Patents: Solving The Problem Of "Card Clash"
Published date | 13 August 2020 |
Subject Matter | Intellectual Property, Patent |
Law Firm | ENSafrica |
Author | Mr Hugo Biermann and Rowan Forster |
The UK High Court judgment in the case of Lenovo (Singapore) Pte Ltd and Comptroller General of Patents (Judge Birrs, 9 July 2020) deals with the issue of the exclusion of computer programs and business methods 'as such' from patentability. This judgment is worth noting as the exclusion exists in both UK and South African patent law, as well as in many other countries.
The patent application in this case, 'Selecting a contactless payment card', relates to the purchase of goods with contactless payment devices such as credit cards. The problem it seeks to solve is that of 'card clash'. More specifically, when the physical wallet presented contains more than one card, which card must the electronic reader read? Or, if it reads more than one card representing different accounts, which account must be debited? The solution offered is that the system automatically splits the payment between a plurality of accounts according to one or more pre-set user preferences.
The UK Comptroller (Registrar) refused the application under section 18(3) of the UK Patents Act. The basis for the refusal was that the subject matter claimed was excluded from patentability under section 1(2), because it relates to a computer program and a business method. Lenovo lodged an appeal against the refusal, claiming that the subject matter was not excluded.
The judge considered a number of the leading UK patent cases such as Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 (2007) RPC 7 and Symbian Ltd v Comptroller General of Patents (2009) RPC 1. These decisions tell us that there is a four-step test to be applied, namely:
- Properly construe the claim of the patent in question.
- Identify the actual contribution.
- Ask whether it falls solely within the excluded subject matter.
- Check whether the actual or alleged contribution is actually technical in nature.
The judge also referred to two further judgments that have set out various non-prescriptive 'signposts' that should be considered. These are: AAT & T Knowledge Ventures/CVON Innovations v Comptroller General of Patents (2009) EWHC 343 (Pat) and HTC v Apple (2013) EWCA 251.
Signposts for consideration
- Whether the claimed technical effect has a technical effect on a process that 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...
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