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 Ltd, Symbian 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?