Case Law Review – BL O/244/13


BL O/244/13

Claimed Subject Matter:

The invention relates to a method of synchronizing data, including representing messages as text or binary property list files (plist). The synchronization protocol provides for exchanges between a client and server in which separate sync modes (e.g. fast, slow, reset) are associated with different dataclasses and the dataclasses can be updated in parallel. This is achieved by proposing and agreeing the sync mode for each dataclass; sending sync-start, syncchanges and finally a sync-commit command between client and server.

Applicant: Apple Inc.

Claim 1 was directed to a server-side method and claim 10 was directed to the sychronization server.


The alleged contribution was deemed to be:

Synchronizing data including initiating a sync session by receiving a request comprising a separate proposed sync mode for each of multiple data classes, specifying changes to data of the multiple data classes, using a status code to indicate whether the sync mode for each dataclass is accepted, in accordance with the sync mode for each dataclass, updating the data and selectively committing the changes, which means that a reduced number of messages is required to be transmitted. (Paragraph 23.)

The Hearing Officer deemed that the contribution was not a method for doing business as such:

The synchronised data may be ‘business data’, and the method of synchronising it may be performed in the course of business, but the contribution to data processing is broader, for example including the  provision and processing of sync modes and does not, to my mind, mean that the contribution falls within the category of a method for doing business as such. (Paragraph 25.)

However there was more debate as to whether the contribution was a computer program as such. To determine whether it was, the five signposts from AT&T (paragraph 40) were considered.

The Hearing Officer was not convinced that saving bandwidth by reducing a number of messages was an effect provided by a communication process outside of a computer. Instead, the number of messages was reduced inside the computer. Hence, the first signpost was not satisfied (see paragraph 29).

Reviewing the reasoning in relation to the second signpost, I believe this is most open to counter-argument. In paragraph 31, the Hearing Officer found that the effect was dependent on the type of data being processed: sync mode data. However, he also argued that the contribution was defined in terms of data processing and not the nature of the data being synchronised. In sum, the Hearing Officer is saying that the contribution is dependent on a particular type of control or metadata, but that the data it is applied to can be anything.  The Hearing Officer was of the opinion that this contra-indicates a technical contribution. I could disagree – the same reasoning could also be used to demonstrate compliance with the second signpost.

With regard to the third and fourth signposts the Hearing Officer concluded that the computer implementing the invention was not changed by the invention:

All that has changed is the number and format of the messages transmitted. (Paragraph 36.)

As such the fifth signpost was also answered in the negative. As none of the signposts indicated a technical contribution the Hearing Officer concluded that the invention was a computer program as such and the application was refused.

Without delving into the detailed facts of the case the decision seemed a bit harsh. It appears to follow reasoning similar to Hitachi (T 258/03) and apply it to subject matter that in my mind is more technical. It appears to follow similar recent decisions by the European Boards of Appeal that clamp down on the “relieves bandwidth by reducing messages” argument that is often applied in these cases.

One interesting question to consider is: would the decision have been the same if the independent claims covered a system of two entities, a client and a server? If the answer is yes then this appears unfair to parties that only supply one side of the communicating equipment.

The case does nicely illustrate how the UK Intellectual Property Office (IPO) evaluates patentable subject-matter. The framework displayed in the decision can be applied to most patentability cases at the UK IPO.

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