…

                                                                         BL O/226/06

                                                                   10th August 2006
                                 PATENTS ACT 1977


    APPLICANT                     Sony Electronics, Inc


    ISSUE               Whether patent application numbers
                       GB 0423858.0 and GB 0423859.8 relate
                              to patentable inventions


    HEARING OFFICER                Bruce Westerman



                                      DECISION

    Introduction
1   Patent applications GB 0423858.0 and GB0423859.8 are the national phase
    cases of applications originally filed under the Patent Cooperation Treaty.

2   Both cases were examined in the usual way before the UK Patent Office, by
    two different examiners. On both cases, prior art was initially raised as relevant
    to considerations of novelty and/or inventive step, but this has now been
    resolved. Again on both, objection was raised that the respective invention
    was not patentable as being in an area excluded under section 1(2) of the
    Patents Act 1977. On both cases, however, it became clear that no
    agreement could be reached on the issue of patentability, and so hearings
    were offered and accepted to determine this on each.

3   The matters therefore came before me on 26 July 2006, where Dr Jonathan
    DeVile (of the firm D Young & Co) appeared for the applicant. Both examiners
    (Matthew Cope and Steven Gross) also attended.

4   At the outset of the hearing, Dr DeVile said that he felt it important to think
    about the two cases separately, because, he said, although they are based on
    a common specification, the ideas are quite distinct. Nevertheless, he dealt
    with issues common for the two cases and the legal background, then diverting
    to consider the two separately. In view of this I think it will be more economical
    if I were to deal with both cases in this one decision. In presenting his case, Dr
    DeVile made use of a PowerPoint ® presentation, which I found helpful and
    the copy he left with me I found an extremely useful aide-memoire in
    considering the issues after the hearing.

    The Applications

5   Both applications are concerned with improvements in peer-to-peer
    communication between users of a communications network, but, as Dr DeVile
    said, are concerned with distinct and different improvements in the two cases.
    In GB0423858.0, the invention is to do with revealing information of interest to
    a user by attaching information to a file representing previous users, so that a
    subsequent user can establish a communications session with a previous user
    to find related information files. In GB0423859.8, the invention is to do with
    identifying users with similar interests by polling a user community to find users
    with common interests which each has selected by recording an identifier for
    the interest. Both cases have claims to methods, machine-readable medium
    incorporating instructions to perform the method, and device or apparatus
    claims for performing the method. I think it is enough for present purposes if I
    quote the method claims for the two inventions here.

6   GB0423858.0 ­ claim 1 reads:

         1.    A computerized method, comprising:

               receiving at a first user device a digital content file having metadata
         representing user history information, the user history information
         including data representing an alias name of a previous user of the digital
         content file;

         reviewing the user history information; and

         establishing a peer-to-peer communications session via a
         communications network with a second device associated with the
         previous user as a result of reviewing the user history information, to
         initiate a relationship with the previous user of the digital content file in
         accordance with the user history information, and

         searching for a related digital content file based on the alias name using
         the relationship established by the peer-to-peer communications session.

7   GB0423859.0 ­ claim 1 reads:

         1.   A method to visually identify to a first of a plurality of users on a data
         communications network, which of one or more of a plurality of other
         users of data processing devices share a common interest, the method
         comprising;

                generating first persona information in response to a selection by a
         first user of media items for entertainment using a first data processing
         device associated with the first user, the first persona information
         including media identifiers representing the user's selection of media
         items for entertainment;

               generating a polling query message, the polling query message
         including at least part of the first persona information,

              communicating the polling query message from the first data
         processing device to a second data processing device via the data
         communications network;
                correlating within the second data processing device the media
          identifiers included in the first persona information with data identifiers
          included in

              second persona information associated with a second user of the
          second data processing device;

               to identify common media identifiers between the first and second
          persons information;

                adapting the polling query message to identify the common media
          identify the common media identifiers,

               communicating the adapted polling query message to the first data
          processing device

                 generating and displaying a visualization of the first and second
          data processing devices relative to a common interest identified in the
          first and second persona information of the first and second users at the
          first data processing device in accordance with the common media
          identifiers; and

               initiating a relationship between the first and second devices based
          on the common media identifiers.

    The Law

8   The examiners took objection under section 1(2) of the Act, which states:

          "1(2) It is hereby declared that the following (among other things) are not
          inventions for the purposes of this Act, that is to say, anything which
          consists of ­

                (a) a discovery, scientific theory or mathematical method;

                (b) a literary, dramatic, musical or artistic work or any other
                aesthetic creation whatsoever;

                (c) a scheme, rule or method for performing a mental act, playing a
                game or doing business, or a program for a computer;

                (d) the presentation of information;

          but the foregoing provision shall prevent anything from being treated as
          an invention for the purposes of this Act only to the extent that a patent or
          application for a patent relates to that thing as such."

