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

This is an appeal against Birss J’s dismissal on 4 September 2013 of an appeal against the rejection by the Intellectual Patent Office (“the IPO”) of a patent application for an invention consisting of a computer program. It therefore raises the question of the patentability of such inventions. This is governed by Section 1 of the Patents Act 1977 (“PA 77”), which is designed to implement article 52 of the European Patent Convention (“EPC”). Section 1 provides that computer programs, as such, cannot be patented. So on this appeal, the key issue is whether the invention escapes that exception. As the Hearing Officer, Dr Stephen Brown, put it:

“…the mere fact that the invention is effected as a computer program does not of course mean that it is automatically excluded as that thing as such. What matters is whether or not the invention provides a technical contribution beyond that of a mere program running on a conventional computer.”

In my judgment, on the facts found by the Hearing Officer, the invention is no more than the computerisation of a process which could already be done without a computer. It has no relevant technical effect. Accordingly, the invention is not patentable. I would therefore dismiss this appeal.

The applicant for the patent is the appellant (“Lantana”). Lantana’s application relates to a method of extracting and transferring data between two computers. Claim 1 is set out in paragraph 7 of the judge’s judgment, and I do not need to repeat it. A description will suffice. The method operates when both computers are linked up to the internet and one makes a request to the other for a file. The local computer will have 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. So, if, for example, the user were a solicitor who had gone to, say, South America, and wished to use a precedent for a joint venture agreement which he had on his desk computer in his London office, he could use this software to get the file for use where he was located abroad. Lantana claims that this method saves the need for continuous connection to the desk computer in London and the risks of being hacked while so connected or losing the connection. I will call this problem “the problem of vulnerable connectivity”.

Lantana amended its claim as regards the way emails were entered on the computer, but nothing in this appeal appears to turn on those amendments.

The Comptroller General of Patents did not raise a novelty or inventive step objection but considered that that was not enough to make the invention patentable because of section 1(2) of the PA 77, to which I now turn.

Subsections 1(1) and (2) of Section 1 PA 77 in summary provide that a patent can be granted for an invention provided that it is new, involves an inventive step and is susceptible of industrial application. However, subsections (1)(d) and (2) exclude a number of matters, including computer programs as such. Subsections (1) and (2) provide:

“(1)

A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say—

(a)

the invention is new;

(b)

it involves an inventive step;

(c)

it is capable of industrial application;

(d)

the grant of a patent for it is not excluded by subsections (2) and (3) [or section 4A] below;

and references in this Act to a patentable invention shall be construed accordingly.

(2)

It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of—

(a)

a discovery, scientific theory or mathematical method;

(b)

a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;

(c)

a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;

(d)

the presentation of information;

but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.”

Computer programs are not therefore wholly excluded. They are excluded unless the applicant shows that his application goes beyond an application for a computer program “as such”. I refer to computer programs which are within the exclusion and not patentable, as “excluded matter”. The issue here is whether the technical contribution to the known art provided by the invention consists of excluded matter.

The judge’s starting point was the holding by Kitchin LJ in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 that it was appropriate for the court, when considering the patentability of computer programs, to adhere to the four-stage process set out in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Patent Application [2006] EWCA Civ 1371. The judge then set out the four-stage approach which is as follows:

“The approach is in four steps:

‘(1) properly construe the claim;

(2)

identify the actual contribution;

(3)

ask whether it falls solely within the excluded subject matter;

(4)

check whether the actual or alleged contribution is actually technical in nature.’ (see Aerotel at [40] per Jacob LJ giving the judgment of this court).”

In this case, there was no dispute as to the interpretation of the claim. The issue was whether the invention made a technical contribution.

The courts have worked out “signposts” to assist in determining whether there was any technical contribution. These signposts will not assist in every case. These signposts originated in the judgment of Lewison J in AT&T Knowledge Ventures’ Application [2009] EWHC 343 but were refined on appeal in HTC v Apple. It is sufficient to repeat the judge’s summary of the signposts from HTC v Apple:

“13 The signposts to a relevant technical effect (as modified in HTC v Apple) are:

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 Hearing Officer considered the signposts, but concluded that they did not assist Lantana. His conclusions on the fourth and fifth signposts are relevant to this appeal:

“27 In respect of the fourth signpost, 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. In the case of Symbian it was accepted that an overall improvement in reliability of the computer itself was achieved. The contribution in this case does not seem to operate with anything like the same level of generality.

