Patents - Lenovo (Singapore) v Comptroller
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Jane Lambert
Patents Court (Mr Justice Birss) Lenovo (Singapore) Pte Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat) (9 July 2020)
This was an appeal from the decision of Mr P Mason, Deputy Director of Patents, in Lenovo (Singapore) Pte Ltd v Comptroller-General 10 Dec 2019 BLO/754/19 upholding the examiner's objection to UK patent application number GB1603975.2 on the grounds that the invention was excluded from patentability s.1 (2) of the Patents Act 1977 as a program for a computer and a method for doing business as such. The appeal was heard by Mr Justice Birss on 24 June 2020. His lordship delivered judgment in Lenovo (Singapore) Pte Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat) on 9 July 2020.
The Invention
The title of the application is "Selecting a contactless payment card". The invention is summarized neatly in paragraph [4] of the judgment:
"The invention relates to buying things with contactless payment devices such as credit cards. There is a problem called 'card clash'. This may happen when the physical wallet presented by a purchaser contains more than one card. In that case, which card is the electronic card reader supposed to read? Or if the machine reads more than one card representing different accounts, which account is meant to be debited? In the invention, the user presents multiple contactless payment devices to a reader, where each payment device (card) relates to a separate payment account. The system automatically splits the payment between a plurality of payment accounts according to one or more pre-set user preferences."
There is a diagram at paragraph [5] but I found that it tended to obfuscate rather than elucidate what is after all quite a simple and elegant concept.
The Objection
S.1 (1) of the Patents Act 1977 sets out the conditions for the grant of a patent for an invention. One of those conditions is that the grant of a patent for it is not excluded by subsections (2) and (3) or section 4A below. S.1 (2) declares that
"the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of -
..................................
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
..................................
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."
The examiner found the invention to be excluded under s 1 (2) as relating to a computer program and a method for doing business as such. Despite several rounds of correspondence and amendment, the applicant, Lenovo (Singapore) Pte Limited ("Lenovo") was unable to satisfy the examiner.
This was an appeal from the decision of Mr P Mason, Deputy Director of Patents, in Lenovo (Singapore) Pte Ltd v Comptroller-General 10 Dec 2019 BLO/754/19 upholding the examiner's objection to UK patent application number GB1603975.2 on the grounds that the invention was excluded from patentability s.1 (2) of the Patents Act 1977 as a program for a computer and a method for doing business as such. The appeal was heard by Mr Justice Birss on 24 June 2020. His lordship delivered judgment in Lenovo (Singapore) Pte Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat) on 9 July 2020.
The Invention
The title of the application is "Selecting a contactless payment card". The invention is summarized neatly in paragraph [4] of the judgment:
"The invention relates to buying things with contactless payment devices such as credit cards. There is a problem called 'card clash'. This may happen when the physical wallet presented by a purchaser contains more than one card. In that case, which card is the electronic card reader supposed to read? Or if the machine reads more than one card representing different accounts, which account is meant to be debited? In the invention, the user presents multiple contactless payment devices to a reader, where each payment device (card) relates to a separate payment account. The system automatically splits the payment between a plurality of payment accounts according to one or more pre-set user preferences."
There is a diagram at paragraph [5] but I found that it tended to obfuscate rather than elucidate what is after all quite a simple and elegant concept.
The Objection
S.1 (1) of the Patents Act 1977 sets out the conditions for the grant of a patent for an invention. One of those conditions is that the grant of a patent for it is not excluded by subsections (2) and (3) or section 4A below. S.1 (2) declares that
"the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of -
..................................
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
..................................
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."
The examiner found the invention to be excluded under s 1 (2) as relating to a computer program and a method for doing business as such. Despite several rounds of correspondence and amendment, the applicant, Lenovo (Singapore) Pte Limited ("Lenovo") was unable to satisfy the examiner.
Lenovo applied for a hearing before under s.101. The hearing came on before Mr Mason.
The Hearing before Mr Mason
S.125 (1) of the Act provides:
"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."
"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."
The application consists of 11 claims three of which are independent. However, these are of similar scope which will stand or fall with claim 1:
"A machine-implemented method comprising:
"A machine-implemented method comprising:
receiving, from a user, one or more user preferences comprising a split
transaction preference;
retrieving, from a plurality of contactless payment devices, a plurality of
contactless payment identifiers, wherein each of the contactless payment
identifiers pertain to a separate payment account;
automatically selecting multiple of the plurality of contactless payment
identifiers based on the split transaction preference; and
transmitting a payment request for one or more purchases using the payment
accounts corresponding to the selected multiple contactless payment
identifiers."
