Lantana Ltd v The Comptroller-General of Patents, Designs and Trade Marks

An appeal from a Comptroller’s decision on computer-program exclusion is a review, not a rehearing. The appellate court should show real reluctance to interfere with an experienced tribunal’s evaluation unless there is a distinct and material error of principle.

For computer-implemented inventions, the Aerotel four-stage approach remains appropriate. Novelty and inventiveness do not themselves make a contribution technical. Using a conventional communication technique to avoid, rather than solve, technical problems does not give the invention technical character. A system that merely transfers data between conventional computers over a conventional network therefore remains excluded under section 1(2) of the Patents Act 1977.

Lantana Ltd appealed against decision BL O/056/13 of 4 February 2013, by which a Deputy Director acting for the Comptroller refused UK patent application GB 1014714.8. The application concerned retrieving files from a remote computer by sending an email containing machine-readable retrieval criteria and instructions, with the remote computer returning the requested files by email attachment.

The Hearing Officer held that claim 1 related to a computer program as such under section 1(2) of the Patents Act 1977, and found no other matter in the specification that could reasonably form the basis of a valid claim. The central issue on appeal was whether the claimed arrangement made a technical contribution sufficient to avoid the computer-program exclusion.

1. Appeal dismissed. The appeal was a review rather than a rehearing. Applying the approach in Reef [2003] RPC 5, the court was required to show real reluctance to interfere with the Hearing Officer’s specialised evaluation in the absence of a distinct and material error of principle.
2. The court applied the four-stage approach maintained by the Court of Appeal in HTC v Apple [2013] EWCA Civ 451 and derived from Aerotel Ltd v Telco Holdings Ltd; Macrossan's Patent Application [2006] EWCA Civ 1371: properly construe the claim; identify the actual contribution; ask whether it falls solely within excluded subject matter; and check whether the contribution is technical in nature.
3. The five signposts identified in HTC v Apple were relevant: effect on a process outside the computer; operation at computer-architecture level; operation of the computer in a new way; improved efficiency or effectiveness as a computer; and solving rather than merely circumventing the perceived problem.
4. Novelty and inventiveness were not determinative of technical character. They may be relevant to identifying a contribution, but a novel and inventive claim does not thereby escape the exclusions in Article 52 EPC or section 1(2) of the Patents Act 1977.
5. The claimed invention used conventional computers, a conventional internet connection and email. Sending an email containing machine-readable instructions was not genuine remote control and did not make the computers operate in a new way. Avoiding the technical problems associated with continuous connections by using email circumvented those problems rather than solving them. The fifth signpost therefore did not assist the appellant.
6. None of the other signposts established a technical contribution. The claim was software running on a conventional computing arrangement and was directed to excluded subject matter as such. The appeal was dismissed.

• Comptroller-General of Patents, Designs and Trade Marks: Decision BL O/056/13 dated 4 February 2013. The application was refused under section 1(2) of the Patents Act 1977.
• High Court (Patents Court): Appeal dismissed.