The High Court has upheld a decision of the UKIPO that a patent application for a method of transferring data between two computers without requiring them to be in continuous communication should not be granted.

In 2008 Lantana Limited applied for a UK patent for an invention for a method of transferring data between two computers without requiring them to be in continuous communication. This invention was said to overcome the problem of the security and connectivity and costs issues connected with traditional methods of remote connection. The invention claimed therefore involved two computers both connected via the internet. Where the user of one computer wants to retrieve data from the other computer then that first computer would create an email message containing machine readable retrievable criteria and send it to the other computer. The second or remote computer receives the email, works out if the email contains any machine readable instruction and if so executes that instruction, retrieves the data and sends back an email containing the requested data.

The Law
Section 1(2) of the Patents Act 1977 excludes from patent protection programmes for computers but only to the extent that the subject matter relates to such activities as such. Deciding whether or not a patent application falls foul of this rule on excluded subject matter traditionally involves an assessment of whether the invention makes a technical contribution to the known art where that technical contribution does not consist of purely excluded subject matter.

The courts have also adopted various, “signposts” which indicate whether there has been a relevant technical effect or contribution. These are currently as follows;

i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;

ii) whether the claimed technical effect operates at the level of the architecture of the computer, that is to say whether the effect is produced irrespective of the data being processed or the applications being run;

iii) whether the claimed technical effect results in the computer being made to operate in a new way;

iv) whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer;

v) whether the perceived problem is overcome by the invention as opposed to merely being circumvented.

The Court applied looked at each of the signposts in turn. In doing so the Court agreed with the decision of the Hearing Officer and found that the claimed invention did not provide a technical solution to the problems that it set out to solve. Instead, it avoided them using a conventional technique. As such there was no contribution or anything which could be said to have a technical character and the Hearing Officer’s decision to reject the patent application was upheld.

There is, and continues to be, no absolute bar on obtaining patent protection for computer programs. There is however a fairly well defined and well rehearsed set of criteria that the Court use to determine whether the invention falls fouls of section 1(2) of the Patents Act 1977 and a key part of this is an assessment of whether the invention has a technical effect which is typically determined by reference to the various signposts set out above. It is only those inventions which claim a genuine technical effect as well as of course complying with the usual requirements of patentability i.e. novelty and inventiveness that will qualify for patent protection.

If you wish to discuss any of the issues raised by this article please contact either Nick Phillips or any other member of the intellectual property team at Edwin Coe, on 020 7691 4000 or nick.phillips@edwincoe.com.

Please note that this blog is provided for general information only. It is not intended to amount to advice on which you should rely. You must obtain professional or specialist advice before taking, or refraining from, any action on the basis of the content of this blog.

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