RIM took the court case to revoke a patent owned by Visto, which
makes email software. It also asked the courts to declare that its
software and machines did not infringe the patent.
Though Mr Justice Floyd said in his judgment that RIM's
technology did infringe on the ground covered in the patent, but
that the patent was invalid because it was a computer program and
was not inventive enough.
The Patents Act, which is based on the European Patent
Convention, says that anything which is solely a computer program
cannot be patented.
"Although [the claim] is not novel in itself, it is novel within
the new combination [of hardware]," said Mr Justice Floyd. "But
this is simply the effect of running the program on the computers.
It is providing for data to be delivered from one element to
another, so that the data is accessible to a user at another
computer."
"That is exactly the sort of thing that computers do when
programmed. It does not seem to me that that is enough of a
technical effect to render the invention patentable," he said.
Visto's patent was for a 'system and method for synchronizing
electronic mail across a network'. but the Court found that the use
of communications protocol http to route emails from a
corporate network to a device was obvious, and therefore not worthy
of a patent.
Mr Justice Floyd pointed out that the fact that a technology
involves a computer program does not automatically exclude it from
patentability. "The exclusion only bites if the invention is only a
computer program," he said. "The mere fact that an invention
involves a computer program in some way does not exclude it from
patentability."
In this case, though, he ruled that the technology was simply a
computer program.
The patentability of technology which may or may not qualify as
software has long been a controversial area in UK law.
A landmark ruling in a case involving inventor Neal Macrossan
last year has set down a new set of rules on how courts should
decide whether or not technology consists solely of a computer
program and therefore cannot be patented.
The UK Intellectual Property Office (UK-IPO) has recently had to
change its guidance on the issue, though, after the High Court said
that some computer programs could be patented. It demanded the
re-examination by the UK-IPO of six patent applications and said
that the UK-IPO's guidance on the issue was too sweeping.
"I do not detect anything in the reasoning of the Court of
Appeal [in the Macrossan case] which suggests that all computer
programs are necessarily excluded," wrote Mr Justice Kitchin in the
ruling.