28 Finally, in respect of the fifth signpost, the problem addressed is that of how to retrieve data from a remote station without the usual problems associated with establishing a continuous connection to said station. The current application addresses this issue by choosing to use a well known non-continuous communication technology instead, namely e-mail. 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.”

The Hearing Officer went on to conclude that the contribution was excluded matter and summarised his conclusion as follows:

“29 To summarise: the contribution is a better way of retrieving data from a remote station by using e-mail to transmit retrieval criteria and to receive back the corresponding data. I can see no technical effect outside of the two computers. Neither is either computer or the connecting network operating in a new way. I am therefore forced to conclude that the contribution is excluded as a program for a computer as such.”

Before the judge, the appellant’s principal case was that the Hearing Officer should have held that what made these various aspects patentable and revealed their technical character was the fact that they were achieved by the novel and inventive processing set out in the claim.

The judge rejected the submission that the invention was patentable if it was novel and inventive. He held:

“Being novel and inventive is not what takes a contribution outside the excluded area nor is it what makes an effect or contribution “technical”.” (Judgment, paragraph 18)

The judge referred to the following dictum of Lewison J in Autonomy [2008] RPC 16:

“(x)

The manipulation of data stored on a computer (whether on the computer in use or on a remote computer) is unlikely to give rise to a contribution that exists independently of whether it is implemented by a computer…”

Lantana relied on four technical effects, as follows:

“(i)

telecommunications messages are generated by computers forming part of a telecommunications network, and transmitted from one computer to another over the network;

(ii)

one computer remotely controls the processing performed by another via a telecommunications network;

(iii)

the result of this remote control is the transmission of files and information from the remote computer over a telecommunications network to the local computer;

(iv)

this remote control and transmission is achieved in a manner which does not require a continuous connection between the two computers.”

The judge examined each of the signposts in turn and held that there was no error:

The judge also considered the invention as a whole (see the final paragraph of his judgment) and with respect to its technical contribution.

The critical issue on this appeal is to identify the contribution made by the invention and to decide whether it constitutes purely excluded matter. Both questions have to be answered. Like the judge I see no mandate in section 1 of the PA 77 for holding that it is sufficient that there is an inventive step. It is deliberate legislative policy to exclude certain matters from patentability even if they would otherwise be patentable. As the “signposts” show, there must be some identifiable inventive step outside the computer program. That means that, contrary to Lantana’s case, the features of the invention must be disaggregated to determine whether they fall within or without excluded matter. The judge must also look at the invention as a whole, and the judge expressly did this at the end of his judgment.

In my judgment, for the reasons given below, it is clear that the invention constitutes purely excluded matter, and that the judge’s conclusion was correct.

There has been no challenge to the novelty or inventiveness of the claim. These are not therefore in issue. Nevertheless, the objection under section 1(2) does require the identification of the actual contribution for only if there is some technical contribution outside the computer program will the invention avoid the exclusion.

A fundamental question is the standard of review to be adopted in relation to the Hearing Officer’s conclusions on the question whether there was an inventive step.

Mr Keith Beresford, for Lantana, did not seek to challenge the submission made by Mr Tom Mitcheson QC, for the Comptroller General, that insofar as the question for the Hearing Officer was one of multi-factorial evaluation, having regard to the well-known authorities (such as Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] RPC 5, HL), the court should be reluctant to interfere unless there is an error of law.

I agree that the authorities cited by Mr Mitcheson show that this is the correct approach, and it is the approach which I intend to follow with respect to the relevant aspects of the Hearing Officer’s conclusions. It means that the appellant has to attain that high hurdle or show an error of law, for example, an erroneous self-direction or the taking into account of a material matter which was irrelevant. The determination of what is a technical contribution involves the application of judgment, and therefore this court should be reluctant to interfere with the judge’s assessment. On errors of law, Mr Beresford put forward a number of grounds but the overall submission of the Comptroller General is that the appellant fails to show any error of law.

Moreover, since the appeal is confined to questions of law, it is not open to this court to reject any of the primary factual findings, for example, about the method by which the two computers communicate with each other, or the method whereby the remote computer is configured to respond automatically to the request for a file from its list of documents, on the basis that there was an error of fact. There is no basis on which we could reach the conclusion that these findings were wrong in law.

