by which he rejected UK Patent Application No. GB 0723964.3 in the name of Protecting Kids The World Over (PKTWO) Limited. The appeal raises what are now familiar questions relating to the patentability of computer programs as such. Mr Keith Beresford argued the case for the Appellant; Ms Charlotte May argued the case for the Comptroller.

The hearing before the Hearing Officer, and that before me, focussed on claim 33 of the patent application. By his decision the Hearing Officer held that claim 33 was excluded from patentability because it related to a computer program and to a method of performing a mental act as such.

Before the hearing of the appeal the Comptroller informed the Appellant that he no longer relied on the mental act exclusion. This decision was prompted by the publication of the judgment of HHJ Birss QC sitting as a Deputy High Court Judge in Halliburton Energy Services’ Inc’s Application [2011] EWHC 2508 (Pat). In that judgment he approved what is sometimes referred as the narrow interpretation of that exclusion. The appeal therefore concerns only the computer program exception. Ms May on behalf of the Comptroller contended that the actual decision of the Hearing Officer to reject the application could be supported by relying only on that exclusion.

The application relates to a system for monitoring the content of electronic communications to ensure that users (e.g. children) are not exposed to inappropriate content or language. As claimed in claim 33, the invention comprises a data communications analysis engine which samples (or in jargon “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.

The Appellant contends that claim 33 is both novel and inventive. The process which carries out the monitoring of the electronic communication does so more rapidly and reliably than the prior art. In a letter dated 14 May 2010, the Examiner reported that he was persuaded that the claims were novel and inventive over the cited prior art. He also 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 is not of course bound by those observations, I must accept for present purposes that the Appellant has a serious case that the contribution of the claim results in a more rapid and reliable processing of the expressions.

Mr Beresford for the Appellant argues, and I also accept for present purposes, that if the processing of the expressions is more rapid and reliable, then the relevant alarm notifications are sent out more rapidly and more reliably as well.

The Appellant asks that the appeal be allowed with claim 33 as it stands. In the alternative, it asks 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 is received within a predetermined time. Other amendments are put forward to earlier claims - not contended to be allowable as they stand – namely (claims 1, 5 and 20). Each of these claims is 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 relevant legislation, though translated into section 1(2) of the Patents Act 1977, can conveniently be taken from Article 52 of the European Patent Convention, on which it is based, and which reads:

"(1)

European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.

(2)

The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(a)

discoveries, scientific theories and mathematical methods;

(b)

aesthetic creations;

(c)

schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

(d)

presentations of information.

(3)

The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such."

There is no shortage of authority, both at first instance and in the Court of Appeal (not to mention from the Boards of Appeal of the European Patent Office) on the patentability of computer implemented inventions. For present purposes I need refer only to five of the decided cases. These are Aerotel v Telco/Macrossan’s Patent Application [2007] RPC 7; [2007] EWCA Civ 1371; Symbian v Comptroller-General [2009] RPC 1; [2008] EWCA Civ 1066; ATT&T Knowledge Ventures [2009] [EWHC] 343 Pat; Halliburton Energy Services’ Inc’s Application [2011] EWHC 2508 (Pat); and Gemstar-TV Guide International inc v Virgin Media Ltd [2010] RPC 10; [2009] EWHC 3068 (Ch).

In Aerotel the Court of Appeal set out a four step approach to deciding cases 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".

At [43] in Aerotel, Jacob LJ cites with apparent approval a submission made by counsel for the Comptroller as to how one identified the actual or alleged contribution for the purposes of steps (2), (3) and (4):

“…it 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 the Court of Appeal commended, at [48] onwards, the guidance given in a number of prior English and EPO authorities on the meaning of the term “technical” for the purposes of applying the computer program exclusion. However 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 (as he then was) helpfully analysed the guidance to be obtained from the authorities on the Court of Appeal’s recommended reading list. He agreed with the Court of Appeal 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 he set out at [40]:

“i)

whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;

ii)

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;

iii)

whether the claimed technical effect results in the computer being made to operate in a new way;

iv)

whether there is an increase in the speed or reliability of the computer;

v)

whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.”

All these difficulties arise because, as a matter of ordinary language, 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. HHJ Birss QC in Halliburton explained the matter in, if I may say so, lucid terms after citing from Symbian:

“32.

Thus when confronted by an invention which is implemented in computer software, the mere fact that it works that way does not normally answer the question of patentability. The 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. Indeed (see Astron Clinica [2008] RPC 14) in those circumstances the patentee is perfectly entitled to claim the computer program itself.

33.