9   As explained in the Practice Notice1, issued on 29 July 2005, current practice
    before the UK patent office reflects the approach adopted by Peter Prescott

    1
     "Patent Office Practice Notice: Patents Act 1977: Examining for patentability" ­ see
    http://www.patent.gov.uk/patent/notices/examforpat.htm
     QC, sitting as a Deputy Judge, in his judgment in CFPH2. He established a
     test which comprises the following two steps:

          Identify what is the advance in the art that is said to be new and not
          obvious (and susceptible of industrial application).

          Determine whether it is both new and not obvious (and susceptible of
          industrial application) under the description "an invention" in the sense of
          Article 52 of the European Patent Convention (EPC) ­ broadly
          corresponding to section 1 of the Patents Act 1977.

10   I have to say, however, that Dr DeVile, at the hearing expressed doubt as to
     the applicability of this test, as I discuss below.

     Argument as to issues in common and the law

11   It is clear from the correspondence, and what was said at the hearing, that the
     objection taken by the examiners was that the inventions are in substance to a
     computer program. Dr Devile argued that both these inventions are to do with
     interactions between devices in communication, and therefore can't be
     characterized as "a program for a computer", given the basic principle of
     construction of statute which requires an exclusion to be construed narrowly.

12   He also referred me to section 130(7) which requires that I should, as far as
     practicable, make a decision which would have the same effect as under the
     provisions of the European Patent Convention. At the hearing, and more
     specifically in the correspondence prior to the hearing, Dr Devile alluded to an
     examination report on the equivalent case to GB0423859.8 from the EPO
     examiner which he said "hinted very strongly" that the invention made a new
     and non-obvious contribution to the art.

13   He referred me to the TRIPS Treaty, Article 27 of which requires that patents
     are available in all areas of technology.

14   He expressed the view that the application of the CFPH tests is not appropriate
     in this case, but that I should be considering against a background taught by
     the decisions in Vicom3, Fujitsu4, IBM5, Hitachi6, Shopalotto7 , ARM8 and Sun
     Microsystems9. He said that the UK Courts and Patent Office have used
     different tests for determining obviousness, and that, in his view, the second of
     the two CFPH tests will lead to different results than applying the test in
     Hitachi, and thus CFPH could, in his view, be misleading. He put forward an
     analysis based on the problem/solution approach for the two cases, which he
     said is the approach I should follow. He also felt that I should be looking for a

     2
       CFPH LLC's Application [2005] EWHC 1589 Pat
     3
       EPO T 0208/84
     4
       [1997] EWCA Civ 1174
     5
       EPO T 0935/97
     6
       EPO T 0258/03
     7
       [2005] EHWC 2416
     8
       BL O/066/06
     9
       BL O/057/06
     "technical effect".

15   There was also some discussion at the hearing as to whether the fact that the
     invention could be embodied in hardware or in software affected the decision
     as to patentability under the computer program exclusion. Dr DeVile asserted
     that, if embodied in hardware, this would be a novel in the sense that it reacts
     in a different way. The examiner argued that this was an occasion where the
     hardware would react in this different way purely because of the underlying
     software programming.

     Decision on common issues and law

16   Taking first the issue of the TRIPS Agreement. The specific article of interest is
     Article 27 which concerns the range of subject matter for which patent
     protection must be made available by signatories to the Agreement. The parts
     of Article 27 which Dr DeVile stressed in his presentation say (with his
     emboldening to emphasise the relevant words);

             "patents shall be available for any inventions, whether products or
             processes, in all fields of technology, provided they are new, involve an
             inventive step and are capable of industrial application."; and

             "patents shall be available and patent rights enjoyable without
             discrimination as to the place of invention, the field of technology and
             whether products are imported or locally produced."

17   The TRIPS Agreement has not changed what is and is not patentable in the
     UK. It is a general principle that Treaties are not self enacting. Therefore any
     change in existing law that is to be introduced as a result of a treaty becoming
     effective need to be enacted in legislation. That the TRIPS Agreement is no
     exception to this principle was confirmed by Jacob J in Lenzing AG's European
     Patent (UK)10, where he found that the Agreement has no direct effect. In other
     words, the Agreement did not automatically override any existing law when it
     became effective on 1 January 1996. No amendments to the exclusions
     contained in section 1 of the Act have been deemed necessary following the
     coming into effect of the Agreement. I therefore do not feel that this argument
     is of relevance to my current task which is to decide whether the application in
     suit meets the requirements of the Patents Act.

