Protecting Kids the World Over (PKTWO) Ltd, Re

For the computer-program exclusion, the court must identify the contribution made by the claimed invention as a whole. The question is what task the programmed computer performs and whether that task makes a technical contribution. A mere display of information or an abstract improvement in user interaction is insufficient. A physical effect, including an effect within a computer system, may be relevant. An improved alarm transmitted to a remote terminal, resulting from faster and more reliable monitoring of electronic communications, can constitute a technical contribution outside the computer. On the particular facts, the claim was not excluded as a computer program as such.

Protecting Kids The World Over (PKTWO) Limited appealed against the Comptroller General’s decision of 23 December 2010 rejecting UK Patent Application No. GB 0723964.3. The appeal concerned claim 33, relating to monitoring electronic communications for inappropriate content, generating an alert and enabling a remote administrator to respond. The Comptroller no longer relied on the mental-act exclusion. The central issue was whether the claimed contribution fell wholly within the computer-program exclusion in section 1(2) of the Patents Act 1977.

1. Appeal allowed. The claim was to be assessed by identifying the contribution of claim 33 as a whole, rather than treating the contribution of its dependent claims as separate elements. The faster and more reliable processing achieved by the monitoring method improved the speed and reliability of the alarm notification and formed part of the claimed contribution.
2. The court adopted the task-focused approach reflected in Aerotel v Telco/Macrossan’s Patent Application and the guidance concerning technical effects in Symbian v Comptroller-General, AT&T Knowledge Ventures and Halliburton Energy Services’ Inc’s Application. The inquiry remains fact-sensitive. There is no bright-line test.
3. A different screen display, or an abstract improvement in a user interface, does not ordinarily provide the necessary technical effect. The initiation of movement of data may nevertheless be a relevant physical effect even where it occurs within the computer system. The distinction is between an abstract result and a physical process or effect.
4. The alarm in the present case was qualitatively different from merely displaying information. It alerted a user at a remote terminal, such as a mobile device, that inappropriate content was being processed. Viewed as a whole, the improved monitoring and alarm system addressed a technical problem outside the computer and made a technical contribution. The contribution therefore did not reside wholly within the computer-program exclusion.
5. It was unnecessary to determine the proposed amendment to claim 33. Claims 1, 5 and 20 required amendment, and the matter was remitted to the Office because objections concerning added matter remained. The Office was invited to consider whether the wording of amended claim 20 should be aligned with claim 33.

High Court (Patents Court): The appeal from the Comptroller General’s decision dated 23 December 2010 was allowed. The matter was remitted to the Office for further consideration and amendment issues.