Software enabling data transfers between two connected computers ruled not patentable

Mr Justice Birss said he had "found nothing which amounts to a technical contribution" arising from Lantana Limited's claims over patentability.

Lantana had applied to the Intellectual Property Office (IPO) for a patent to cover an "electronic data retrieval system" involving the transfer of data between two different computers. However, a hearing officer at the IPO rejected Lantana's application on the basis that the subject matter of the invention was not patentable. This is because it related to "a computer program as such", according to the judgment.

Lantana appealed the decision to the High Court but Mr Justice Birss has now rejected that appeal.

Under the UK's Patents Act inventions must be new, take an inventive step that is not obvious and be useful to industry in order to qualify for patent protection. An invention cannot be patented, according to the Act, if it is "a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer … as such".

However, as a result of UK case law if computer programs are shown to have provided a "technical contribution" they can be patentable.

Lantana argued that its invention had four "technical effects" showing that its contribution was "technical in nature and not within the exclusions on patentability", according to the ruling.

The company claimed that the IPO's hearing officer had misapplied patent law. The hearing officer should have ruled that Lantana's invention was patentable on the basis that "the novel and inventive processing" provided by its invention demonstrated the patentability of that invention and its "technical character", the company said.

However, Mr Justice Birss disagreed with Lantana's interpretation of patent law.

"The fact the claim is novel and inventive is not the determinant of whether it satisfies the requirements for patentability in the [Patent] Act and [under] the EPC (European Patent Convention)," he said. "Being novel and inventive is not what takes a contribution outside the excluded area nor is it what makes an effect or contribution 'technical'."

Mr Justice Birss said that the four 'effects' that Lantana claimed its invention has did not help its claim as to the technical contribution and patentability of that technology.

Lantana had said that an effect of its invention was that a telecoms network between computers was developed enabling messages to be transmitted between those computers. It said this meant one computer could remotely control processing performed by another and that this in turn meant files and information were transmitted.

The final effect of the invention, Lantana claimed, was that the remote control and transmission activities are performed "in a manner which does not require a continuous connection between the two computers".

However, Mr Justice Birss said that it was "entirely conventional", at the time that the patent application was to be assessed from in 2008, for two computers to communicate with each other over the internet. He came to the same conclusion about Lantana's claimed effect in relation to the transfer of files and information between computers over a telecoms network.

The judge also said that it was not correct for Lantana to characterise an effect of its invention as enabling one computer to remotely control another.

"If one computer really was exercising control over another in some way that might be a genuine technical contribution but all that is happening here is one computer is sending an email message to another," Mr Justice Birss said. "That is not control at all. The first email message includes machine readable instructions directed to the remote computer. But this is not something these inventors have contributed to the art at all."

"The computers in the claim are not operating in a new way," he added.

Mr Justice Birss also said that the problem Lantana had identified about the breakdown in connections between two networked computers had not been solved directly by the company's invention. Instead, the company had found a way to circumvent the problem with its invention.

"The point is relevant in this context because the question is one of technical character," the judge said. "It makes sense to think of something which is a solution to a technical problem as itself having technical character because it takes that character from the technical nature of the problem to be solved. But if a thing is not solving the technical problem but only circumventing it, then that thing cannot be said to have taken any technical character from the problem."

"So here, the nature of the continuous network connections needed to carry out the tasks described at the start of the patent may very well give rise to detailed highly technical problems which, if solved, would be likely to have a technical character. But this invention does not grapple with those technical issues at all. It uses email and thereby avoids the technical problems of continuous communications altogether. That may or may not be inventive but it does not take its character from the problem addressed," he said.