18   It is convenient to turn next to Dr DeVile's submissions on the appropriateness
     of the CFPH approach, namely that this judgment is inconsistent with EPO
     decisions and practice. In this context I note firstly that one of the principal
     drivers behind the CFPH judgment was to reconcile the differences in the
     approaches of the EPO and the UK Patent Office on patentability. The Deputy
     Judge made an extensive analysis of the case law ­ of both the UK courts and
     the EPO - before proposing the two step approach referred to above. He
     concluded that the two approaches should provide the same result if applied
     properly. In its aim of providing a convergence of approach consistent with
     case law, this judgment in fact moves away from the old UK approach towards

     10
          [1997] RPC 245
     the EPO approach.

19   I thinkthe proper position is that in assessing patentability, I must have regard
     primarily to the Patents Act and to the precedents on its interpretation provided
     by judgments of the UK courts. By following the guidance in these judgments, I
     shall be taking into account EPO decisions to the extent intended and
     approved by the UK courts. Decisions of the EPO Boards of Appeal are of
     persuasive value and to the extent they are consistent with the interpretation
     applied by the UK courts, I can also take them into account directly. Mr
     Prescott in his discussion in CFPH frequently equates what is patentable with
     technology and technical subject matter and subsequent judgments have
     confirmed that CFPH is not inconsistent with the technical contribution
     approach eg as in IBM, Hitachi and Fujitsu. However, "consistent with" does
     not mean "exactly the same as". What has changed is how one analyses the
     invention in order to make that determination. The CFPH judgment provides a
     new way, arguably more secure and consistent in its application, of doing so. I
     am bound to follow this precedent and adopt this way of analysis. However, I
     feel able to acknowledge, given the body of case law, that, in my view, if the
     advance in fact involves a "technical effect" then the invention cannot relate to
     excluded subject matter. The second CFPH test does not, unfortunately,
     assist with the very difficult determination of what is and what is not technical.

20   Turning now to the submission that these inventions cannot be "a program for
     a computer" as, in operation, there are at least two computers ("data
     processing devices" or "user devices" in the claims) involved, communicating
     over a network. I am afraid that I cannot agree. My understanding of the
     inventions taken from the specifications and the explanations given at the
     hearing is that, in operation of the method, various specified effects and
     actions take place at one or another of the computers. Looked at from the
     point of view of the method, this gives the impression that Dr DeVile was
     emphasizing. However, it seems to me that this is too narrow a view. To be a
     participating member of the peer-to-peer community within which these
     inventions work, it would seem to me clear that each data processing device
     must contain all of the functionality to act as a "first user" and as a "second
     user" or "previous user". Therefore, in reality, each device has all of the
     software, whether or not all of it is in use at any one time.

21   As to the argument that the exclusion must be given a narrow view, and thus
     "a program for a computer" means a single unitary collection of instructions,
     again, I cannot agree. As was said during correspondence, it is commonplace
     for programs to be modular, with sub-routines called when appropriate. The
     Patents Act clearly intends programs to be excluded, and I think it would make
     a nonsense of the clear intention of Parliament if this exclusion could be
     avoided merely by saying that different sub-routines are performed in different
     physical locations eg processors. This is particularly so in the modern world
     where computers with multiple processors are well-known. I consider that this
     would equally apply here, even if the processors are separated and connected
     by a communication link, which was acknowledged at the hearing as
     conventional.

22   I think that this issue is related to the discussion as to hardware/software that
     took place at the hearing. The expression of the functionality as a method has
     been given an importance that belies the substance of the invention. It is well-
     established law that, in patentability cases, the focus should be on the
     underlying substance of the invention, not the particular form in which it is
     claimed. Having carefully considered all of the submissions, I am convinced
     that, in principle, the inventions lie in the underlying series of instructions and
     actions to produce the specified effects. Whether this is a program for a
     computer as such and therefore excluded, will depend upon the application of
     this principle to the facts of the two inventions.

     GB0423858.0

23   At the hearing, Dr DeVile took me through the prior art, US6029161, which
     was cited at an earlier stage of the proceedings to demonstrate what was new
     and not obvious about the invention. The examiner took no issue with his
     analysis. I find myself in agreement with Dr DeVile's analysis, and therefore
     find that, in answer to the first CFPH test, the advance in the art which is said
     to be new and non-obvious is a computerized method or device where the use
     of metadata attached to content files allows the identification of an alias name
     of a previous user to enable searching of other files for content in a
     communication session with the previous user.