There is no comprehensive test for determining technical contribution, but paragraphs [45] to [49] of the judgment of this court in HTC v Apple provide a helpful starting point. I will set out these paragraphs now and refer to four of them below:

“[45] How then is it to be determined whether an invention has made a technical contribution to the art? A number of points emerge from the decision in Symbian and the earlier authorities to which it refers. First, it is not possible to define a clear rule to determine whether or not a program is excluded, and each case must be determined on its own facts bearing in mind the guidance given by the Court of Appeal in Merrill Lynch and Gale and by the Boards of Appeal in Case T 0208/84 Vicom Systems Inc [1987] 2 EPOR 74, [1987] OJ EPO 14, Case T 06/83 IBM Corporation/Data processing network [1990] OJ EPO 5, [1990] EPOR 91 and Case T 115/85 IBM Corporation/Computer-related invention [1990] EPOR 107.

[46] Second, the fact that improvements are made to the software programmed into the computer rather than hardware forming part of the computer does not make a difference. As I have said, the analysis must be carried out as a matter of substance not form.

[47] Third, the exclusions operate cumulatively. So, for example, the invention in Gale related to a new way of calculating a square root of a number with the aid of a computer and Mr Gale sought to claim it as a ROM in which his program was stored. This was not permissible. The incorporation of the program in a ROM did not alter its nature: it was still a computer program (excluded matter) incorporating a mathematical method (also excluded matter). So also the invention in Macrossan [Aerotel]related to a way of making company formation documents and Mr Macrossan sought to claim it as a method using a data processing system. This was not permissible either: it was a computer program (excluded matter) for carrying out a method for doing business (also excluded matter).

[48] Fourth, it follows that it is helpful to ask: what does the invention contribute to the art as a matter of practical reality over and above the fact that it relates to a program for a computer? If the only contribution lies in excluded matter then it is not patentable.

[49] Fifth, and conversely, it is also helpful to consider whether the invention may be regarded as solving a problem which is essentially technical, and that is so whether that problem lies inside or outside the computer. An invention which solves a technical problem within the computer will have a relevant technical effect in that it will make the computer, as a computer, an improved device, for example by increasing its speed. An invention which solves a technical problem outside the computer will also have a relevant technical effect, for example by controlling an improved technical process. In either case it will not be excluded by Art 52 as relating to a computer program as such.”

The Hearing Officer identified a number of features in the invention as a whole:

The judge held that the second and third steps were not inventive steps. The transmission of data across the internet was part of the prior art. Likewise the third step was not new but part of the prior art.

Mr Beresford made numerous submissions orally, but they can, as I see it, be analysed as consisting of three core points.

First, Mr Beresford submits that the judge should have confined himself to looking at the claim as a whole and not looked at its constituent parts. Mr Beresford submits that the contribution is the provision of a better way of retrieving a document from a remote computer to a local computer. Mr Beresford contends that a relevant technical effect may be in the functionality of the computer and in the means of achieving a result.

I can deal with this submission at this point. In my judgment, the judge could not determine whether there was a relevant technical step outside the computer program without breaking the invention down into its constituent parts. In fact he also looked separately at the whole of the invention as well, but his assessment overall does not assist Lantana. He summarised his views on the invention overall as follows:

“In substance the claim relates to computer software running on conventional computers connected by a conventional network” (judgment, paragraph 48).

This was the correct approach in law: see HTC v Apple at paragraphs [46] and [48], paragraph 26 above).

Mr Beresford’s second and third core submissions related to the second and third steps, which, as explained in paragraph 27 above, the Hearing Officer identified in the way the claimed invention worked. Mr Beresford goes on to argue that the judge was wrong in law to conclude that the transfer of a file across the internet could not be part of the contribution because of the prior art. Furthermore, on Mr Beresford’s submission, the judge was wrong in his conclusion on the third step: the judge in argument drew an analogy with computer viruses and refers to this obliquely in his judgment. The Hearing Officer had not made this point.

Mr Mitcheson’s submissions are directed to upholding the reasoning of the judge. He amplifies the steps identified by the Hearing Officer. In particular, he submits that the Hearing Officer considered that emails were generated by clicking on a file. There is an email click and self-interrogation. All, however, on his submission that happens is the automation of what computers normally do. It is the automation of communication across networks. It does not involve improving the speed or reliability of the computer (which is the fourth signpost, sometimes summarised as the “better computer” point). Moreover, the Hearing Officer also referred to an email with an executable HTML message. He held that this was disclosed in the prior art. Mr Mitcheson points out that this point is not challenged on appeal. The process, therefore, is one that was previously done, albeit manually.

