High Court Decides “Card Clash” Computer-Implemented Invention not Excluded from Patentability

5 October 2020

The UK High Court has issued a rare favourable decision to the applicant in a case dealing with the patentability of computer-implemented inventions (Lenovo (Singapore) PTE Ltd v Comptroller General of Patents - judgment available here). UK decisions on this point are rare and do not follow the same approach as the EPO. 

Section 1(2) Patents Act 1977 (UKPA) excludes from patentability, amongst other things, computer programs and methods of doing business, to the extent that the patent application relates to those things “as such”. Lenovo appealed against the UK Intellectual Property Office (UK IPO)’s decision that their “card clash” invention fell solely within these areas of excluded subject matter. 

Lenovo’s invention addresses the problem of “card clash”, which arises when a user presents multiple contactless payment cards or devices to a reader at the same time. The invention provides a computer-implemented method of automatically splitting a payment across these multiple cards or devices, according to user preferences. 

In addressing whether this invention falls foul of s. 1(2) UKPA, the UK IPO and the High Court both applied the four-step test set out in Aerotel v Telco Holdings. The point at which the UK IPO and High Court diverged lies in the second step of the Aerotel test, namely identifying the actual contribution of the invention.

In determining whether an invention is excluded from patentability, the UK IPO and courts consider the “contribution of the invention”, which may take into account prior art. It is notable that the UK IPO and courts do not follow the European Patent Office (EPO) case law in this area, even though they are interpreting the same provisions (s. 1(2) UKPA being equivalent to Article 52(2) EPC). At the EPO, whether an invention is excluded under Article 52(2) EPC is assessed at a feature level without any reference to the prior art. However, inventions need to make a technical contribution, in the UK sense, as “non-technical” features are disregarded in the EPO’s assessment of inventive step.

A card reader reading multiple devices at the same time was known at the priority date of the application. However, a user would have needed to manually select the split by pressing a button on a screen. The contribution of the invention was therefore identified by the UK IPO as “automatically selecting multiple contactless payment identifiers based on user preferences to enable a purchase to be split across multiple payment accounts”.

The question asked was whether this “contribution” is merely a computer program and/or a method for doing business, as such?

To help in answering this question, the UK IPO and the High Court both referred to the “signposts” from AT&T Knowledge Ventures/CVON Innovations v Comptroller General of Patents. In particular, the first signpost asks whether the claimed technical effect has a technical effect on a process which is carried on outside the computer.

The UK IPO divided the contribution of the invention into two parts: (i) the automated calculation of the best way to split the payment amongst the cards; and (ii) removal of the physical act of a user pressing a button to select the split. The UK IPO decided that part (i) is a method for doing business performed by a computer program running on a conventional computer and therefore is excluded by s. 1 (2) UKPA. The UK IPO also determined that “implementing a manual button press to select a user preference was well-known” and therefore part (ii) cannot result in the invention having a technical effect on a process outside the computer.

The error in this reasoning, as identified by the High Court, lies in the dismissal of step (ii), seemingly for the reason that the feature of a button press is trivial and therefore cannot be considered as part of the contribution made by the invention. Whilst a button press is well-known, the invention lies in the opposite: the removal of a button press. As noted by Birss J in the judgment, just because adding something is a minor step to take does not mean that taking it away is equally minor.

Birss J identified the key question as whether the invention involves a different physical interaction with the world outside the computer, as compared to what had gone before. When the “automation of the selection of the payment split” is included in the contribution of the invention, the answer to this question is yes, and the invention is not excluded under s. 1(2) UKPA.

One can speculate how the EPO would have viewed this case and it seems fairly likely that the EPO would have objected that the idea of predetermining a desired payment split for later use is a “method of doing business” as such. Thus, the EPO may well have decided that the technical novelty lies only in implementing the desired split, which is routine programming. It thus appears that, in this instance, the UK approach may be more favourable to the applicant than the EPO approach, making this a very rare case indeed.

It is also interesting that the corresponding US patent application, now granted as US 9,779,398 B2, also encountered objections of excluded subject matter which were overcome by amendment. The amendment included specifying additional hardware, such as “a wireless point-of-sale reader” and “a contactless payment card” to avoid the objection that the invention was too “abstract”. 

For further information, please contact John Leeming or your usual contact at J A Kemp.

Can We Help You?

keyboard_arrow_up