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UK High Court decision involving patentable subject matter – computer programs


The U.K. High Court (Chancery Division, Patents Court) in a recent decision has rejected a claim that software that enables data to be transferred from one computer on which the data is stored, to another machine connected remotely is patentable.  This decision is important as the UK patent law has language similar to the Indian patent law as relates to patentability of “computer software”, and because the decision clarifies the procedure to be used while determining a technical effect.  The discussion is divided into two parts.  This post discusses the UK decision and a subsequent post would discuss the application of this decision in the Indian context.  Long post (part 1/2) follows.


Background

Lantana Ltd. had applied to the U.K. Intellectual Property Office (UKIPO) for a patent related to an “electronic data retrieval system” involving the transfer of data between two different computers.  At a hearing involving the patentabilty of Lantana’s application, a UKIPO officer rejected Lantana’s application as the claimed subject matter of the invention was not patentable.  The rejection was made on the ground that the claimed subject matter related to “a computer program as such“.  Lantana appealed to the UK High Court on the ground that the UKIPO officer had erred in considering the invention as not patentable.

Claim 1 from Lantana’s (UK application) is reproduced below:

Claim 1 (key parts highlighted):

An electronic data retrieval system comprising a local station, a remote station, a packet switched network to provide a transmission path between the local station and the remote station, and a machine-readable data storage device storing retrievable data files including machine-readable data representing at least one of a visual product and an audio product,

wherein said local station includes:

a data store storing a plurality of machine-readable data retrieval criteria identifying data files among said retrievable data files stored at said machine-readable data storage device to be retrieved;

a packet switched network interface connected to said packet switched network;

a user interface co-operable with said data store and interactable with a user, to enable selection by the user of one or more machine-readable data retrieval criteria; and

an electronic processor configured to produce, in response to the selection by the user of the one or more machine-readable data retrieval criteria, a first e-mail message including the selected one or more machine-readable data retrieval criteria together with a machine-readable instruction for retrieving data files, among said retrievable data files stored at said machine-readable data storage device, using the selected machine-readable data retrieval criteria, and to send the first email message to the remote station via said packet switched network interface and said packet switched network;

wherein said remote station includes:

a packet switched network interface connected to said packet switched network to receive the first e-mail message from the packet switched network;

a filter adapted to parse the first e-mail message to determine whether the first e-mail message includes any machine-readable instruction and any data retrieval criteria; and

an electronic processor to execute the first machine-readable instruction, and upon execution of the machine-readable instruction and in accordance with the selected machine-readable data retrieval criterion, retrieve the one or more required data files among said retrievable data files stored at said machine-readable data storage device from the machine-readable data storage device, produce one or more second e-mail messages, the one or more second e-mail messages including the retrieved one or more data files as one or more attachments, and send to said local station, via the packet switched network interface of the remote station, and the packet switched network, the one or more e-mail messages and one or more attachments.

This claim may be summarized as follows: A user retrieves data from machine B, connected via a packet switched network, from a machine A  – using an email message that contains machine B readable instructions to retrieve the data.  The email is sent from machine A and machine B emails the results / data to machine B.

Applicable Law

Under European patent law, and UK patent law (as applied) an invention involving a computer program is patentable if it has a “technical contribution”. 

Under Section 1 (2) of the (UK) Patents Act 1977, certain exclusions to patentability are provided.  Section 1(2) of the UK patent act implements Article 52 of the European Patent Convention.  Under the UK patent law, to qualify for a patent, the invention must be (1) new, (2) have an inventive step (or not obvious), and (3) be useful to the industry.  However, like section 3 of the Indian patent act, under the UK patent law under section 1(2), an invention cannot be patented, if it is ” a discovery, scientific theory, mathematical method, ..schemes, rules, methods for performing mental acts, …programs for computers.”


Patentability of computer programs, had before Lantana’s case, been heard in the UK Court of Appeals in HTC v Applecase.  The HTC v Apple case reviewed the existing case law in the UK including Aerotel Ltd v Telco Holdings Ltd; Symbianv Comptroller-General of Patents and the guidelines issued by the European Patent Office.

