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20 November 2008
The question of what types of computer
programs are patentable inventions has long vexed the UK
Intellectual Property Office and companies looking to file
applications for such inventions. The tendency has been for UK-IPO
to refuse patents on the basis that computer programs comprise
excluded subject matter – an approach which has been in stark
contrast to the approach of the European Patent Office (EPO) which
has granted European patents for the same and similar
inventions. It is not surprising that this has led to some
confusion on the part of would-be patentees, who have been wary to
commit investment towards seeking UK patents for their inventions
based in computer programs.
In the latest decision on this subject, the UK
Court of Appeal has handed down its verdict in Symbian Ltd v
Comptroller of General Patents [2008] EWCA Civ 1066, a
decision published on 8 October 2008. This in turn has
prompted the EPO to reconsider its stance on the subject.
Symbian’s invention
This case concerned an application by Symbian
Ltd for a patent for a method of accessing data in a dynamic link
library (DLL), and computing device which implemented that method.
The program re-structured the DLL within the operating system,
thereby improving the reliability of that operating system.
Article 52(2) & (3) of the European Patent
Convention (EPC), which in the UK is set out in the Patents Act
1977, s. 1(2), excludes certain subject matter from patent
protection. That subject matter includes ‘a program for a
computer’. However, the exclusion only applies to the extent that
the invention relates to that thing ‘as such’.
In this instance, the Comptroller of Patents
concluded that Symbian’s invention constituted an application for a
patent relating to ‘a program for a computer….as such’ within the
meaning of s. 1(2) of the Patents Act 1977 and refused the
application. Symbian successfully appealed to the High Court. The
Comptroller of Patents appealed the matter to the Court of
Appeal.
The Court of Appeal dismissed the
Comptroller’s appeal and found the invention to be patentable (the
novelty and inventive step of the patent had not been challenged).
However, the decision, led by Lord Neuberger coming down from the
House of Lords to deliver the judgment, highlights a wider issue
facing patentees who create inventions relating to computer
programs: Just what is a computer program…as such?
The European approach to computer programs
In Europe, the EPO has developed a doctrine based on assessing the
technical nature of the invention, beginning with the decision in
Vicom/Computer-related invention. In this case the EPO Board
commented:
‘A claim directed to a technical process which process is
carried out under the control of a program (… in hardware or in
software) cannot be regarded as relating to a computer program as
such …’.
The EPO was essentially saying that an invention relating to a
computer program must make a technical contribution or it must
constitute the solution to technical problem - in essence it must
have a technical character - to be patentable.
Unfortunately, the EPO has not always applied its reasoning
consistently in its decisions on this issue (it is not, after all,
bound by precedent in the same way that the UK courts are). In a
number of decisions the EPO Board has moved away from the technical
character test and instead focussed on whether the invention
involved the use of or the interaction with any hardware.
The ‘any hardware’ approach was particularly prevalent in
Pension Benefits. In this case the EPO Board concluded that, if the
computer system‘has the character of a concrete apparatus
in the sense of a physical entity, man-made for a utilitarian
purpose’ it is patentable.
In Hitachi the Board went even further, rejecting the technical
contribution approach entirely in favour of the ‘any hardware’
approach.
A contrasting approach in the UK
Until Symbian, the leading judgment
on this issue in the UK had been given by the Court of Appeal in
the conjoined appeals of Aerotel Ltd v Telco Holdings Ltd and
others and In re Macrossan's Application. The Court
of Appeal considered that, in view of varying approaches to the
issue by the EPO Board, and in the absence of a decision of the
Enlarged Board, it felt able largely to ignore the decisions of the
Board. Jacob LJ expressly rejected the ‘any hardware approach’ and
expressly approved the technical effect approach, but the Court of
Appeal found itself bound by a ‘rider’ in its earlier decision,
Merrill Lynch's Application,
and to an extent the decision of the Court of Appeal in Gale's
Application, that matter which falls solely within excluded subject
matter cannot be included.
The Court of Appeal adopted a four-stage
approach namely:
1 properly construe
the claim;
2 identify the
actual contribution;
3 ask whether it
falls solely within the excluded subject matter;
4 check
whether the actual or alleged contribution is actually technical in
nature.
The Aerotel/Macrossan test, as this has become known, has become
the accepted basis on which both the UK-IPO and the UK courts have
considered this issue – seemingly in contrast to the EPO’s
approach. Indeed the EPO Board rounded upon the Aerotel/Macrossan
test in Case: T 0154/04 3.5.01 Method of estimating product
distribution/DUNS LICENSING ASSOCIATES, describing it as not a
faithful interpretation of the EPC.
