Lantana Ltd v The Comptroller General of Patents, Design and Trade Marks
| Jurisdiction | England & Wales |
| Judge | Lady Justice Arden,Lord Justice Kitchin,Lady Justice Gloster |
| Judgment Date | 13 November 2014 |
| Neutral Citation | [2014] EWCA Civ 1463 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3/2013/2761 |
| Date | 13 November 2014 |
[2014] EWCA Civ 1463
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT
CHANCERY DIVISION (PATENTS COURT)
Mr Justice Birss
CH/2013/0131
Royal Courts of Justice
Strand, London, WC2A 2LL
Lady Justice Arden
Lord Justice Kitchin
and
Lady Justice Gloster
Case No: A3/2013/2761
Mr Keith Beresford (instructed by Beresford & Co) for the Appellant
Mr Tom Mitcheson QC (instructed by Treasury Solicitors) for the Respondent
Hearing date: 23 July 2014
This is an appeal against Birss J's dismissal on 4 September 2013 of an appeal against the rejection by the Intellectual Patent Office ("the IPO") of a patent application for an invention consisting of a computer program. It therefore raises the question of the patentability of such inventions. This is governed by Section 1 of the Patents Act 1977 ("PA 77"), which is designed to implement article 52 of the European Patent Convention ("EPC"). Section 1 provides that computer programs, as such, cannot be patented. So on this appeal, the key issue is whether the invention escapes that exception. As the Hearing Officer, Dr Stephen Brown, put it:
"…the mere fact that the invention is effected as a computer program does not of course mean that it is automatically excluded as that thing as such. What matters is whether or not the invention provides a technical contribution beyond that of a mere program running on a conventional computer."
In my judgment, on the facts found by the Hearing Officer, the invention is no more than the computerisation of a process which could already be done without a computer. It has no relevant technical effect. Accordingly, the invention is not patentable. I would therefore dismiss this appeal.
THE INVENTION
The applicant for the patent is the appellant ("Lantana"). Lantana's application relates to a method of extracting and transferring data between two computers. Claim 1 is set out in paragraph 7 of the judge's judgment, and I do not need to repeat it. A description will suffice. The method operates when both computers are linked up to the internet and one makes a request to the other for a file. The local computer will have a list of the documents on the other computer. The user of the local computer sends an email message to the other which automatically responds by sending a message to the local computer with the file attached. So, if, for example, the user were a solicitor who had gone to, say, South America, and wished to use a precedent for a joint venture agreement which he had on his desk computer in his London office, he could use this software to get the file for use where he was located abroad. Lantana claims that this method saves the need for continuous connection to the desk computer in London and the risks of being hacked while so connected or losing the connection. I will call this problem "the problem of vulnerable connectivity".
Lantana amended its claim as regards the way emails were entered on the computer, but nothing in this appeal appears to turn on those amendments.
The Comptroller General of Patents did not raise a novelty or inventive step objection but considered that that was not enough to make the invention patentable because of section 1(2) of the PA 77, to which I now turn.
SECTION 1 OF THE PA 77
Subsections 1(1) and (2) of Section 1 PA 77 in summary provide that a patent can be granted for an invention provided that it is new, involves an inventive step and is susceptible of industrial application. However, subsections (1)(d) and (2) exclude a number of matters, including computer programs as such. Subsections (1) and (2) provide:
"(1) A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say—
(a) the invention is new;
(b) it involves an inventive step;
(c) it is capable of industrial application;
(d) the grant of a patent for it is not excluded by subsections (2) and (3) [or section 4A] below;
and references in this Act to a patentable invention shall be construed accordingly.
(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."
Computer programs are not therefore wholly excluded. They are excluded unless the applicant shows that his application goes beyond an application for a computer program "as such". I refer to computer programs which are within the exclusion and not patentable, as "excluded matter". The issue here is whether the technical contribution to the known art provided by the invention consists of excluded matter.
JUDGMENT OF BIRSS J
The judge's starting point was the holding by Kitchin LJ in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 that it was appropriate for the court, when considering the patentability of computer programs, to adhere to the four-stage process set out in Aerotel Ltd v Telco Holdings Ltd; Macrossan's Patent Application [2006] EWCA Civ 1371. The judge then set out the four-stage approach which is as follows:
"The approach is in four steps:
'(1) properly construe the claim;
(2) identify the actual contribution;
(3) ask whether it falls solely within the excluded subject matter;
(4) check whether the actual or alleged contribution is actually technical in nature.' (see Aerotel at [40] per Jacob LJ giving the judgment of this court)."
In this case, there was no dispute as to the interpretation of the claim. The issue was whether the invention made a technical contribution.
The courts have worked out "signposts" to assist in determining whether there was any technical contribution. These signposts will not assist in every case. These signposts originated in the judgment of Lewison J in AT&T Knowledge Ventures' Application [2009] EWHC 343 but were refined on appeal in HTC v Apple. It is sufficient to repeat the judge's summary of the signposts from HTC v Apple:
"13 The signposts to a relevant technical effect (as modified in HTC v Apple) are:
i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;"
ii) whether the claimed technical effect operates at the level of the architecture of the computer, that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
iii) whether the claimed technical effect results in the computer being made to operate in a new way;
iv) whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer;
v) whether the perceived problem is overcome by the invention as opposed to merely being circumvented."
The Hearing Officer considered the signposts, but concluded that they did not assist Lantana. His conclusions on the fourth and fifth signposts are relevant to this appeal:
"27 In respect of the fourth signpost, any increase in the reliability of the data retrieval process is solely due to the use of e-mail rather than any other communication method. There is no evidence of either of the two computers or the network being intrinsically more reliable themselves. In the case of Symbian it was accepted that an overall improvement in reliability of the computer itself was achieved. The contribution in this case does not seem to operate with anything like the same level of generality.
28 Finally, in respect of the fifth signpost, the problem addressed is that of how to retrieve data from a remote station without the usual problems associated with establishing a continuous connection to said station. The current application addresses this issue by choosing to use a well known non-continuous communication technology instead, namely e-mail. The contribution cannot be said to solve the problems identified. Rather it circumvents the problems of maintaining a good continuous connection by simply not using a continuous connection."
The Hearing Officer went on to conclude that the contribution was excluded matter and summarised his conclusion as follows:
"29 To summarise: 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."
Before the judge, the appellant's principal case was that the Hearing Officer 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.
The judge rejected the submission that the invention was patentable if it was novel and inventive. He held:
"Being novel and inventive is not what takes a contribution outside the excluded area nor is it what makes an effect or contribution...
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