Lantana Ltd v The Comptroller General of Patents, Design and Trade Marks,  EWCA Civ 1463
The England and Wales Court of Appeal upheld a ruling rejecting the UK Patent Application GB 1014714.8 (“the Application”) of the appellant Lantana Ltd. (“Lantana”), which disclosed a method of transferring files via email communication, for unpatentable subject matter for being no more than a computer program. [53, 70] The proposed invention addresses the problem of normally requiring two computers to be continuously connected to transfer files, but it does so by merely circumventing the problem with the entirely conventional means of sending email.  Although the proposed invention was novel and inventive, it still did not make a technical contribution to the art beyond being more than just a computer program “as such”, making it wholly within excluded subject matter pursuant to Section 1(2) of the Patents Act 1977. [53, 70]
Claim 1 of the proposed invention is reproduced in the lower court ruling at length at paragraph 7. The Court does not refer to the claim specifically, preferring simply to describe the invention. The proposed invention involves selecting a file from a list on a local computer, causing the local computer to sending an email request to a remote computer for the requested file, which is stored on the remote computer, and the remote computer then emailing the requested file to the local computer.  The operation is controlled either by software or application specific integrated circuits.  This method is said to address the risks associated with maintaining a continuous connection between the two computers, such as the risk of being hacked. 
Lady Justice Arden and Lord Justice Kitchin gave separate but similar reasons, with which they both agreed. [54, 71] Both judgments are summarized together. Lady Justice Gloster also agreed with both judgments. 
The Patentability of the Computer Program
The Court framed the issues on appeal as identifying the contribution made by the invention and deciding whether it constitutes purely excluded subject matter. 
The Court found that the judge correctly applied the four-step method for assessing the patentability of computer programs set out in HTC Europe Co Ltd v Apple Inc  EWCA Civ 451, which includes (1) construing the claim, (2) identifying the actual contribution, (3) asking whether it falls solely within the excluded subject matter, and (4) checking whether the actual or alleged contribution is actually technical in nature. 
The judge also correctly  applied the “signposts” to assist in determining whether there was a technical contribution as set out in AT&T Knowledge Ventures’ Application  EWHC 343.  Each of the “signposts” went against finding a technical contribution: The proposed invention did not have a technical effect outside of the computer,  did not go towards the architecture of the computer,  did not result in the computer operating in a new way,  did not make the computer run more efficiently or effectively,  and merely circumvented a problem rather than solved one. 
Lantana made three core arguments on appeal, all of which were unsuccessful.
Lantana firstly argued that the lower court judge failed to consider the invention as a whole when assessing its technical contribution. [30, 61] The Court rejected this argument, finding that the judge needed to break down the invention into its constituent parts in order to determine whether there was a technical contribution, and that in any event, the lower court judge also considered the invention as a whole later in its judgment. [31, 68]
The lower court judge determined that the technical contribution of the proposed invention was to avoid the problem of continuous connection. However, it achieves this through the entirely conventional means of email transfer, so the contribution is not technical in nature and the proposed invention is wholly within excluded subject matter. 
Lantana secondly argued that the lower court judge wrongly disregarded features of the claim for being not novel and so not forming part of the contribution.  This argument was rejected. [38, 69] The judge was open to conclude that there was no technical contribution in the sending of email messages or in the automatic transmission of these email messages. [38, 39] This sort of data transfer may have been a technical contribution at one point in the past, but at the relevant date it was not. [42-43]
Lantana’s third core argument was that the judge ought to have found that the invention provides a technical contribution since the judge had already determined the invention to be novel and inventive.  The Court rejected this argument, finding there to be no inconsistency between accepting that an invention embodied in a claim is new and inventing while finding that the contribution is still excluded subject matter.  The problem of continuous connection could be achieved through novel and inventive processing without escaping the exclusion from patentability of computer programs as such.  The Court endorsed the reasoning of the Hearing Officer:
“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.” [emphasis added]
The core reasoning seems to be firstly that the proposed invention does not provide a solution to the problem, but merely circumvents it, and secondly that the proposed circumvention is by conventional means.
Merely circumventing the problem is a factor that weighs against finding a technical contribution pursuant to the “signposts” in HTC v Apple,  but the Court is sure to clarify that the circumvention of a problem can still be patentable.  It is the lower court judge’s finding that the problem is circumvented by such a conventional means that seems to weigh most heavily towards finding that the proposed invention contains no technical contribution. 
This decision puts the England and Wales Court of Appeal in the precarious position of acknowledging that while a computer program may be novel and inventive, it still may lack the technical contribution necessary to escape being excluded as unpatentable subject matter for being a computer program “as such”. One wonders whether rejecting that there is a technical contribution in this case is actually a veiled finding of obviousness. The Court at one point even endorsed the argument 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.”  This sort of analysis seems to be directly parallel to comparing the proposed technical contribution to the prior art – the sort of analysis that would typically occur in the obviousness inquiry.
This strict exclusion of software patents can be contrasted with the Canadian approach. While the Canadian Patent Act does statutorily exclude some subject matter from patent protection, such as abstract theorems, there is no such statutory exclusion for computer programs. When assessing the patentability of an invention that relates to a program, Canadian courts will consider whether the computer elements are essential to the invention (Amazon.com, Inc v Canada, 2010 FC 1011, aff’d 2011 FCA 328). If they are not, the patent will typically be invalid for amounting to a mere abstract process. See our summary of CD 1355 for an example of such a case.
It is interesting to consider whether the proposed invention would be patentable in Canada. It may be that it would similarly be unpatentable, but for a different reason: that the program is not essential to the invention since instructing computers to send emails can be done by human beings.
Canadian and American patent applications remain pending (CA 2714454, US 12/867,825). The American application seems to have been rejected multiple times, and abandoned for failure to respond to an office action on 08/06/2013.