Court rules on computer-implemented inventions

Lantana Limited v The Comptroller-General of Patents, Designs and Trade Marks

This was an unsuccessful appeal by Lantana from the decision of Birss J ([2014] EWHC 2673 (Pat)). The lead judgment was given by Arden LJ, the other judges agreeing.

This case is of interest as it looked at the current position in relation to excluded subject-matter and in particular, computer-implemented inventions. The judgment also looked at the use of EPO decisions as precedents.

The application related to a method of extracting and transferring data between a local computer and a remote computer connected to the local computer via the internet. When required, the local computer created an email message containing machine-readable retrieval criteria and sent it to the remote computer. The remote computer received the email, determined whether the email contained any machine readable instruction and, if so, executed that instruction, retrieved the data and sent back an e-mail containing the requested data.

At first instance, the Hearing Officer had refused the application, summarising his decision (at paragraph [29]):

the contribution is a better way of retrieving data from a remote station by using e-mail to transmit retrieval criteria and to receive back the corresponding data. I can see no technical effect outside of the two computers. Neither is either computer or the connecting network operating in a new way. I am therefore forced to conclude that the contribution is excluded as a program for a computer as such.

Lantana had appealed to the High Court, relying particularly on the EPO decision IBM CORP/Data processor network (T6/83) [1990] OJ EPO 5 as an example of a case where a method of communication between computers was held to involve a technical contribution.

The case was unusual in that the claim was held to be novel and inventive. Therefore, Lantana further argued that the Hearing Officer had misapplied the law because he should have held that what made these various aspects patentable and revealed their technical character was the fact that they were achieved by the novel and inventive processing set out in the claim.

Birss J had disagreed, and had dismissed the appeal:

The claim has been found to be novel and inventive by the examiner and in that sense it makes a contribution of some kind to the art, but the applicant has been unable to identify anything which this claim can fairly be said to contribute which has a technical character. In my judgment this claim is to unpatentable subject matter and is contrary to s1(2) of the Act / Art 52 EPC.

Lantana’s main point on appeal to the Court of Appeal was that Birss J should have confined himself to looking at the claim as a whole rather than its constituent parts. The relevant technical effect might be in the functionality of the computer and in the means of achieving a result. However, Arden LJ rejected that argument:

In my judgment, the judge could not determine whether there was a relevant technical step outside the computer program without breaking the invention down into its constituent parts. In fact he also looked separately at the whole of the invention as well, but his assessment overall does not assist Lantana.

Further, Lantana argued that Birss J had been wrong in law to conclude that the transfer of a file across the internet could not be part of the contribution because of the prior art. Furthermore, it was also argued that the judge had been wrong in drawing an analogy between features of the claimed invention and computer viruses. However, Arden LJ also dismissed these arguments:

the relevant technical step was the fact that the computers communicated with each other, but they did so in a way which was unquestionably conventional, namely via the internet, so the judge was right to hold that this was not a relevant technical contribution.

In my judgment, it is also common knowledge that computer viruses can lead to the automatic transmission of emails. There was also evidence that the prior art included the sending of machine readable signals by email. Therefore it was open to the judge to assess the third step as not making a technical contribution.

Therefore, the appeal was dismissed, with Arden LJ noting:

In this case, there was no technical contribution outside the computer program. The transfer of data and recovery of the file by an automatic email were not inventive steps in themselves. Thus I conclude that the computer program does not relevantly operate as more than a program. Lantana may overcome the hurdle of achieving a novel and inventive step but it has not overcome the hurdle of being excluded matter under s1(2) of the PA 77. This appeal must be dismissed.

Treating EPO Decisions as Precedents

An interesting point arose in relation to EPO decisions. Lantana relied upon a number of EPO decisions. However, this was objected to by the Court on the grounds that the two jurisdictions may reach the same conclusions, but do so through a different methodology:

The position may be that the EPO and the English court ask the same questions – is there a contribution and, is that contribution solely within the exclusion? – but in a different order. The decisions of the EPO, therefore, provide only limited assistance to this court in determining whether the process adopted by the judge in this jurisdiction was flawed.

Case No. [2014] EWCA Civ 1463