If the task the system performs itself falls within the excluded matter and there is no more to it, then the invention is not patentable (see Symbian paragraph 53 above). Clear examples are from the cases involving computers programmed to operate a method of doing business, such as a securities trading system or a method of setting up a company (Merrill Lynch and Macrossan). Inventions of that kind are held not to be patentable but it is important to see why. They are more than just a computer program as such. For example, they self evidently perform a task which has real world consequences. As Fox LJ said in Merrill Lynch (p569 at line 27), a data processing system operating to produce a novel technical result would normally be patentable. However that is not the end of the analysis. He continued: "however it cannot be patentable if the result itself is a prohibited item" (i.e. a method of doing business). When the result or task is itself a prohibited item, the application fails.

34.

The reasoning in Merrill Lynch means that the computer implemented invention claimed there would not have been excluded from patentability if it were not for the combined effect of two exclusions in s1(2) - computer programs and (in that case) business methods. The cases in which patents have been refused almost always involve the interplay between at least two exclusions. A notable exception is the outcome of Fujitsu. However the Court of Appeal in Symbian drew attention to that case as having an arguably inconsistent result (in the passage quoted above and see also paragraph 42 of the judgment) and I note that Fujitsu is not mentioned in the important sentence at the end of paragraph 51 of Lord Neuberger's judgment.

35.

The business method cases can be tricky to analyse by just asking whether the invention has a technical effect or makes a technical contribution. The reason is that computers are self evidently technical in nature. Thus when a business method is implemented on a computer, the patentee has a rich vein of arguments to deploy in seeking to contend that his invention gives rise to a technical effect or makes a technical contribution. For example the computer is said to be a faster, more efficient computerized book keeper than before and surely, says the patentee, that is a technical effect or technical advance. And so it is, in a way, but the law has resolutely sought to hold the line at excluding such things from patents. That means that some apparently technical effects do not always count. So a computer programmed to be a better computer is patentable (Symbian) but as Fox LJ pointed out in relation to the business method exclusion in Merrill Lynch, the fact that the method of doing business may be an improvement on previous methods is immaterial because the business method exclusion is generic.

36.

The Aerotel approach is a useful way of cutting through the cases like Merrill Lynch, Macrossan and Gale in which more than one exclusion is engaged. Take a patent claim consisting of a claim to a computer programmed to perform a business method. What has the inventor contributed? If the answer is a computer program and method of doing business and there is nothing more present, then the contribution falls solely within the excluded subject matter. It can be seen not to be patentable at step 3, before one gets bogged down in the argument that about whether a book keeping system running more efficiently on a computer is a technical effect. Following Aerotel the question has answered itself.

37.

…

38.

What if the task performed by the program represents something specific and external to the computer and does not fall within one of the excluded areas? Although it is clear that that is not the end of the enquiry, in my judgment that circumstance is likely to indicate that the invention is patentable. Put in other language, when the task carried out by the computer program is not itself something within the excluded categories then it is likely that the technical contribution has been revealed and thus the invention is patentable. I emphasise the word "likely" rather than "necessarily" because there are no doubt cases in which the task carried out is not within the excluded areas but nevertheless there is no technical contribution at all.

39.

So in Merrill Lynch and Macrossan the computer programs were unpatentable because the task the program performed was a business method. In Gale the program was unpatentable because the task it performed was a mathematical method (albeit the reasoning was the other way round, starting from the mathematical method rather than the computer program aspect).

When assessing whether the contribution is technical, I think it is helpful to have regard, as HHJ Birss did, to “what task it is that the program (or the programmed computer) performs. 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].

In Gemstar, Mann J was specifically concerned with three patents relating to electronic programming guides for use in televisions. In the first, the Single Channel Patent, the inventive step was said to reside in the format in which the listing of programmes was displayed. In distinguishing Vicom, he said this at [44]:

“The production of the manipulatable images in that case was a technical effect beyond the mere placing of the images on the screen. One can see how that might be said to have a technical effect for the purposes of patent law. Contrast the screen displays in the patent in suit. They do not seem to me to have the same technical effect, qualitatively speaking.”