Has Symbian Smoothed the Waters?
Certainly it is true that
Symbian represents a shift in
emphasis towards the EPO, since it seeks to reconcile the two
approaches, but the extent to which the approaches are now unified
remains to be tested. The Chartered Institute of Patent Attorneys
(CIPA) has responded to the
Symbian judgment, stating
‘
the decision means that applications to patent software should
now be examined by the UK-IPO and the courts in the UK on the same
basis as they are at the European Patent Office (EPO)’: an
interpretation of the decision that might not be shared by all. It
will be interesting to hear the views of the EPO’s counterparts at
UK-IPO.
In his judgment in Symbian, Lord Neuberger makes clear that, in
his view, the approaches of the EPO and the Court of Appeal can be
squared, stating, ‘it seems to us
that the approaches in the two cases [Aerotel and Duns]
and indeed in the great majority of cases in this jurisdiction and
in the EPO, are, on a fair analysis, capable of
reconciliation’.
Indeed, this finding forms the backbone of Lord Neuberger’s
overall approach in Symbian, which is to seek harmonisation between
the UK Courts and the EPO. He states that, whilst the UK courts
are not bound by the EPO, where there is settled EPO
jurisprudence, the UK courts may depart from their own previous
decisions in order to be aligned with the European position,
provided of course that the UK court do not consider the EPO
position to be ‘plainly unsatisfactory’. This is very much in line
with the views of Lord Hoffmann, as expressed in decisions such as
Kirin Amgen and, more recently, Conor v Angiotech. It also
follows judgments such as Actavis UK Limited v
Merck & Co Inc, where the Court of Appeal held
that it can overrule itself to follow settled EPO case law.
Yet, the Aerotel/Macrossan test is
far from abandoned. In Symbian, Lord Neuberger makes
clear that the EPO Board will not be followed to the extent
that post-Aerotel decisions contradict the
Aerotel/Macrossan test. He noted that there has been no
decision as yet of the EPO’s Enlarged Board and that the Board
decisions to date have not been consistent. More on this later.
As a starting point, the very application of
the staged test was itself questioned. Lord Neuberger
followed the argument consistently put forward in the
context of other staged tests relating to patent matters, in
stating that ‘while staged approaches are often very
valuable, they should not necessarily be followed blindly in every
case’. One must always go back to the relevant statutory
provision and ask the question from first principles, applying a
staged test to the extent that it is helpful only. It appears then
that the UK-IPO, when considering excluded subject matter, will be
encouraged to adopt a flexible approach and it will be interesting
to see how this develops.
So what remains of the
Aerotel/Macrossan test itself? In reality, quite a lot, if
not everything, but the value of the test has been downgraded.
Analysing the four stages, Lord Neuberger
considered stages three and four of the Aerotel/Macrossan
test to amount to a single stage, namely ‘is there a technical
effect?’, in line with EPO. He suggests ‘conflating’
stages three and four on the basis that stage four ‘was
unlikely to add anything to the third stage’: a point made
expressly in Aerotel/Macrossan itself.
Having identified the contribution, the court
must decide whether that contribution is solely excluded subject
matter (stage three in Aerotel/Macrossan) and whether the
contribution is ‘technical’ (stage four in Aerotel/Macrossan). Of
this Lord Neuberger considered that ‘the order in which the
stages are dealt with is different, but that should affect neither
the applicable principles nor the outcome in any particular
case.’
This suggests that what is more than ‘excluded
subject matter’ and what is ‘technical’ remain distinct concepts,
even if they should give the same answer.
Arguably, stages three and four of the
Aerotel/Macrossan test can be treated as a single step, or
at least, the order in which they are to be asked is
interchangeable and a finding of technical contribution should
answer both questions.
Having concluded from first principles that
the Symbian invention was patentable, Lord Neuberger proved this
conclusion against the Aerotel/Macrossan staged test, and arrived
at the same conclusion. Unfortunately, by actually applying
the Aerotel/Macrossan test (all stages in the prescribed order) at
the end of the judgment, it leaves the reader to question whether
there has actually been any change at all.
What is a technical contribution?
Even more difficult, is the question which is
really at the heart of all this. What constitutes a ‘technical’
contribution? Lord Neuberger appeared to approve the technical
contribution/character test (indeed anything other than express
approval would have marked a serious shift away from the EPO), yet
there is an opaque criticism of the test, recognising it to be
‘imprecise’ and ‘elusive’.
