Novel claim without technical contribution – patentability not satisfied
24 September, 2013
The High Court of Justice, England has declined to interfere in the case pertaining to denial of patent to a claim envisaging two computers connected via the internet where the software moves data from one computer to another using a conventional email technique. It was contended that the invention 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 and that remote control and transmission is achieved in a manner which does not require a continuous connection between two computers.
The court, however, concluded that the claim was excluded as a program for computer as per provisions contained in Section 1 (2) of the Patents Act 1977 as there was no technical effect outside of the two computers and the computer or the connecting network were not operating in a new way. The contention that one computer was exercising control over another was rejected by the court noting that sending an email message to another computer is not control at all.
The plea that the invention solved the problem of non-availability of continuous internet was also rejected by the court holding that if the process did not solve the technical problem but only circumvented it, then that the same cannot be said to have taken any technical character from the problem. It further held that the fact that the claim was novel and inventive was not the determinant of whether it satisfied the requirements for patentability in the Act and the EPC. [Lantana Ltd. v. Comptroller-General of Patents, Designs and Trademarks - Case No: CH/2013/0131, decided on 4-9-2013]