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

For computer-program inventions, novelty and inventive step do not themselves overcome the exclusion in Patents Act 1977, section 1(2). The court must identify the actual contribution, considering the claim as a whole while disaggregating features where necessary to determine whether any part provides a relevant technical contribution beyond the program. The AT&T/HTC signposts assist but are not a comprehensive test. Conventional email retrieval between computers, even if novel and inventive and avoiding continuous connectivity, remains excluded where it neither improves computer operation nor solves an essentially technical problem. Appellate review of this multifactorial assessment is restrained and intervention requires an error of law.

Lantana appealed from Birss J’s dismissal of its appeal against the Intellectual Property Office’s rejection of a patent application. The claimed invention retrieved files from a remote computer by sending machine-readable email instructions and receiving the requested file by email, avoiding a continuous connection. No objection was raised to novelty or inventive step. The dispute concerned whether the invention made a technical contribution beyond a computer program as such under section 1(2) of the Patents Act 1977, implementing article 52 of the European Patent Convention.

1. Disposition. The appeal was unanimously dismissed. Arden LJ delivered the leading judgment, Kitchin LJ gave a concurring judgment agreeing in the result and reasoning, and Gloster LJ agreed with both judgments.
2. Statutory approach. Section 1(2) of the Patents Act 1977 creates a partial exclusion. A computer program is not unpatentable merely because it is implemented in software. The invention must make an identifiable technical contribution over and above the program itself. Novelty and inventive step are separate requirements and do not, without more, establish such a contribution.
3. Identification of the contribution. The four-stage approach in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Patent Application [2006] EWCA Civ 1371 and HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 was correctly applied. The claim must be considered as a whole, but the court may examine its constituent features to identify the actual contribution. It must assess what was truly added to the art, not the contribution alleged by the applicant.
4. Technical contribution. The HTC signposts provide useful guidance, but no exhaustive test. The internet connection, computer architecture and email transmission were conventional. The computers did not operate in a new way, and the software did not make either computer a better computer. Avoiding the problems of continuous connectivity by using familiar email technology circumvented those problems rather than providing a technical solution. Circumvention is not invariably fatal to patentability, but this straightforward use of email had no relevant technical effect.
5. Review and EPO decisions. The determination of technical contribution involved multifactorial judgment. The appellate court should therefore interfere only for an error of law and could not reopen the primary factual findings. EPO decisions, including Vicom Systems Inc/Computer-related invention and Hitachi, used a different methodology and provided only limited assistance. The invention was software running on conventional computers connected by a conventional network, so its contribution remained wholly within excluded subject matter.

• Court of Appeal (Civil Division) dismissed Lantana’s appeal: [2014] EWCA Civ 1463.
• High Court, Chancery Division (Patents Court) Birss J dismissed Lantana’s appeal against the Intellectual Property Office’s rejection of the application on 4 September 2013.
• Intellectual Property Office The Hearing Officer rejected the application under section 1(2) of the Patents Act 1977, finding that the contribution was a computer program as such.