Lantana Limited v Comptroller General of Patents, Design and Trade Marks [2014], England and Wales Court of Appeal (Arden, Kitchin and Gloster LLJ), 13 November 2014, Case No. EWCA Civ 1463
In this judgment the Court of Appeal of England and Wales decided a case regarding a patent application for an invention consisting of a computer program relating to the retrieval of data from a remote computer to a local computer using email.
The Court of Appeal applied existing legal principles – namely the four-stage test set out in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Patent Application ([2006] EWCA Civ 1371) – and considered the “signposts” summarised in HTC Europe Co Ltd v Apple Inc. ([2013] EWCA Civ 451) to uphold the conclusion reached by the Hearing Officer of the UK Intellectual Property Office and by the English Patents Court (Birss J) that the invention was not patentable as it was excluded subject matter, as a computer program “as such”, under s.1(2) of the Patents Act 1977.
This decision, based on the facts found by the Hearing Officer, was predicated on the grounds that the invention was no more than the computerisation of a process that could already be done without a computer and had no relevant technical effect (i.e. it made no technical contribution to the art which was not excluded matter).
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This case follows last year’s appeal by Apple in HTC v Apple regarding the patentability of computer implemented inventions (see here). In that case Apple successfully overturned lower decisions that certain patent claims concerned excluded subject matter. The Court of Appeal applied the same principles to this case, but with the opposite result.
The Court of Appeal agreed with Birss J that novelty and inventive step are not sufficient for making a contribution or effect “technical”: there must be some identifiable inventive step outside the computer program. In this case, applying the “signposts” summarised in the Apple case, the Court found that: any technical contribution of the invention lay entirely within the computer program; the invention did not operate at the level of the architecture of the computers because they operate in a conventional way; without the claimed control the computers operated as before; the program did not make either computer a better computer; and the technical problem was circumvented using a conventional technique (“a perfectly straight forward use of a familiar medium, namely the sending of an email”). Accordingly, any contribution fell solely within excluded subject matter and lacked technical character.
The Court of Appeal emphasised that decisions in this area are “very fact-sensitive” and noted that prior patentability decisions will not necessarily be valuable to establishing the patentability of similar inventions at a later date. Basically: ”it cannot be right that simply because at one point in history a process constitutes a technical contribution that the same or similar process, even if novel, will constitute a technical contribution for all time”.
More generally the Court of Appeal noted that EPO decisions (relied on by Lantana in this case in support of its arguments that the Hearing Officer had erred in law in coming to his decision) provide only limited assistance to the Court in determining whether the process adopted by the judge was flawed. The methodology of the EPO and the English courts should produce the same result, even if the EPO and the English court ask the same questions – is there a contribution and, is that contribution solely within the exclusion? – in a different order.
Read the judgment here.
Head note: Will Corbett and Sara de Sousa, Simmons & Simmons
