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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Protecting Kids the World Over (PKTWO) Ltd, Re [2011] EWHC 2720 (Pat) (26 October 2011) URL: https://www.bailii.org/ew/cases/EWHC/Patents/2011/2720.html Cite as: [2011] EWHC 2720 (Pat), [2012] RPC 13 |
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CHANCERY DIVISION
PATENTS COURT
ON APPEAL FROM THE UK INTELLECTUAL PROPERTY OFFICE
Rolls Building, London, EC4A 1NL |
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B e f o r e :
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IN THE MATTER OF the Patents Act 1977 |
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IN THE MATTER OF UK Patent Application No. GB 0723964.3 in the name of PROTECTING KIDS THE WORLD OVER (PKTWO) LIMITED |
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IN THE MATTER OF an appeal from the decision of the Comptroller General of Patents dated 23rd December 2010 |
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Ms Charlotte May (instructed by Treasury Solicitor) for the Respondent
Hearing date: 13th October 2011
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Crown Copyright ©
Mr Justice Floyd :
"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 Law
"(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."
"(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".
"…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."
"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."
"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).
"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."
"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."
"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."
"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."
The decision of the Hearing Officer
"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."
"..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."
"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."
i) There is no technical effect on a process carried on outside the computer. Rather the effect outside the computer is the mental act corresponding to the user's choice of action in response to the alert.
ii) The claimed technical effect does not act at the level of the architecture.
iii) There is no general increase in the speed or reliability of the computer itself. Rather the increase in speed and reliability occurs at the application level in the computer program itself.
iv) The perceived problem appears to be to provide a system for monitoring electronic communications which is faster and more reliable, and which gives users a choice in actions to take. This problem has not however been solved by any technical means, but rather circumvented by using more efficient programming means specific to the monitoring system."
Discussion