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 Apple
case. The HTC v Apple case reviewed the
existing case law in the UK including Aerotel Ltd v Telco Holdings Ltd; Symbian
v 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.
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