Lantana's lament: no technical contribution, no patent

Technical contribution? Dream on ...!

It may not be Alice v CLS Bank International all over again, but Lantana Ltd v The Comptroller General of Patents, Design and Trade Marks [2014] EWCA Civ 1463,  a Court of Appeal for England and Wales from 13 November, shows that when it comes to disqualifying computer software from patentability [or patent eligibility, as the Americans prefer to call it] on the basis that it doesn't disclose an invention, the Brits can do the job at least as elegantly as the Yanks. The court, consisting of Lord Justice Kitchin together with Lady Justices Arden (who delivered the main judgment) and Gloster, also had a chance to revisit the Court of Appeal's earlier decision in the combined appeals in Aerotel/Macrossan -- and its three-or-is-it-four-step test of excluded subject matter, a test motivated by the alarm bells set off by the UK Intellectual Property Office when the number of hearings concerning patentability of computer programs had risen from just a couple a year to around four a week.

The following note on Lantana is brought to you via the good services of our good friend and occasional guest contributor Paul England (Taylor Wessing LLP), who writes as follows

Data transfer method makes no technical contribution

The Court of Appeal has held the invention disclosed in a patent application by Lantana Limited to be excluded from patentability, as a computer program “as such”.

Lantana’s application was for a method of extracting and transferring data between two computers, involving the computers being linked up to the internet and one making a request to the other for a file.  The local computer has 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. The virtue of the invention, Lantana claimed, is that it saves the need for continuous connection to the remote computer and the risks of being hacked while connected, or losing the connection. But does this make it patentable?

The appeal focused on section 1(2) of the UK's Patents Act 1977 [= European Patent Convention Art.52], which excludes patents for computer programs unless the invention goes beyond the computer program “as such”. Accordingly, following the four-step test in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Patent Application [2006] EWCA Civ 1371, if the invention makes a contribution that is technical in nature, then the invention may be patentable, subject to other objections to patentability – novelty, inventive step etc. 

While there is no comprehensive test for identifying a technical contribution, the courts have established a number of “signposts” to assist (AT&T Knowledge Ventures’ Application [2009] EWHC 343 (Pat), [2009] FSR 19 (as refined)). However, both the Hearing Officer of the UKIPO and Birss J, in the Patents Court, held that these did not assist Lantana in this case; there was no identifiable effect outside the computer program itself, such as making a better computer. As the Hearing Officer said: 

“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” 

and that, as regards the connectivity problem, 

“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.” 

Birss J concluded simply that “In substance the claim relates to computer software running on conventional computers connected by a conventional network”. The Court of Appeal has agreed, holding that the invention is excluded matter, having no relevant technical effect.

What is a lantana? Click here to find out
Lantana the movie here
Latest Australian jurisprudence on the same issue in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, noted on Patentology here.