No patent for software data transfer

The Claimant had filed a patent application titled ‘Methods, Systems, and Computer program products for retrieving a file or machine readable data’ code. The UK IPO refused the patent application on the basis that the subject matter of the invention was not patentable as it related to “a computer program as such”. Lantana appealed this decision to the High Court. Lantana argued that the IPO hearing officer had misapplied patent law and that its invention should have been patentable.

Mr Justice Birss upheld the UK IPO decision that the claim was “novel and inventive” but that it related to subject matter that is unpatentable. He further went on to state that he “found nothing which amounts to a technical contribution” arising from Lantana’s claims over patentability.

The UK Patents Act 1977 states that a patent will only be granted for an invention that fulfils all of the following criteria:

• it is new
• it involves an inventive step
• it is capable of industrial application
• it is not specifically excluded from protection as a patent.

According to the Patent Act the following are not regarded as inventions and thus cannot be patentable:

• Discoveries, Scientific theories, and mathematical methods
• Aesthetic creations
• Schemes, rules and methods for performing mental acts, playing games, or doing business
• Computer programs
• The presentation of information.

In cases such as this where the invention concerns software related inventions the courts will ask specific questions in order to determine whether the computer program in question can be shown to have provided a “technical contribution”. If this can be shown then the computer program can be patentable.

Mr Justice Birss used the four-step test adopted in the Aerotel case [Aeroetel Ltd v Telco holdings Ltd, [2006] EWCA Civ 1371]. The process set out in this case in order to determine whether a particular invention meets the technical contribution requirement is as follows:

1) Construe the claim
2) identify the actual contribution offered by the claimed invention
3) determine whether the contribution falls solely within the scope of excluded subject matter (i.e., programs for computers and) and
4) determine whether the contribution is actually technical in nature.

On appeal Lantana argued that the invention did provide the four technical effects and thus was not excluded subject matter. But Birss diasgreed, he found “nothing which amounts to a technical contribution arising from the claim” in any of the four effects.

In his judgement, Birss wrote “The task the software performs moves data from one computer to another using conventional technique for carrying out that task, i.e. email. The context in which this arises is that accessing remote computers via continuous connections can be problematic but this is not a technical solution to those problems, it avoids them, but does so using a conventional technique”

This article was written by Fozia Cheychi.


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