Instead of explicitly stating what constitutes a patentable invention, the South African Patents Act (“the Act”) provides an exclusionary list stating what shall not be considered “an invention” for the purposes of the Act.

In this regard, section 25(2) (e) of the Act provides, amongst others, that:
(e) a scheme, rule or method for performing a mental act, playing a game or doing business shall not be an invention for the purposes of the Act (author’s emphasis).

In CyberSource Corp v Retail Decisions, Inc. the Court of Appeals for the Federal Circuit in the United States held a broadly written software-related patent to be invalid for reasons similar to the prohibition provided in section 25(2)(e) of our Patents Act.

CyberSource’s patent was for a method for verifying the validity of a credit card transaction over the Internet using IP address information to detect when someone tries to make a large purchase through an IP address which had previously been used for fraudulent activity.

The method called for:
verifying the validity of a credit card transaction over the Internet comprising the steps of:
(a) obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;
(b) constructing a map of credit card numbers based upon the other transactions; and
(c) utilising the map of credit card numbers to determine if the credit card transaction is valid.

The patent also included a claim directed to a “computer readable medium containing program instructions” for essentially causing a computer to carry out the method.

The court held that CyberSource’s method is invalid because it is essentially a method of performing a mental act owing to the fact that it can be performed by any person using a pen and paper and does not require the use of any machine.

CyberSource’s argument for the eligibility of the computer readable medium claim was rejected by the court, because, although the literal wording was not for “a method”, the court decided to focus on the underlying invention being claimed instead of the actual form of the claim. It would not exalt form over substance since the claim was really to the method.

What can be gleaned from this case is that an unpatentable mental process remains unpatentable even when confined to use on a computer.

In another case Research in Motion (RIM), the company behind the popular “Blackberry” mobile devices, escaped infringement of a UK patent owned by Motorola. However, if the claimed invention had been worded differently Motorola could possibly have been successful. The dispute revolved around Motorola’s patent for a method of operating a messaging gateway system including:
(a) receiving commands from a wireless device;
(b) translating the commands into a protocol understood by a remote messaging system; and
(c) transmitting the translated commands to the remote messaging system so that the user of the device can control the operation of the messaging system.

It was alleged that RIM infringed the patent by offering a service which intermittently polls a user’s private mail account (for e.g. Gmail or Yahoo) for new e-mail. The patent was registered in the UK but RIM’s server offering this service was situated in Canada. This understandably posed a problem for Motorola and the patent was accordingly not infringed despite the fact that the end-user, deriving a benefit from the method as claimed, is a mobile phone operator in the UK. However, had Motorola’s claimed invention been drafted differently, perhaps focusing on a messaging system for a user’s mobile device, Motorola may well have been successful in establishing at least contributory infringement in the UK. The basis for this argument is derived from an earlier case of Menashe v William Hill where contributory infringement of an online gaming system comprising a host computer and a terminal computer was established in the UK, irrespective of the fact that the host computer was situated in The Netherlands Antilles.

In the latter case, the court asked the following questions to arrive at its decision. “Who uses the gaming system?” The answer to this question was the online user sitting at his computer terminal. In addition, it was asked “where does he use it?” the answer being, in the UK. It was therefore concluded that he uses the host computer in the UK, although it is situated abroad. Therefore, had Motorola’s invention been drafted to claim a method of operating a messaging system on a mobile device, or alternatively a similar system claim, the outcome could have been different.

Drafting patent specifications for inventions in the telecommunications field remains a tricky business, especially in South Africa where there is a dearth of case law to provide guidance in this regard, but hopefully there will be more decisions like the ones discussed above to help local practitioners avoid certain pitfalls and draft stronger patent specifications for their clients.

Sources:
- If the software method is not patentable, then neither is the “computer readable medium”. 16 Aug 2011. Patent Law Blog (Patently-O). [Online]. Available: http://www.patentlyo.com
- Product claim has longer arm than method claim. 2010. Jenkins Patent issues, pg 13, Summer.

Contact:
Wynand Fourie, Candidate Attorney, Patent Department, Adams & Adams
Reviewed by James Davies, Partner, Patent Department, Adams & Adams