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intellectual property (IP) | 03 Aug 2020
BY Hugo Biermann
ENSight

intellectual property (IP)


Patents: Solving the problem of “card clash”

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

  1. Whether the claimed technical effect has a technical effect on a process that is carried on outside the computer.
  2. 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.
  3. Whether the claimed technical effect results in the computer being made to operate in a new way.
  4. Whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer.
  5. Whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

One of the issues in this case was the identification of the actual contribution made by the invention outlined in point two above. In the Aerotel case, the court had said this: “What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form”. In the present case, Judge Birrs said that, although the idea of a card reader reading multiple cards at the same time was already known, the contribution made by the latest invention lies in the subsequent step of allowing payment to be made automatically across more than one account.

Judge Birrs also dealt with some of the signposts. As regards to the first signpost, whether the claimed technical effect has a technical effect on a process which is carried on outside the compute, the judge agreed that this comprised the fact that the user did not have to present multiple contactless payment devices one after another, as well as the fact that the user did not have to actively select a split such as by clicking on options presented on a screen, as was the case with the prior art (an earlier patent). The judge said this: “Making a physical interaction obsolete is capable of giving rise to a technical effect”.

As for signpost five – whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented – the judge said that the alleged technical effect in this case does not involve implementing a button press (as was the case with the prior art), but rather involves getting rid of it.

Interestingly, the judge ended as follows:

“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... 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... 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 that 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, is not just one of the normal incidents of a conventional computer system.”

This is an interesting case that may well be persuasive in South Africa. This judgment should come as good news to both UK and South African inventors, as it reinforces the view that computer-implemented inventions and even business-related inventions can in many cases be patented, provided the invention has a technical character.

This article was reviewed by Rowan Forster, Executive IP department

Hugo Biermann

Senior Associate | IP

hbiermann@ENSafrica.com

+27 81 482 3447