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Computer programs and patents: Symbian - a new approach
24 October 2008
On Wednesday 8 October 2008 the Court of
Appeal handed down its verdict in Symbian Ltd v Comptroller of
General Patents.
This case concerned an application by Symbian 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) European Patent Convention (EPC)
excludes certain subject matter from patent protection. That matter
includes “a program for a computer”, to the extent that the
invention relates to that matter “as such”.
In this instance, the Comptroller of Patents concluded that
Symbian’s invention did relate to a computer program “as such” and
refused the application. Symbian successfully appealed to the High
Court and the Comptroller of Patents appealed the matter to the
Court of Appeal. The Court of Appeal dismissed the Comptroller’s
Appeal.
The Judgment, led by Lord Neuberger coming down from the House
of Lords, highlights a wider problem facing patentees: just what is
a computer program... as such?
The EPO
The European Patent Office (EPO) has developed a doctrine based
on assessing the technical nature of the invention. In
Vicom/Computer-related invention T0208/84 the EPO held
that an invention relating to a computer program must make a
technical contribution or it must constitute the solution to a
technical problem to be patentable.
However, the EPO has been inconsistent on this issue, moving
away from its own “technical contribution” test in some cases and
instead focussing on whether the invention involved the use of or
interaction with any hardware.
Aerotel/Macrossan
Until Symbian, the leading judgment on this issue in
the UK was Aerotel Ltd v Telco Holdings Ltd and others
and In re Macrossan's Application. The Court
of Appeal held that, in view of the inconsistency of the EPO and in
the absence of a decision of the Enlarged Board, it was not bound
to follow the EPO. The court expressly rejected the “any hardware
approach” and approved what it described as the “technical effect”
approach, but found itself bound by a ‘rider’ in an earlier Court
of Appeal decision, Merrill Lynch's Application, that
matter that falls solely within excluded subject matter is not
patentable.
The Court of Appeal therefore adopted a staged approach
suggested by the Comptroller:
- Properly construe the claim
- 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 ‘Aerotel/Macrossan test’ has become the
accepted basis on which both the UK Intellectual Property Office
(UK-IPO) and the UK courts have assessed software patentability –
seemingly in contrast to the EPO.
A call for harmonisation
So what does Symbian say and does it clarify the
law?
Certainly, it marks a shift towards the EPO. Lord Neuberger
considers that the approaches of the EPO and the Court of Appeal
can be squared and seeks harmonisation between the two. This is in
line with the position of Lord Hoffmann, as expressed in decisions
such as Kirin Amgen Inc v Hoechst Marion Roussel Limited
and, more recently, H. Lundbeck A/S v Generics (UK) Ltd.
It also follows judgments such as Actavis UK Limited v Merck
& Co., Inc.
Dilution of the test
Lord Neuberger argues that the Aerotel/Macrossan test
remains, indeed he applies it at the end of the judgment. However,
the test is likely to be diluted by subsequent decisions. Lord
Neuberger notes that stages 3 and 4 of Aerotel/Macrossan
both ask ‘is there a technical effect?’ - a point made by Patten J
at first instance. He even suggests "conflating" stages 3
and 4 of Aerotel/Macrossan and notes that stage 4 of
Aerotel/Macrossan "was unlikely to add anything to the
third stage". Arguably, we can now treat stages 3 and 4 of
Aerotel as a single step because the question of technical
contribution will answer stage 3.
Moreover, the value of any staged test was called into question,
a view consistently adopted by Lord Hoffmann. Lord Neuberger notes
that "while..staged approaches are often very valuable, they
should not necessarily be followed blindly in every case".
This should mean that the UK-IPO will now have to develop a more
flexible approach to this issue.
What is ‘technical’?
Although Lord Neuberger approves the technical character test
(anything other than approval would have marked a serious shift
away from the EPO), he gives an opaque criticism of the word
‘technical’, which he describes as “imprecise” and
“elusive”.
This raises an interesting point: what does ‘technical’ mean if
not the interrelationship of software with hardware? Perhaps the
EPO decisions are not so incompatible after all. Moreover, if that
is the true definition of ‘technical’, are all computer programs in
fact patentable and ought to be removed altogether from the list
excluded subject matter in Art 52 EPC? These questions remain to be
answered.
Summary
On final analysis this is a judgment on a difficult issue that
does little to dramatically alter the law, but harmonises the
approaches of the UK courts and the EPO. Perhaps the key phrase in
the whole judgment is in the last paragraph, where Lord Neuberger
expresses “need for a two-way dialogue between national
tribunals and the EPO, coupled with a degree of mutual
compromise”. Certainly, it will now be much easier to seek to
rely on decisions of the EPO and that could make all the difference
in patent applications and in litigation. It is also likely to lead
to increases in UK applications for certain types of software
patents.
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