Cases Round-up

December 31, 2014

Software Patents: Court of Appeal Supports Refusal

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.

Web Sites, Jurisdiction and Copyrighted Pornographic Pictures

A tawdry wrangle over the copyright in photographs which appeared on a web site providing escort services was resolved by the High Court in Omnibill (Pty) Ltd v Egpsxxx Ltd & Anor [2014] EWHC 3762 (IPEC). There was no dispute that copyright in the photographs used in advertisements (generally pornographic in nature) on the Escortgps web site belonged to the claimant or that copies of the photographs were taken from the claimant’s web site. The areas of dispute concerned who was actually responsible for that web site and whether the website or the relevant parts of it were targeted at the UK.

Birss J, citing Pammer, described the question of whether a web site is targeted to a particular country as a multi-factorial one which depends on all the circumstances, including things which can be inferred from looking at the content on the web site itself and elements arising from the inherent nature of the services offered by the web site. He also pointed out that the entire contents of a web site will not necessarily have to be treated in the same way. However, in this case, the judge took the view that the figures on web site traffic supported the view that a ‘substantial proportion’ of visitors were from the UK, notwithstanding inter alia that all the entries for escorts to whom the claim related were based in South Africa and gave South African telephone numbers and prices were given in rand.

The second issue to which Birss J turned was whether a Mr Carter, the second defendant and director of the Escortgps, was personally responsible for the infringing acts of the defendant company. There was some evidence that Carter was a pawn in the porn games played by a South African, van Tonder. But, as Birss J pointed out (at [64]):

Mr Carter is the only person through whom the company could act in any way at all. He knew that the first website was alleged to infringe both copyright and registered trademarks. I recognise that the copyright claim was unspecific but there are steps that could have been taken at the time to find out more about that if he had been concerned about it. He agreed with Mr van Tonder to set up the new website in the company’s name and that is what happened. It would be unreal to find that Mr Carter is not personally liable for the infringements committed by this company.

Data Protection, the Refugee and Fundamental Rights

In Trushin v the National Crime Agency [2014] EWHC 3551 (Admin) the Administrative Court had to consider a claim by a Russian who had claimed political asylum following the decline and fall of Yukos Oil, with which he had been prominently involved.

The claimant’s concern was the manner in which his personal and sensitive personal data is (and is likely to be) processed by the National Crime Agency (‘NCA’), and how it was previously processed by the Serious Organised Crime Agency. The Russian authorities wanted Mr Trushin to return to Russia to face the consequences of criminal proceedings relating to Yukos. He had been tried and convicted in absentia on various charges of embezzlement and money laundering and then sentenced to nine years’ imprisonment. Essentially, Mr Trushin’s claim was that the processing of his personal data by the NCA whilst he is protected from extradition to Russia by reason of his refugee status is unnecessary and unlawful and should cease. His claim cited the Data Protection Act 1998, s 10 and his rights under the Human Rights Act 1998 and the EU Charter.

The latest hearing was upon the NCA’s application to have those proceedings struck out and/or obtain summary judgment. That context therefore required only that Foskett J consider whether the claimant had an arguable case.

The practical concern was that, in its role within Interpol, the NCA would respond to requests from the Russian authorities by providing information that might cause Mr Trushin substantial harm. The NCA’s principal argument was that the Data Protection Act 1998, s. 29 exempted its disclosure activities insofar as they were carried out (on these facts) in pursuance of its powers (or duties) under the Crime and Courts Act 2013, s 7. Section 29 of the DPA exempts a body from the general non-disclosure principle where disclosure is for the prevention or detection of crime or the apprehension or prosecution of offenders. But that exemption is limited and applies only where non-disclosure prejudices those aims. The NCA also claimed that it was protected by sch. 2 to the DPA.

On a close examination of the NCA’s procedures, it became clear that it was not a ‘mere conduit’ in supplying information to Interpol and that it was subject to, and applied the principles of, the duties of a public authority under the ECHR, Article 8.

Foskett J did not consider that the grounds for striking out the claim were made out or that summary judgment was appropriate. He concluded that it was not certain that the claim would fail – indeed he considered that it raised an issue of some importance in relation to the NCA’s general responsibilities for processing personal data going beyond the circumstances of Mr Trushin’s case.