Clicking on a list of documents is, on Mr Mitcheson’s submission, a feature which is very well known so that the additional emphasis that Mr Beresford places on a list of documents on the local computer does not, again in Mr Mitcheson’s submission, add anything. The judge was right to say that this was not a ‘control’ case because the local computer does not force the remote computer to do anything.

Mr Mitcheson relies on the holding in Aerotel that an invention, involving a request to the server and the consequent despatch of documents, was not patentable because the exclusion of business method in section 1(2) (c) of the PA77 applied (Aerotel, paragraphs 58, 73 and 74).

Mr Mitcheson submits that this is a simple automation case, typical of a computer program, and that it is exactly what Parliament intended to exclude. He submits that the Hearing Officer rightly concluded that the transfer of documents across the internet did not constitute a relevant contribution. He said that the contribution was not sufficiently technical. The cases where there is a separate physical effect accordingly cannot assist. There is nothing in this case to take the computer program outside excluded matter.

I accept Mr Mitcheson’s submissions. In the second step, the relevant technical step was the fact that the computers communicated with each other, but they did so in a way which was unquestionably conventional, namely via the internet, so the judge was right to hold that this was not a relevant technical contribution. He had to look to see if the remaining steps made a relevant technical contribution. The fact that in Decision T 84/0208 Vicom the EPO looked at the patent as a whole does not mean that the court in this jurisdiction cannot also look at the various elements of the invention on which the applicant relies. I return to this point below under the heading “Treating EPO decisions as precedents”.

In my judgment, it is also common knowledge that computer viruses can lead to the automatic transmission of emails. There was also evidence that the prior art included the sending of machine readable signals by email. Therefore it was open to the judge to assess the third step as not making a technical contribution.

Mr Beresford accepts that Lantana is not the first to transfer documents across the internet, but he submits that the technical effect does not have to be novel. Mann J held in Gemstar v Virgin [2010] RPC 10 (transfer of data from one computer disc to another) that the invention had a physical effect outside the computer system. The same on Mr Beresford’s submission should apply as regards the transfer of data from one computer to another.

The answer in my judgment to that point is that Mann J was satisfied that that effect was achieved outside the computer program the subject of the claim. But it is clearly possible that that is not the case with another method of transferring data. It all depends on the facts. (As to the result, the Comptroller General reserves his position on the application of the principle in Gemstar.)

On Mr Beresford’s submission, Lantana has a new way of producing an old result. (He cited Reynolds v Herbert Smith [1903] RPC 123, where Buckley LJ held that an invention could produce an old product by a new process). This leads Mr Beresford to submit that no one had thought to do what the claim does in the way set out in the claim before Lantana. Mr Beresford relies on Decision 83/0006 IBM (where a method of communication between programs and files held on different computers was held to be patentable). Mr Beresford submits that, in that Decision, an invention which was similar to the claim was held to be patentable.

However, as Kitchin LJ pointed out in argument, that decision is now over twenty years old and this is a very fact-sensitive area (see HTC v Apple at paragraph [45], paragraph 26 above). It cannot be right, as Mr Beresford argues, that simply because at one point in history a process constitutes a technical contribution that the same or similar process, even if novel, will constitute a technical contribution for all time. The judge made the same point at paragraph 16 of his judgment. In short, that was then, and this application is now (if any earlier date is relevant, it cannot be earlier than the date of filing the claim).

Mr Beresford relies on the leading case of HTC v Apple (“slide to unlock” device on Apple apparatus held to be an improvement in the computer’s switching capability). On Mr Beresford’s submission, a computer program may make a relevant contribution even though it lies entirely within the software. The point in that case was in my judgment that the effect of the invention was to make the computer easier to operate (the “better computer” point). There was, therefore, an identifiable effect outside the program. That is not present in this case. A similar improvement outside the program was held to justify a conclusion of patentability in another case which Mr Beresford cited: Protect The Kids The World Over (PKTWO) Ltd’s Patent Application [2012] RPC 13.

Consistently with the approach to be adopted by this Court, as explained in paragraph 24 above, we are not, in my judgment, strictly concerned with any issue concerning the signposts unless an error of law is shown. In my judgment, for the reasons given below, no error of law is shown.