He went on to hold that the invention “falls on the data processing side of the line”. At [50] Mann J said this:

“So the case comes down to a consideration of whether there is a technical effect as required by step 4 (or perhaps step 3) of Aerotel. The technical effect relied on by Gemstar is a better interface, or a different interface if "better" is not relevant. That is an abstract concept. It does not in terms describe some physical activity or effect. There is a different display on the screen, but that is not enough, in my view. That is still part of the computer program and is not an external effect (Mr Birss did not rely on any internal effect). Many computers running a program are likely to have a display output, and if that were enough to be a technical effect then every program in such a computer would be likely to fall outside the exclusion, which is unlikely to have been the intention of the draftsman of the Act. A different display to that shown before does not seem to me to go far enough to amount to a technical effect which makes a difference. Mr Birss describes the technical content as being a better user interface (usually) or a user interface (sometimes). That way of describing it does not overcome the difficulty he faces. Ultimately they are both ways of describing, in different terms from the patent, what the invention is said to achieve. But they are both judgmental, the first more so than the second. The fact that what the user perceives and interacts with is "better" does not make the advance technical at all (nor is it part of the claims). Nor does characterising it as an interface give it a technical effect that it would not otherwise have had. One has to look to see what the effect actually is, and in my view it is not technical. In fact, in the sense in which Mr Birss uses the expression, "interface" confirms this - it is an abstract, not a physical, concept.”

Thus if the task that the program or computer performs is simply producing a different display, there is no relevant technical effect. Such an effect is too “abstract”. But this same passage contrasts abstract and physical concepts. If the effect outside the computer can in principle fairly be described as a physical concept, process or effect then the same considerations do not, in my judgment apply.

The second patent considered by Mann J, the Favorites Patent, was concerned with enabling the user to filter out from the very large number of channels those which he or she did not wish to be informed about. This made the list more manageable. Mann J held, at [147] that the contribution was wholly within excluded matter:

“This seems to me plainly to be a computer program. It is a program which takes data, makes a display, permits visual and internal tagging, and then displays a subset of that data. So there is little doubt that it is a program. What is the contribution said to be? It was described by Mr Birss as being the improved use of the screen 'real estate' as per the user's interactively applied specification. So it has worked on the data and filtered it. Is that a technical contribution? In my view it is not. It does not make the computer a better computer. It does nothing to make the computer do anything other than to sort some data, and that is not sufficient. Nor does it have a relevant effect on the world external to the computer. It alters a screen display, but again that cannot be a relevant technical effect, because otherwise every computer program which reported its output on a screen would escape the exclusion. Since a very high proportion of programmes can do that, it cannot have been the intention of the draftsman that that should take a programme outside the exclusion, so that is not enough. The effect on the user can hardly be described as a technical effect.”

So the output of the computer and its effect on the user do not combine together to create a relevant technical effect.

Finally, the Transfer 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. On this patent Mann J reached the conclusion at [234] that the subject matter was patentable:

“Again the question is whether what the invention achieves has a relevant technical effect. This time I think that it does. This is not merely a computer running a program without any effect in what might be regarded as the outside world. While it does not produce a "better computer" 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). That seems to me to be enough to prevent it being just a computer program as such and to render it patentable material. It is true that it does not produce an effect outside the system itself, but it is still an effect.”

Thus the initiation of the movement of data, even if occurring within the computer, may be a relevant effect.

As can be seen, all these cases are highly fact sensitive. I turn to consider the application of the principles in the present case.

At [14] to [19] of his decision, the Hearing Officer identifies what he sees as the actual contribution of claim 33. He first analysed the contribution of claim 20 (on which claim 33 is dependent) as:

“an apparatus for monitoring an electronic communication whereby a dictionary is searched for words or phrases, the dictionary comprising a hash-table store of such expressions each having associated with it a section and one of a plurality of levels, each level corresponding to a monitoring alert score, and whereby an aggregate alert level is determined from the corresponding score of each dictionary expression that matches the word or phrase in the electronic communication.”

Next the Hearing Officer identified the added contribution of claim 33. He compared this claim with the disclosure of a prior art patent mentioned in the specification called “Borden”, which showed that the generation of an alarm notification was, at least generically, known. He concluded that:

“..if claim 33 adds anything further … it only adds the facility of giving a user/administrator an opportunity to choose an action before a default action takes place for a specific alert, rather than the system automatically specifying an action.”

The Hearing Officer did not consider (see [21]) that in the context of the present case the sending of messages (i.e. the alert notifications or alarms) over the internet or by mobile phone amounted to a relevant technical effect outside the computer.

The Hearing Officer then concluded that the contribution of claim 20 lay wholly within the excluded fields, relying on both the computer program and mental act exclusions. As to claim 33 he said this:

“Claim 33 adds the facility for a user/administrator (e.g. a parent or guardian) to choose the action to be taken following a particular alert. This is a mental process and not a technical process. I therefore find that claim 33 is also excluded as a program for a computer as such and a mental act as such.”

