Software-controlled “circumvention” of a problem fails to impress UK Court of Appeal

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The UK Court of Appeal has dismissed a software-controlled remote data retrieval solution as lacking a patentable technical contribution, commenting that emailing executable data retrieval instructions “circumvented” a computer networking problem but did not solve it.


New and inventive solutions to technical problems are generally patentable in the UK and patents are available for software-controlled apparatus and technical processes outside a computer system. However, patent claims that rely on software are carefully scrutinized by the UK Intellectual Property Office (UKIPO) and UK courts.

In Lantana Limited v Comptroller of Patents [2014] EWCA Civ 1463, the UK Court of Appeal was not impressed by a software-controlled combination of known computing and networking technology, which the Court considered a mere “circumvention” of a problem in computer networks.

Legal Background and UKIPO Decision

Section 1(2) of the UK Patents Act 1977 provides that computer programs as such are not inventions. In practice, many computer-implemented inventions are patentable, but the invention must be more than a “computer program as such”. What is needed is a technical contribution to the art.

Having characterized the invention’s contribution as a choice to use emails that is “effected as a computer program”, the UKIPO Hearing Officer identified no technical effect outside the computers and decided that “the contribution is excluded as a program for a computer as such”.

The UK High Court judgement

In the High Court, Mr Justice Birss was keen to emphasize that “This appeal is a review and not a rehearing”. He referred to case law that mentioned “a hearing officer’s specialised experience” and which stated that “an appellate court should in my view show a real reluctance… to interfere in the absence of a distinct and material error of principle”. This did not bode well for the Applicant.

Claim 1 was summarised at paragraph 8 of the High Court judgement: “The claim envisages two computers connected via the internet. The user of the local computer wants to retrieve data from the remote computer. When required, the local computer creates an email message containing machine-readable retrieval criteria and sends it to the remote computer. The 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 e-mail containing the requested data”.The judge referred to HTC v Apple [2013] EWCA Civ 451 for its recent review of English law. He referred to the four step test applied by the Hearing Officer as well as the signposts set out in AT&T Knowledge Ventures LP and CVON Innovations Limited [2009] EWHC 343, as modified in HTC v Apple.

The High Court confirmed the correctness of the approach followed by the Hearing Officer. Mr Justice Birss also stated that “In substance the claim relates to computer software running on conventional computers connected by a conventional network. The task the software performs moves data from one computer to another using a conventional technique for carrying out that task, i.e. email.” The solution was referred to as avoiding technical problems without solving them, and avoiding them using a conventional technique.

The Court of Appeal decision

A further appeal did not help the Applicant. In November 2014, the UK Court of Appeal supported the approach and conclusions of the Hearing Officer and Mr Justice Birss and reiterated that “the court should be reluctant to interfere unless there is an error of law”. After referring to Section 1(2) of the UK Patents Act and the same UK precedents as the High Court law, the Court of Appeal then confirmed that a data retrieval solution that involved emailing data retrieval criteria to a remote computer, and then invoking a data retrieval process that returns the required data, was not a patentable invention.

With reference to HTC v Apple, the Court referred to the following signposts to a relevant technical effect:

  • whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
  • 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;
  • whether the claimed technical effect results in the computer being made to operate in a new way;
  • whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer;
  • whether the perceived problem is overcome by the invention as opposed to merely being circumvented.

The comments of Kitchin LJ (starting at paragraph 55 of the judgement) were very clear, and refer to “the crucial question, namely whether this contribution fell solely within excluded matter”. He accepted the earlier reasoning that the claimed solution:

  • has no effect outside the two computers (other than transmission and reception of emails, which were widely known at the priority date),
  • does not operate at the level of architecture of the computers,
  • does not cause the computers to operate in a new way; and
  • any improvement in reliability of data retrieval was achieved by the use of emails (conventional) rather than some other system of communication.

Kitchin LJ confirmed that the solution:

  • does not solve the identified problems but merely circumvents them, and
  • contributes nothing to the art over and above the fact that it relates to a program for a computer.

Our comments and recommendations

Lantana v Comptroller sets out an approach to the assessment of patentability that is now well established in the UK. There are no surprises in the steps followed by the Courts and it is well known that it is difficult to impress UK courts by software-controlled effects inside a computer system. The statements made by the Hearing Officer, High Court and Court of Appeal were very consistent. The UK High Court and Court of Appeal were happy to accept the Hearing Officer’s characterization of the invention (“a way of retrieving data from a remote station across a network using e-mails containing machine readable instructions”), which did not highlight any features or combination of features making a technical contribution to the art. This consistency of approach helps us to predict outcomes for future cases.

However, it should be remembered that the approach of the UK courts and the EPO approach is not identical, and their conclusions are also not always the same. If this had been a European patent application, we would have expected the EPO to have considered the technical effects of the claimed solution as part of their assessment of inventive step, and a European patent may have been granted. Because of their different approaches, we often have to recommend filing at the European Patent Office instead of the UKIPO when European patent protection is needed for new solutions involving software control. Until the UKIPO and the EPO adopt the same approach to the assessment of computer-implemented inventions, many applicants will consider it necessary to continue bearing the costs of European Patent Office fees even when only UK protection is needed.

The UKIPO remains a cost-effective option for patent applicants who wish to claim a computer-controlled apparatus/process that has a clearly identifiable technical effect outside a computer, but the Court of Appeal’s judgement in Lantana v Comptroller reminds us that the absence of such a technical effect can be fatal to a UK application and broad claims to computer programs will often be refused in the UK.

When filing and prosecuting patent applications at the EPO to obtain UK protection, Applicants must take account of UK case law to maximise the likelihood of their patents surviving UK validity challenges. Important requirements are a detailed description of all the features that interact to solve real-world technical problems (i.e. describe what apparatus the software controls) to support the claims and assist with inventive step arguments. Also important is a description of the technical applications, effects and advantages of the invention. Applicants may need to limit their claims to these features and to point to these effects in order to maintain or defend UK patent rights. A detailed description of the features that address technical problems will also increase the likelihood of success for computer-implemented inventions filed at the EPO, USPTO and other national patent offices.

Category: Latest Insights | Author: Mike Jennings | Published: | Read more