|Technical contribution? Dream on ...!|
The following note on Lantana is brought to you via the good services of our good friend and occasional guest contributor Paul England (Taylor Wessing LLP), who writes as follows
Data transfer method makes no technical contributionThe Court of Appeal has held the invention disclosed in a patent application by Lantana Limited to be excluded from patentability, as a computer program “as such”.Lantana’s application was for a method of extracting and transferring data between two computers, involving the computers being linked up to the internet and one making a request to the other for a file. The local computer has a list of the documents on the other computer. The user of the local computer sends an email message to the other which automatically responds by sending a message to the local computer with the file attached. The virtue of the invention, Lantana claimed, is that it saves the need for continuous connection to the remote computer and the risks of being hacked while connected, or losing the connection. But does this make it patentable?The appeal focused on section 1(2) of the UK's Patents Act 1977 [= European Patent Convention Art.52], which excludes patents for computer programs unless the invention goes beyond the computer program “as such”. Accordingly, following the four-step test in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Patent Application  EWCA Civ 1371, if the invention makes a contribution that is technical in nature, then the invention may be patentable, subject to other objections to patentability – novelty, inventive step etc.
While there is no comprehensive test for identifying a technical contribution, the courts have established a number of “signposts” to assist (AT&T Knowledge Ventures’ Application  EWHC 343 (Pat),  FSR 19 (as refined)). However, both the Hearing Officer of the UKIPO and Birss J, in the Patents Court, held that these did not assist Lantana in this case; there was no identifiable effect outside the computer program itself, such as making a better computer. As the Hearing Officer said:
“any increase in the reliability of the data retrieval process is solely due to the use of e-mail rather than any other communication method. There is no evidence of either of the two computers or the network being intrinsically more reliable themselves”
and that, as regards the connectivity problem,
“The contribution cannot be said to solve the problems identified. Rather it circumvents the problems of maintaining a good continuous connection by simply not using a continuous connection.”
What is a lantana? Click here to find outBirss J concluded simply that “In substance the claim relates to computer software running on conventional computers connected by a conventional network”. The Court of Appeal has agreed, holding that the invention is excluded matter, having no relevant technical effect.
Lantana the movie here
Latest Australian jurisprudence on the same issue in Research Affiliates LLC v Commissioner of Patents  FCAFC 150, noted on Patentology here.