Software Patents: Court of Appeal Ruling

December 1, 2014

In Lantana Ltd v The Comptroller General of Patents, Design and Trade Marks [2014] EWCA Civ 1463, the Court of Appeal has supported the rulings of the Comptroller and Birss J and ruled against granting a patent in respect of software. As Arden LJ put it, ‘the invention is no more than the computerisation of a process which could already be done without a computer’.

Despite the relatively easy conclusion of the claim, the case is of interest for the discussion by Arden LJ and Kitchin LJ of the various exceptions to exclusion which might have applied. As readers will know, computer programs are not wholly excluded from patent protection; they are excluded unless the applicant shows that his application goes beyond an application for a computer program ‘as such’. 

Lantana’s application related to a method of extracting and transferring data between two computers.  It works when both computers are linked up to the internet and one makes a request to the other for a file.  The local computer will have a list of the documents on the other computer. The user of the local computer sends an e-mail message to the other which automatically responds by sending a message to the local computer with the file attached.  Arden LJ illustrated this by using the example of a solicitor who had gone to South America and wished to use a precedent for a joint venture agreement which he had on his desk computer in his London office. He or she could use the software to get the file for use where he or she was located abroad without the need for continuous connection to the server in London and the risks of being hacked while so connected or losing the connection. 

In seeking to claim that there was a technical contribution, Lantana relied on Decision 83/0006 IBM (where a method of communication between programs and files held on different computers was held to be patentable).  However, while acknowledging the similarity, Arden LJ stated (at [42]) ‘that decision is now over twenty years old and this is a very fact-sensitive area … 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’.  She went on to observe (at [53]):

It is not the fact that the invention relates to a computer program that renders it un-patentable.  The exclusion is not so worded.  It is worded as a partial exclusion.  The invention must make some technical contribution over and above that provided by the program itself, such as an improvement in the working of the computer ….  In this case, there was no technical contribution outside the computer program. The transfer of data and recovery of the file by an automatic email were not inventive steps in themselves.  Thus I conclude that the computer program does not relevantly operate as more than a program.  Lantana may overcome the hurdle of achieving a novel and inventive step but it has not overcome the hurdle of being excluded matter under section 1(2) of the PA 77.  This appeal must be dismissed.