In Symbian, the Court of Appeal
endorsed German judicial remarks at a Symposium of European Patent
Judges in September 2006. The German approach is to assume that
‘software is not patentable merely by virtue of being used in
conjunction with a general-purpose computer’. Lord Neuberger agreed
that the use of the word ‘technical’ is difficult, not least
because, as the German experience had found ‘when assessing
software as such, the program's interdependence with the technical
device makes the technical content hard to deny’. Quite rightly, in
a case called CFPH's Application it was suggested that the use of
the description ‘technical’ was "a useful servant but a dangerous
master’.
The technical effect of Symbian’s invention
was to improve the speed and reliability of the functioning of the
computer. This was found to solve a technical problem, and so fell
within patentable subject matter.
The fact that this invention has passed the
test has been heralded by some as an indication that, provided the
invention does not fall foul of the other excluded subject matter
in the list (eg it is not a method for doing business, or a method
for performing mental acts), computer programs are more likely than
not to be found to be patentable. Certainly it is clear that the
test requires something more than a ‘better’ computer program than
the prior art – there has to be a technical innovation which has an
effect whether within or outside the computer. However, it remains
to be seen how high the hurdle now is in the UK and whether there
will now be a flood of computer-program-related patent applications
which UK-IPO allows to proceed to grant.
Reaction at the EPO
Perhaps in response to the
Symbian decision, it was
reported on the EPO website on 24 October that a referral on this
subject has been made to the Enlarged Board by the President of the
EPO, Alison Brimelow.
The referral notes the difficult balance that
the “founding fathers of the
European Patent Office” tried to strikewhen writing the
European Patent Convention in relation to computer programs, by
excluding computer programs in such a way that the exclusion would
allow some flexibility as technologies developed.
However it also notes that “there are concerns, also expressed by
national courts and the public, that some decisions of the boards
of appeal have given too restrictive an interpretation of the
breadth of the exclusion”… perhaps an oblique reference to
Symbian and other UK decisions.
The EPO President has set out a series of
questions in the hope that, by answering these questions, the
Enlarged Board will give some clarity and define more precisely the
types of computer programs that are patentable.
The questions are as follows:
1
Can a computer program only be excluded as a computer program as
such if it is explicitly claimed as a computer program?
2(a) Can a claim in the area of
computer programs avoid exclusion under Art. 52(2)(c) and (3)
merely by explicitly mentioning the use of a computer or a
computer-readable data storage medium?
2(b) If question 2(a) is answered
in the negative, is a further technical effect necessary to avoid
exclusion, said effect going beyond those effects inherent in the
use of a computer or data storage medium to respectively execute or
store a computer program?
3(a) Must a claimed feature cause
a technical effect on a physical entity in the real world in order
to contribute to the technical character of the claim?
3(b) If question 3(a) is
answered in the positive, is it sufficient that the physical entity
be an unspecified computer?
3(c) If question 3(a) is
answered in the negative, can features contribute to the technical
character of the claim if the only effects to which they contribute
are independent of any particular hardware that may be used?
4(a) Does the activity of
programming a computer necessarily involve technical
considerations?
4(b) If question 4(a) is answered
in the positive, do all features resulting from programming thus
contribute to the technical character of a claim?
4(c) If question 4(a) is answered
in the negative, can features resulting from programming contribute
to the technical character of a claim only when they contribute to
a further technical effect when the program is executed?
It is not clear at this stage whether answers
to these questions would remove the current uncertainty over what
“technical” actually means. The original authors of the EPC
intended that inventions relating to computer programs would have
some degree of technical character to avoid being computer programs
as such, but that was never defined and the difficulty in defining
it has become increasingly apparent over time.
In a further twist, the Enlarged Board may
actually refuse to answer the questions altogether. A number of
commentators have pointed out that the admissibility of the
questions referred by Ms Brimelow depends upon whether the Enlarged
Board deems existing case law to be inconsistent.
If the Enlarged Board deems that there is no
inconsistency (as the then EPO President Alain Pompidou did when
Jacob LJ first argued for a referral) then it should reject the
referral altogether. If it does reject the referral, it is
effectively saying that the “technical effect” approach and the
“any hardware” approach are not incompatible, which would be
interesting conclusion in itself and would go someway towards
answering the proposed questions.
If the Enlarged Board does elect to give a
ruling, it is likely to be some time away. In the meantime, the UK
courts and the UK-IPO look set to continue to apply the
Aerotel/Macrossan test post Symbian.
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