Mr Beresford submits that the judge was wrong to say that the first signpost (need for technical effect on a process which is carried on outside the computer) was not satisfied, namely, the transmission of the email messages across the internet. But the judge’s point was that this was not part of the contribution. Any contribution lay entirely with the program. This was a conclusion he was entitled to reach. It meant that he was entitled to attach little weight to this particular feature in his assessment.

As to the novel and inventive step here, Mr Beresford submits that it is in the idea and concept of the claimed invention and not in programming. It provides a list of documents coupled with arrangements for transferring a document from that list to the local computer. He further submits that Lantana is claiming the application of the software, and not the software itself, as in the Vicom case. In my judgment, the first signpost is likewise not answered simply by referring to the fact that the program will have a practical effect outside the computer, namely the production of documents which were on the remote computer. The signposts have to be applied by looking at the contribution of the invention defined in the claim. Paragraph [48] of the citation from HTC v Apple set out in paragraph 26 above does not, in holding that the court should look to the practical reality and in advocating a common sense approach, dispense with the need to satisfy the other requirements of a technical contribution.

Mr Beresford submits that the second signpost is satisfied by the architecture of the retrieval system, which is transformed. But the architecture is entirely conventional, so the judge did not misdirect himself here.

As to third signpost, Mr Beresford relies on the decision in Decision T 208/84 Vicom where the EPO held that a process controlled by a computer was outside the computer and was therefore not excluded matter. However, in my judgment, the conclusion which the judge reached was one open to him. Without the claimed control the computers operated as before. The judge did not consider that there was control of the remote computer. (That computer would presumably not operate if, for example, the local computer sent an email to it requesting a particular file at a time when it (the remote computer) was disconnected from the internet). It was for the judge to decide what weight to give to the absence of control in his assessment. On that basis, Vicom cannot assist Lantana.

Contrary to Mr Beresford’s submission, in my judgment the judge applied the fourth signpost correctly. He was not required to take account of the benefits to the problem of vulnerable connectivity. These benefits were not benefits to the computer. The program does not make either computer a better computer.

Mr Beresford criticises the judge’s application of the fifth principle. He submits that the circumvention of a problem can amount to an invention. I agree. Paragraph [49] of the citation from HTC v Apple, set out in paragraph 26 above, speaks to the evidential value, when determining whether there is a technical contribution, of the invention solving a problem, but does not say that it is essential that it should do so. But the judge was not saying that patentability would always be denied where a problem was circumvented rather than solved. Circumvention may be the result of truly original linear thinking and may lead to patentability in an appropriate case. Rather the judge’s underlying point is that the mode of the solution in the claim involved a perfectly straight forward use of a familiar medium, namely the sending of an email.

Mr Beresford relied on a number of decisions of the European Patent Office (“EPO”), including Decision T 06/1658. But although these are also concerned with Art 52 of the EPC and the patentability of computer programs, they adopt a different methodology (see, for example, Decision T 03/258 Hitachi). Mr Beresford did not dispute Kitchin LJ’s observation in argument that the methodology of the EPO and the English court should produce the same result. The position may be that the EPO and the English court ask the same questions - is there a contribution and, is that contribution solely within the exclusion? - but in a different order. The decisions of the EPO, therefore, provide only limited assistance to this court in determining whether the process adopted by the judge in this jurisdiction was flawed.

It is not the fact that the invention relates to a computer program that renders it un-patentable. The exclusion is not so worded. It is worded as a partial exclusion. The invention must make some technical contribution over and above that provided by the program itself, such as an improvement in the working of the computer (on this, see for example the passage which I have set out from HTC v Apple, paragraph 26 above). In this case, there was no technical contribution outside the computer program. The transfer of data and recovery of the file by an automatic email were not inventive steps in themselves. Thus I conclude that the computer program does not relevantly operate as more than a program. Lantana may overcome the hurdle of achieving a novel and inventive step but it has not overcome the hurdle of being excluded matter under section 1(2) of the PA 77. This appeal must be dismissed.

Since writing my judgment, I have seen the judgment of Kitchin LJ, with which I also agree.

The claimed invention relates to the retrieval of data from a remote computer to a local computer using email. In broad terms, the local computer sends an email containing machine-readable data retrieval criteria to the remote computer, and the remote computer responds with an email containing the requested data. The operation is controlled by software or application specific integrated circuits, which, as Dr Stephen Brown (the Hearing Officer acting for the Comptroller) explained, amounts to much the same thing.

