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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 Symbians 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 Comptrollers 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 Macrossans 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 Lynchs 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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The content on this page is provided for the purposes of general interest and information. It contains only brief summaries of aspects of the subject matter and does not provide comprehensive statements of the law. It does not constitute legal advice and does not provide a substitute for it.

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