The Hearing Officer was therefore taking the view that the contribution of claim 33 itself fell within the exclusion relating to methods of performing mental acts. But he also found that giving the user/administrator a choice was not a technical process.

Having reached that conclusion, the Hearing Officer considered that it was in accordance with the “signposts” enumerated by Lewison J in AT&T. In particular he held:

In his explanation of the invention to me, Mr Beresford on behalf of the Appellants described the invention by reference to a diagram showing the request and response engine within the computer communicating over a network with a remote terminal such as a mobile device in the possession of a parent. The communication was shown as occurring by means of email or text message. This is, of course, a slightly narrower concept than claim 33 which merely provides that a notification be sent to an administrator/user. However the amendments to claim 20, on which claim 33 depends, require that the alert message be sent via a telecommunications network. I propose to approach the matter on the basis that all the claims are limited to an alert message sent from the computer to a remote terminal.

Mr Beresford submits, firstly, that by analysing the contribution of claims 20 and 33 in two separate parts, the Hearing Officer lost sight of the contribution of claim 33 as a whole. I appreciate that I should exercise appropriate restraint before coming to a different conclusion from an expert tribunal, which the Hearing Officer undoubtedly is. However, I think that Mr Beresford is right in that submission. Whilst it is true to say that the claim makes the individual contributions which the Hearing Officer identified, the Hearing Officer makes no mention of the fact that the improved speed and reliability of the processing method of claim 20 will be reflected in an improved speed and reliability of the alarm notification which is a feature of claim 33. I think this may have been because, having identified that an alarm notification system was part of the prior art, he considered that the notification could form no part of the contribution. I do not regard that as a correct approach. An improved alarm is part of the contribution of claim 33.

In the context of the present case, I would hold that the contribution made by claim 33 includes, 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 were not novel, the particular alarm notification described in the specification and claimed in claim 33 was not known and formed part of the contribution to human knowledge made by the application.

Given the different view which I take of the contribution made by claim 33, it is necessary to re-assess whether that contribution resides wholly in excluded matter. Ms May, for the Comptroller, submits that it does so reside. She submits that all that claim 33 does is inform the user/administrator of the result of the data analysis performed by the computer program. That process cannot, she submits, be a technical process. The provision of the option for the user/administrator to take the specified actions is just an aspect of program design. She relied on those aspects of the decision of Mann J in Gemstar in which he rejected claims on the basis of the computer program exclusion where the computer program did nothing more than display information to the user.

I am unable to accept these submissions. I start with the proposition that the generation and transmission of an alert notification to the user/administrator is not a relevant technical process. I accept that in many cases this may be correct. Plainly it was correct in the case of two out of the three patents considered by Mann J in Gemstar, where information was simply displayed on a screen. But what is in play in the present case, namely 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, is in my judgment qualitatively different. First of all, the concept, although relating to the content of electronic communications, is undoubtedly a physical one rather than an abstract one. In that respect it was more akin to the third of the three patents considered by Mann J in Gemstar. Secondly, the contribution of claim 33 does not simply produce a different display, or merely rely on the output of the computer and its effect on the user. The effect here, viewed as a whole, is an improved monitoring of the content of electronic communications. The monitoring is said to be technically superior to that produced by the prior art. That seems to me to have the necessary characteristics of a technical contribution outside the computer itself.

Accordingly I would hold that the contribution of claim 33 does not reside wholly within the computer program as such exclusion. I think that conclusion is in accordance with the AT&T signposts. In particular I would say that the invention solves a technical problem lying outside the computer, namely how to improve on the inappropriate communication alarm generation provided by the prior art. That is sufficient in my judgment to overcome the objection on the very specific facts of the case before me.

It is not therefore necessary to consider the proffered amendment to claim 33. So far as claims 1, 5 and 20 are concerned, these will have to be amended as proposed. The matter will be remitted to the Office as there are outstanding objections of added matter.

I would also invite the Office to consider how the wording of the amended claim 20 can be made to dovetail with claim 33. At the moment the proffered amendment to claim 20 refers to “transmitting … an alert message in response to said aggregate alert level…” whereas claim 33 refers to “sending a notification request to an administrator/user advising the aggregate alert level…”. As these are, as I understand it at present, essentially the same step, it would be helpful if they were expressed in the same language if that can be achieved by permissible amendment. This was not a matter canvassed before me, however, and it is for the Office to come to its own view on it.

In the result I will allow the appeal, and remit the matter to the Office for the purposes indicated above. I would add only that the Hearing Officer was dealing with the matter against a different legal and factual background – in particular different claims. He also had the benefit of more limited and different arguments from those with which I was presented.