The IPKat has been digesting this recent UK Patent Office decision (BL O/010/07), which has also recently been reported on The Register.
The decision related to refusal of Sony’s patent application GB0207020.9 directed to a data structure for communicating metadata. Sony appealed the examiner’s decision that the application related only to a computer program as such, refusing the application under section 1(2).
Embodiments of the invention included a system for generating video productions, which generated "metadata" describing the content or other attributes of video material shot on a camera. This metadata, arranged in a hierarchical structure, could then be used in processing the video, i.e. storing, navigating and editing, particularly over a network. Such an arrangement would apparently allow large amounts of data, for example in high definition video format, to be manipulated in a more efficient way. The claimed invention, however, was directed only to “a data structure for communicating metadata describing the content of at least one shot or sub-shot of information material between a network of devices...”.
The Hearing Officer (HO) followed the four-step Aerotel/Macrossan test to determine patentability. After construing the main claim, the contribution made by the invention was seen to be the data structure itself. This was viewed by the HO as being “part of the instructions whereby a computer [...] is enabled to retrieve and communicate the metadata”. The contribution therefore constituted a computer program as such. The HO cited a previous decision of Oracle (O/255/05), where an application to a data structure was refused as being nothing more than a development in computer programming technique. Once it was determined that the claim, properly construed, was for nothing more than a program for a computer, the HO reasoned that the remaining steps could not assist.
Responding to arguments that the claimed invention nonetheless provided a “potential for data nodes to more efficiently access metadata”, the HO considered that, while this may foreshadow a technical effect when the data structure was operative to access metadata, it would not make the data structure itself any less a computer program as such.
Although the HO did not consider that any useful purpose would be served by establishing that the data structure provided a technical contribution, he did, after considering the previous EPO decisions of Philips (T 1194/97) and BBC (T 0163/85), and the more recent UKPO decisions of Sun (BL O/057/06) and ARM (BL O/066/06), take the view that if the claims were instead directed to a data communications network, the technical contribution provided would be relevant. In paragraph 28:
- "Having considered all these arguments I accept that the data structure has the potential to bring about a technical effect but I do not think this is an argument for allowing the claims to the data structure itself, which must in my view remain excluded. However, it seems to me that claims according to either of the auxiliary requests, which require the incorporation of the data structure into a data communications network, would satisfy all the Aerotel/Macrossan steps. The incorporation of a hierarchical database structure into a communications network of data processing devices so that metadata can be communicated between them with the advantages outlined above at paragraph 25 provides in my view a contribution which is not disclosed or foreshadowed by the prior art cited on this application, which is not solely a computer program, and which is technical in nature"
Subsidiary claims to a data communications network were therefore not excluded. The application was remitted to the examining division for further prosecution.
The IPKat is a little puzzled by this decision. While on the one hand the subject matter of the alleged invention is quite clearly, in the Hearing Officer's view, excluded, on the other hand the very same invention in the guise of a physical apparatus is not excluded. Does this tally with the 'substance over form' test we are told should be the way inventions of this genus are to be viewed? If the contribution to the art was indeed only a computer program as such, how does this contribution become "technical" when it is in the form of part of a (presumably otherwise conventional) data communications network? Why, if the data structure has a 'potential' for a technical effect, is it not patentable in itself (see the IBM decision T1173/97)?
Merpel suggests that this decision just emphasises the point that nobody really knows what they are doing in this area, and provocatively asks: just what is that fourth step for anyway, if the Patent Office insist on never using it?
