Lights out for Lantana

September 06 2013

A patent application for software that moves data between computers using email has been held to be unpatentable subject matter under Section 1(2) of the UK Patents Act, which corresponds to Article 52 of the EPC

The patent application ( GB1014714.8 ) was filed by Lantana Ltd and titled “Methods, Systems, and Computer program products for retrieving a file or machine readable data”.

In a judgment on September 4, Mr Justice Birss upheld a UK IPO Office decision that the claim at issue was novel and inventive, but related to unpatentable subject matter.

The case concerned claim 1 of the patent, which the judge summarised as:

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.

Following recent case law on software-related inventions, Birss used the four-step test adopted in the Aerotel case: (1) properly construe the claim; (2) identify the actual contribution; (3) ask whether it falls solely within the excluded subject matter; and (4) check whether the actual or alleged contribution is actually technical in nature.

On appeal, Lantana argued that the invention provided four technical effects and was therefore not excluded. But Birss said he found “nothing which amounts to a technical contribution arising from the claim” in any of the four effects.

“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,” wrote the judge.

Lantana was represented by Keith Beresford of Beresford & Co while barrister Tom Mitcheson acted for the UK IPO.