In assessing the application of section 1(2) of the Patents Act 1977, Dr Brown followed the four stage approach first explained by this court in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Patent Application [2006] EWCA Civ 1371, [2007] RPC 7, and most recently considered by this court again in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451, [2013] RPC 30. First, he construed the claim; second, he sought to identify the actual contribution; third, he asked himself whether that contribution fell solely within excluded matter; and finally, he checked whether that contribution was actually technical in nature.

Dr Brown had no difficulty construing the claim, and I have explained the substance of the invention at the outset of this judgment. Mr Beresford, who appeared on behalf of the appellant, Lantana, explained that it works in the following way. The local computer stores a list of documents stored on the remote computer. Selection of an item on the list on the local computer causes that computer automatically to generate an email which is addressed to the remote computer and contains machine-readable instructions which will cause the remote computer to find the relevant document and send it back to the local computer. The document can then be worked on without maintaining a continuous connection to the remote computer.

Dr Brown then identified the technical contribution in general terms at [12] of his decision:

“I thus construe the contribution to be a computer implemented system for retrieving data from a remote station across a network using e-mails containing machine readable instructions and/or retrieved data.”

This brought Dr Brown to the crucial question, namely whether this contribution fell solely within excluded matter. In answering it, Dr Brown considered the matter both generally and having regard to the various signposts first propounded by Lewison J (as he then was) in AT&T Knowledge Ventures’ Application [2009] EWHC 343 (Pat), [2009] FSR 19 and subsequently refined and modified by this court in HTC. Dr Brown’s reasoning ran as follows. The invention has no effect outside the two computers other than the transmission and reception of emails, and such transmission and reception were widely known at the priority date. Further, the invention does not operate at the level of the architecture of the computers themselves, for they operate in an entirely conventional way. Similarly, the connecting network is itself operating in a well known way. In so far as the invention brings about an increase in the reliability of data retrieval, this is achieved by using email rather than some other system of communication. Drawing these threads together, the invention addresses the problem of how to retrieve data from a remote computer without the usual problems associated with trying to maintain a continuous connection to it; and it does so by the use of email, which, as I have said, was itself well known. As such, the invention circumvents the problems associated with having to maintain a continuous connection; it does not, however, provide a technical solution to them. He summarised the position in this way at [29]:

“… the contribution is a better way of retrieving data from a remote station using e-mail to transmit retrieval criteria and to receive back the corresponding data. I can see no technical effect outside of the two computers. Neither is either computer or the network operating in a new way. I am therefore forced to conclude that the contribution is excluded as a program for a computer as such. ”

On appeal by Lantana to the High Court, Birss J upheld Dr Brown’s decision, essentially for the same reasons. In doing so he specifically considered the various technical effects which Mr Beresford contended that the invention provides. He also rejected a submission advanced by Mr Beresford that the acceptance by the examiner that the claim was novel and inventive necessarily means that the invention has made a technical contribution. He concluded (at [41]):

“Finally I will stand back from the detailed submissions and look at the claim overall. 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 context in which this arises is that accessing remote computers via continuous connections can be problematic but this is not a technical solution to those problems, it avoids them, but does so using a conventional technique. The claim has been found to be novel and inventive by the examiner and in that sense it makes a contribution of some kind to the art, but the applicant has been unable to identify anything which this claim can fairly be said to contribute which has a technical character. In my judgment this claim is to unpatentable subject matter and is contrary to s.1(2) of the Act / Art 52 EPC.”

On appeal to this court Mr Beresford argued that Birss J fell into error in the following fundamental respects. First, in considering the computer program exclusion from patentability, he failed to consider the claimed invention as a whole and instead dissected it into various components and then dismissed them one by one as irrelevant to the issue of technical contribution on the ground that each was known at the priority date. This, Mr Beresford continued, was wrong in law and that, in assessing the technical contribution, the judge ought rather to have taken into account the whole combination of features specified in the claim, and all of the technical effects that combination provides, regardless of whether those features and effects were new or old.

Second, and in consequence, Birss J wrongly disregarded features of the claim because he considered they were not novel and so did not form part of the contribution.

Third, when eventually Birss J did consider the claim as a whole, he wrongly reasoned that the invention uses the conventional technique of email for moving data from one computer to another. This was inconsistent with the position taken by the Comptroller in not raising a novelty or inventive step objection. The judge ought to have found that the invention does provide a technical contribution because, using novel and inventive processing, it generates emails, transfers files from one computer to another across a telecommunications network, and does so by causing the local computer to control the remote computer, all with the advantageous consequence that a user may work at a local computer on a document stored at a remote computer without the need for a continuous internet connection.