Sony's metadata structures found not patentable (kind of)
Reviewed by David Pearce
on
Friday, January 26, 2007
Rating:
Reviewed by David Pearce
on
Friday, January 26, 2007
Rating:
Follow the IPKat on LinkedIn 
![[Guest post] Thou shalt not discriminate the Lego block over any other kind of product – GRUR speaks out on C-211/24](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgWJYQUJNvYydrZcjwSHPuxd14xX3_48aBusHKBogY-Wg1BPSJSABbFFjmGiUV3aqG2npP9xYaIl1vtWK5AsqGOQPgRD2TWFLhyyc4xGm1fHDD-tt9kHcrSSgAyju2P9wSKz0VW6h7D5MD4Hxd9vREyxKYzlMRNXxxtxc3DiNsXppfVaxgSxAMV/s72-c/21742619125_7c9e53cd39_o.png)
![[Guest post] Comparison of wine and gin: the EUIPO’s unquestionable Similarity Tool](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiNfTEBXiPVS0XjZi4mNE1OtXLxXiEp1PUgcUK7MMMXlfyTkO5SMXv-VCMXXNdS_F1XdMMxYca1VbBTGvvDeTVpo5x-5YwR7atQJmK3x32T8LACpf4308kht3nEtaxPwEPcGGrB0s5xjGktmQPOiVwPVLRO5JbW19qupc7xUtiVutvaWHow0OpBkA/s72-c/Picture%201.jpg)
![[Guest post] Muddying the waters of copyright – a rapid reaction to today’s IPEC decision which sees the sinking of the WaterRower’s claims for copyright protection](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh7chFANC7ppmZl4_nlR6_hZEcg6cOhVEJNVXqki4p82BoVlcLFotuOXzHWYD5lKLiiK_kRoWeXmJjjaV2DpoKsAWq8U3LFioO5W_841a9gcfDIFjvZWcGqfnr0jWJNtyXptIYR_8bxCssaDkJ9KMokuSqy1g65Il7p2hPwo4MfRCEGoUPQJesvbg/s72-w400-c-h189/Screenshot%202024-11-11%20at%2018.20.45.png)
Posts
It seems fair enough that you dont need to worry about step 4 if the invention fails at step 3. The EPO seems to prefer a one step test http://www.filemot.com/ESM.htm#OS.
ReplyDeleteThere would not be a difficulty in accepting a claim for a data communications network when the data structure itself is regarded as excluded subject matter, if the data communications network made some inventive contribution beyond the data structure's presentation of information. You might also ask whether the network solves a technical problem and get to the same answer. An invention can be a technical use of a data structure but not the structure itself. A device that encodes your voice for transmisssion is technical useful and patentable, whereas the code used is an unpatentable abstraction. Whats the use of a claim to a data structure anyway. You can't sell one.
However having read the specification, all the network seems to do is solve the management issue that arises in producing a complete video from separately produced material by makeing that material "easily edited or navigated through". Therefore even though its gone back to the examiner, the applicant still has to make sure that his new claim can survive all four steps.
That does kind of confirm my puzzlement. If there was no contribution made by the network itself, why could it be patentable by virtue of a non-patentable contribution? If the hearing officer were to properly apply the fourth test, which to me sounds like the "further technical effect" test the EPO used to justify allowing claims to computer programs, then he would presumably say that the data structure enabled some kind of further technical effect and the network would be patentable. However, the fourth step has, I think, been misrepresented in the Aerotel/Macrossan judgment, and consequently can never be used in practice.
ReplyDeleteThere has been much criticism of "technical", by Aharonian, for example. I had thought that Robin Jacob's Aerotel Decision had kicked it into the long grass (helping the EPO TBA's). If the Sony data structure enables a computer to achieve a technical effect, then it and the programmed computer should be patentable. If the programmed computer doesn't do that, then neither the data structure nor the loaded computer should be patentable under the EPC.
ReplyDeleteHi IPKAT and/or David,
ReplyDeleteThis makes me think of Mr Justice Pumfrey's conclusion that a proxy server isn't novel, but isn't 'software as such' either - for some reason he and this HO consider software running on two computers to be something other than software as such, which is a bit odd given that it is no way different to single program communicating with itself in terms of what it does - i.e. talking via sockets (which could be any of a local file in the case of UNIX Domain Sockets, or the same system, or a remote system all of which are the same in terms of the software.)