According to the case as discussed, under UK patent law, to determine whether there is technical effect, the four stage approach (as provided under Aerotel) to determine technical effect is :

i) properly construe the claim;

ii) identify the actual contribution;

iii) ask whether it falls solely within the excluded subject matter;

iv) check whether the actual or alleged contribution is actually technical in nature.

The judge also considered signposts (provided in AT&T Knowledge Ventures)that may indicate whether there is any technical effect:

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.

Issue

The UK IPO officer rejected Lantana’s claim as it claimed programs for computers and that there was no technical effect of the Lantana’s computer program.  Lantan appealed arguing that the UKIPO officer had misapplied the law.

Arguments

Lantana argued that the invention claimed had technical effect.  Lantana argued that the EPO decision in IBM CORP T6/83 held that a method of communication between programs and files held at different processors within a known network was patentable.  However, the judge did not accept this argument stating that what was patentable in 1988 does not mean that any method of communicating between programs and files on different computers over a network necessarily involves a technical contribution today.

The judge also considered the factors involved in determining technical effect and found that they did not assist Lantana.  The judge held …  “[However] the fact the claim is novel and inventive is not the determinant of whether it satisfies Art 52 EPC (requirements for patentability).  Being novel and inventive is not what takes a contribution outside the excluded area nor is it what makes an effect or contribution “technical”.

Analysis

Lantana relied on the following four effects:

(i) telecommunications messages are generated by computers forming part of a telecommunications network, and transmitted from one computer to another over the network;

(ii) one computer remotely controls the processing performed by another via a telecommunications network;

(iii) the result of this remote control is the transmission of files and information from the remote computer over a telecommunications network to the local computer;

(iv) this remote control and transmission is achieved in a manner which does not require a continuous connection between the two computers.

The judge considered all four and found that the first effect did not help Lantana as the invention involved … “communication between two computers over the internet, and everything is going on inside the computer.  Lantana claimed that the second effect involved one computer remotely controls another.  The judge did not accept this argument and rather held that it was one computer is sending an email message to another.  Similarly, the third effect – remote control over a telecommunications network – was rejected by the judge as it was nothing new.    Similarly, for the third effect – that it common (at the time of Lantana’s invention) that files or information are transferred from one computer to another over a telecommunications network.  With respect to the fourth effect, the UKIPO officer held that the use of email was merely circumventing the problem and not solving it, and the judge accepted it. 

The judge considered the five signposts and held that the Lantana’s application had no technical effect.  The first sign post did not help Lantana as the operation was inside the computer.  The second did not help Lantana as the program did not operate at the architecture level.  Rather, the data is retrieved remotely by piggy-backing on the operation of an e-mail application. The judge distinguished the case of Symbian where a computer program was patentable because it allowed a computer to operate on other programs faster.  The third did not either because there was no new way of operation.  The fourth signpost also did not help because neither of the two computers or the network being intrinsically was more reliable as a result of Lantana’s program.  The final signpost did not help as Lantana tried to circumvent the problem.


The key take away from this case is that for a claim to be patentable in the UK, it must be novel, inventive, useful and have technical effect.
Rajiv Kr. Choudhry

Rajiv Kr. Choudhry

Rajiv did his engineering from Nagpur University in 2000 in electronics design technology. He has completed his LL.B. from Delhi University, Law Center II in 2006, while working as an engineer at ST Microelectronics in NOIDA. After his LL.B., he went on to The George Washington Univeristy, Washington DC to do his LL.M. in 2007. After his LL.M., he has worked in the US at a prestigious IP law firm based out of Philadelphia. Till 2014, he was Of-Counsel to a Noida based IP law firm where he specialized in advising clients on wireless, telecommunication, and high technology. Rajiv is the founder of Tech Law Associates, a New Delhi based law firm specializing in IP law, with a focus on high - technology, and patent law. His core IP interest areas are the intersection of technology and IP, Indian IP policy, innovation, and telecommunications patents. He is also an inventor with pending applications in machine-to-machine communications domain (WO2015029061).

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