I accept Mr Beresford’s submission that it is the claim as a whole which must be considered when assessing the contribution which the invention has made, and that it is not permissible simply to cut the claim into pieces and then consider those pieces separately and without regard to the way they interact with each other. Thus in Symbian Ltd v Comptroller-General of Patents [2008] EWCA Civ 1066, [2009] RPC 1, Lord Neuberger (giving the judgment of the court) said at [37] (referring to decision T 0208/84 Vicom Systems Inc/Computer related invention [1987] OJ EPO 14, [1987] 2 EPOR 74 at [37]):

“Finally at [16] the Board described “making a distinction between embodiments of the same invention carried out in hardware or in software” as “inappropriate”, as what is decisive is “the technical contribution which the invention described in the claim when considered as a whole makes to the known art”.”

Nevertheless, I also have no doubt that, approached in this way, it is the actual contribution to the art which the invention has made which must be considered. This emerges clearly from this passage in the judgment of the court in Aerotel:

“43.

The second step – identify the contribution - is said to be more problematical. How do you assess the contribution? Mr Birss submits the test is workable – it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended.

44

. Mr Birss added the words "or alleged contribution" in his formulation of the second step. That will do at the application stage – where the Office must generally perforce accept what the inventor says is his contribution. It cannot actually be conclusive, however. If an inventor claims a computer when programmed with his new program, it will not assist him if he alleges wrongly that he has invented the computer itself, even if he specifies all the detailed elements of a computer in his claim. In the end the test must be what contribution has actually been made, not what the inventor says he has made.”

Similarly, in HTC, I said this at [48]:

“Fourth, it follows that it is helpful to ask: what does the invention contribute to the art as a matter of practical reality over and above the fact that it relates to a program for a computer? If the only contribution it makes is excluded matter then it is not patentable.”

The exception therefore requires a focus on the contribution the inventor has truly made, not what he says he has made. Once the contribution has been identified it is then possible to determine whether it falls solely within excluded matter.

Turning now to the decision the subject of this appeal, I do not accept that Birss J wrongly dissected the claim into various components as Mr Beresford suggested. It is true that he did consider the invention by reference to the various AT&T signposts and that he also addressed each of the alleged technical effects relied upon by Lantana. But he cannot be criticised for taking that course for that is what he was asked to do. Further, he then stood back and considered the claim as a whole at [41] of the judgment. His analysis led him to conclude that the presence of machine readable instructions in an email directed to a remote computer was not new at the priority date. Further, the invention consists entirely of software running on a conventional computer arrangement, and the computers themselves are not operating in a new way. The increase in reliability results from the use of email rather than a new method or system of communication. Overall, the invention avoids the problem of accessing a remote computer by a continuous connection, but it does so by using a conventional technique. He concluded that the overall contribution which the invention has made is therefore wholly within excluded subject matter and is not technical in nature.

For like reasons I find myself unable to accept Mr Beresford’s second submission. Birss J was required to identify the actual contribution made by the invention, and that is precisely what he sought to do, as did Dr Brown. The judge did not fall into error in the manner for which Beresford contended.

Finally, I reject Mr Beresford’s submission that Birss J’s reasoning conflicts with that of the Comptroller as reflected in Dr Brown’s decision. There is no inconsistency between an acceptance that an invention embodied in a claim is new and inventive and a finding that the contribution it makes falls solely within excluded subject matter. The former requires a consideration of the claimed invention and an assessment of whether it forms part of the state of the art or is merely an obvious step away from it. The latter requires a consideration of whether the contribution made by the invention falls solely within one or more of the exceptions to patentability. It seems to me that Dr Brown summarised the position with precision when he said the invention addresses the problems of establishing and maintaining a continuous connection between two computers by choosing to use a well known non-continuous communication technology, namely email. In other words it does not solve those problems but circumvents them. In the context of this claim as a whole this may be achieved by novel and inventive processing but that does not mean the invention escapes the exclusion from patentability of computer programs as such. As a matter of practical reality the invention contributes nothing to the art over and above the fact that it relates to a program for a computer.

For these reasons and those given by Arden LJ, I would dismiss this appeal.

I agree with both judgments.