Mr Mason referred to s.1 (2) (c) of the Patents Act 1977 and the decisions of the Court of Appeal in Aerotel Ltd. v Telco Holdings Ltd and others Rev 1 [2007] Bus LR 634, [2006] EWCA Civ 1371, [2007] 1 All ER 225, [2006] Info TLR 215, [2007] BusLR 634, [2007] RPC 7, Symbian Ltd v Comptroller General of Patents [2009] RPC 1, [2009] Bus LR 607, [2008] EWCA Civ 1066 and HTC Europe Co Ltd v Apple Inc (Rev 1) [2013] EWCA Civ 451, [2013] RPC 30 (3 May 2013) as well as the judgment of Mr Justice Lewison (as he then was) in Re A T & T Knowledge Ventures LP, [2009] FSR 19, [2009] EWHC 343 (Pat), [2009] Bus LR D51. He then embarked on the 4-step test in Artotel to determine whether the invention was patentable.
Having construed claim 1, Mr Mason identified the technical contribution at paragraph [21] of his decision, as "a computer-implemented method of automatically selecting multiple contactless payment identifiers based on user preferences to enable a purchase to be split across multiple payment accounts, and allow the user to benefit from different account payment incentives and limits." He then took the third and fourth Aerotel steps together. He concluded at paragraph [26]:
"The final step of actually selecting an account by pressing a button once those to be used have been chosen is rather straightforward; implementing a manual button press to select a user preference was well-known at the priority date of the invention. I cannot see how this step results in the invention having a technical effect on a process outside the computer. The invention therefore does not meet the first signpost."
"The final step of actually selecting an account by pressing a button once those to be used have been chosen is rather straightforward; implementing a manual button press to select a user preference was well-known at the priority date of the invention. I cannot see how this step results in the invention having a technical effect on a process outside the computer. The invention therefore does not meet the first signpost."
The Appeal
Lenovo appealed to the Patents Court under s.97 (1).
Mr Justice Birss monitored Mr Mason's decision very carefully. He approved the authorities to which Mr Mason had referred and his interpretation and application of those authorities. The construction of claim 1 was not disputed. Lenovo and the judge agreed with Mr Mason's identification of the invention's contribution. His lordship agreed with taking the third snd fourth steps of the Aerotel test together. The judge only parted company with the hearing officer in the last 3 sentences of paragraph [26] of his decision. Mr Justice Birss said at paragraph [29] of his judgment:
He amplified his finding at paragraph [36]:
"The key question in this case is whether the invention involves a different physical interaction with the world outside the computer, as compared to what had gone before. As I have said already, I would agree with the reasoning at the end of paragraph 26 if the technical effect relied on resided in pressing a button in a computer system because that is a conventional feature of using conventional computer systems. Those features may be technical in a sense, but they cannot add technical character to make a computer program as such patentable. However, again as explained above, the point of this invention is the opposite. It is in US 438 that the user has to press a button to choose which card to use or to split the payment between two cards. In the Lenovo invention, this is handled automatically at the point of sale because the user's preferences have already been acquired and stored elsewhere. The automatic nature of the process is recognised in the formulation of contribution identified in the decision at paragraph 21. As a result of this automatic feature, the card clash problem experienced with contactless payment cards is solved without the user having to take any extra physical step at the point they use their contactless cards. In my judgment that difference is an effect of the invention which is neither a computer program as such nor a method of doing business as such nor a combination of the two. That difference is technical in character and, in the context of the invention as a whole, it is not just one of the normal incidents of a conventional computer system."
"The key question in this case is whether the invention involves a different physical interaction with the world outside the computer, as compared to what had gone before. As I have said already, I would agree with the reasoning at the end of paragraph 26 if the technical effect relied on resided in pressing a button in a computer system because that is a conventional feature of using conventional computer systems. Those features may be technical in a sense, but they cannot add technical character to make a computer program as such patentable. However, again as explained above, the point of this invention is the opposite. It is in US 438 that the user has to press a button to choose which card to use or to split the payment between two cards. In the Lenovo invention, this is handled automatically at the point of sale because the user's preferences have already been acquired and stored elsewhere. The automatic nature of the process is recognised in the formulation of contribution identified in the decision at paragraph 21. As a result of this automatic feature, the card clash problem experienced with contactless payment cards is solved without the user having to take any extra physical step at the point they use their contactless cards. In my judgment that difference is an effect of the invention which is neither a computer program as such nor a method of doing business as such nor a combination of the two. That difference is technical in character and, in the context of the invention as a whole, it is not just one of the normal incidents of a conventional computer system."
Comment
The judge's reasoning in this fascinating case was impeccable as indeed was Mr Mason's until the last three sentences of paragraph [26] of his decision. Mr Justice Birss described it as a "slip". I reflected on one line riposte by Mr Lennie Hoffman QC (as he then was) leading Nicholas Patten (as he also was) in a dispute over the construction of a sentence in the Rent (Agriculture) Act 1976 in the Burton on Trent County Court at the very start of my career. The point turned on the effect of a comma and Lennie observed that Sir Roger Casement was hanged on a comma.
Anyone wishing to discuss this article or excluded matter is welcome to call my clerk, Stephen, on 07986 948267 or send me a message through my contact page.
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