24   So I must now turn to the second test. Dr DeVile presented the invention as
     being a solution to a technical problem. As he said "The technical problem is
     how to search for media items within a peer-to-peer network "and he
     emphasized that no server was involved in the search process. He then
     presented the technical solution as being the provision of the meta-data which
     includes anonymous identifiers of previous users ("aliases"). He said that
     advantages of this is that the invention could be used to determine copyright
     and/or surveys as to usage.

25   It was acknowledged at the hearing that the communications techniques and
     the search techniques were not at the heart of the invention. It is clear to me
     that the invention depends upon the content of the communications, choice of
     information to record, and where to record it. Once the decision is taken of
     what to store and enquire upon, there is neither technical invention to doing
     this nor any improvement at a technical level. It is clear that the hardware and
     programming techniques to put the invention into effect (whether embodied in
     hardware or software) are entirely conventional. Even the absence of a central
     server, presented as being a technical effect, is a natural consequence of the
     selection of content and storage location. Thus, any improvement is to do with
     the choice of intellectual information and the program instructions to use it.
     Any perceived problems are not solved in a technical manner in the invention,
     but are avoided by the intellectual selection of information and its storage
     location. Try as I might, I can not perceive of this as having any technical
     character, as was argued for. I therefore find that the invention relates to a
     computer program as such and thus is not an invention that I can say is "new
     and not obvious (and susceptible of industrial application) under the
     description "an invention" in the sense of Article 52 of the European Patent
     Convention (EPC)".
26   At the hearing, I asked Dr DeVile whether, in the event that I found the
     invention at the level of the independent claims to be not patentable, there was
     anything within the application that he would argue would confer patentability.
     He was unable to point to anything. I have carefully considered the content of
     the application, and can see nothing which I consider would save the
     application. I must therefore refuse this application.

     GB0423859.8

27   As with GB0423858.0, Dr Devile used the documents which were cited during
     prosecution to demonstrate what was new and not obvious about the
     invention. Again, the examiner took no issue with this, and I again find myself
     in agreement with Dr DeVile's analysis. I therefore find that, in answer to the
     first CFPH test, the advance in the art is, in the context of a data
     communications network including a method or device in which users self-
     select identifiers to indicate their personal interest(s), a method or device
     which allows a first user to send a polling enquiry to a second where the list of
     identifiers is correlated with those of the second whereupon the message
     adapts and returns the polling message showing which identifiers the second
     and first users have in common.

28   Dr Devile said that the technical problem is how to identify users within a peer-
     to-peer network with common interests without using a central server as in the
     prior art, and again indicated that the method had the advantage that it could
     be used in copyright protection or in surveying users.

29   Again it was acknowledged at the hearing that the communications link was
     conventional, as was the correlation operation. I think it is again abundantly
     clear that the hardware and programming techniques to put the invention into
     effect (whether in hardware or software) are entirely conventional. The
     differences lie at the higher, conceptual level of where to store information.

30   I can perceive of no technical advance in deciding to store known information
     in a different place. Whilst doing this will indeed avoid the need for a central
     server, this is just what it says, an avoidance of a technical problem, not a
     technical advance solving this problem. I therefore find that the invention
     relates to a computer program as such and thus is not an invention that I can
     say is "new and not obvious (and susceptible of industrial application) under
     the description "an invention" in the sense of Article 52 of the European Patent
     Convention (EPC)".

31   I specifically asked Dr Devile at the hearing whether, were I to find the main
     claims unpatentable, there was anything else in the specification that he would
     argue as being patentable. He suggested, firstly, including reference to a third
     user, to reinforce the polling around the community. Secondly, he referred to
     the possibility of including the feature in this case that an identifier could be a
     web address of a site which has been visited by a user.

32   I do not consider that either of these would add anything which would change
     my decision above. I do not consider that extending to a third user would add
     anything patentable or technical. The invention would still be concerned with
     the fundamental idea of storing information in a particular place. As for using a
     web-site address as one or more of the identifiers, this is all about the
     intellectual content of the information, and not anything technical. I have
     considered the rest of the specification, and can see nothing else which I
     would consider to make the invention fall outside the exclusion, and therefore
     must refuse the application

     Conclusion

33   For the reasons given above, I refuse both applications. Also, since I have
     determined that I can see no saving amendment within either application, I do
     not give any further opportunity to amend.

     Appeal

34   Under the Practice Direction to Part 52 of the Civil Procedure Rules, any
     appeal must be lodged within 28 days.




     Bruce Westerman
     Deputy Director acting for the Comptroller