Protecting Kids -- and Patents too?

As a caring society, we seek to protect both our children and our inventions.  Occasionally one is presented with an opportunity to protect the two simultaneously. One such opportunity came in Protecting Kids the World Over (PKTWO) Ltd, in re [2011] EWHC 2720 (Pat), a decision of Mr Justice Floyd (Patents Court, England and Wales) from 26 October which somehow got lost in the wash.  This decision touches once again on the potential exclusion from patent protection of an invention which looks jolly useful and, in this Kat's opinion, would be bound to sell well -- but which is afflicted by the twin blights of being implemented by computer and of being a simulation of a mental act.

This was an appeal by PKTWO against the ruling of a UK Intellectual Property Office hearing officer's refusal to allow its patent application for a monitoring system. Claim 33 of the application was the bit that seemed to be causing all the trouble: it related to a system for monitoring the content of electronic communications so as to ensure that children using the internet and the social media were not exposed to inappropriate content or language. The system itself comprised a data communication analysis engine which sampled data packets using "hash tables"; if this analysis found anything untoward, a text or email was automatically sent to a responsible grown-up. The grown-up could then remotely order the computer to terminate the electronic communication or shut it down completely.  The hearing found that claim 33 was somewhat untoward itself, being excluded from being even regarded as an invention under the European Patent Convention 1973 Article 52(2) because it related to a computer program and because it was a method of performing a mental act. PKWO appealed.

Floyd J allowed the appeal. First, he set about the task of deciding the basis on which he could assess whether the contribution described in Claim 33 was technical (and therefore having at least a chance of gaining patent protection, assuming that all the other boxes, like novelty and inventive step, were ticked), having regard to the recent body of case law on the subject which included Aerotel Ltd v Telco Holdings LtdSymbian Ltd v  Comptroller of Patents and Halliburton Energy Services Inc's Patent Applications. Having done so, he reached the following conclusions:

  • The contribution made by claim 33 over the prior art included the generation of a faster and more reliable alarm notification. While there was nothing new about the idea of alarm notifications, PKWO's specification was not known in the existing art and formed part of the contribution to human knowledge which was made by the application.
  • An alarm alerting someone at a remote terminal that inappropriate content was being processed within the computer was a physical concept, not an abstract one.
  • The overall effect of Claim 33 was an improved monitoring of the content of electronic communications, which was said to be technically superior to anything produced by the prior art: this meant that it possessed.the necessary characteristics of a technical contribution outside the computer itself. This being so, the contribution of claim 33 did not fall wholly within the provision excluding computer programs from patent protection -- and the invention solved a technical problem lying outside the computer, that of how to improve on the inappropriate communication alarm generation provided by the prior art.

Now that we are construing our exclusions narrowly, wonders Merpel, might we expect fewer applications to squeeze through by the skin of their teeth in future?
Protecting Kids -- and Patents too? Protecting Kids -- and Patents too? Reviewed by Jeremy on Tuesday, November 08, 2011 Rating: 5


  1. OK so the alarm is part of the canon of "braking systems" in which the software is a crucial part.

    What spooks me is all this covert surveillance of children.

    Let's hope the children don't find out their parents are spying on them because said parents go ballistic because said child was discussing the fixture list of Football League 1 (Scunthorpe for the uninitiated) they're Spurs fans expressing opinions about their North London rivals (Arsenal) or they're exchanging emails with anyone from Peniston grammar school and so on.

  2. Further, this could be interesting

    Barnes & Noble is now asking DoJ to investigate Microsoft's strategy of eking licensing fees from device makers that use Android.

  3. That the claimed subject matter survives UK inspection for obviousness I take to be "no problem". But would that have been the case at the EPO? In Halliburton, HJJ Birss noted the "special" approach to obviousness at the EPO. Perhaps that is why this case is being prosecuted at the UK Office, rather than the EPO. But is it the EPO or the UK approach that is a little bit special? We want obviousness to be technological obviousness, I trust, rather than financial obviousness, commercial obviousness or information presentation obviousness. I think I prefer the EPO approach, to distinguish stuff that's fit for patenting from stuff that (however clever, or meritorious) isn't within the "useful arts".

  4. I had thought that the IPKat had not bothered with this one, since I did such a great job on it last week. See here for more.

  5. @Tufty the Cat
    Of course you did a great job noting this decision -- but if I don't add my note on this blog, I won't be able to find it in my internal Katsearch in a year or two when I'm scrabbling around in search of whatever it was that I thought about it at the time!

  6. Nicely put. I use the same Katsearch myself to find out what I was writing about things over the past few years.


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