In Symbian Limited v Comptroller General of Patents [2008] EWCA Civ 1066, the Court of Appeal dismissed the appeal of the Comptroller against the decision of Patten J in the High Court ([2008] EWHC 518 (Pat)). Patten J had overturned the Comptroller’s original decision that the Symbian application was excluded from patentability because it was a computer program but the position remained unclear because of the differences of approach between the IPO/EPO (see here for an account of that judgment). Those differences must surely now be resolved by the IPO accepting a change in policy.
It has been accepted for some time that a wider invention which happens to involve a computer program can be protected, for example using a programmed computer to make a production line work better. With the Symbian invention, the question was whether a program which made the computer itself work better could be patented. Lord Neuberger, giving the judgment of the Court of Appeal, agreed with Symbian that this was the sort of invention which could be protected. He noted that to do otherwise would be inconsistent with what the UK courts had previously decided. He also noted the importance of the UK Intellectual Property Office seeking, where it could, to be consistent with the European Patent Office (EPO); the EPO had already decided to grant a patent for the invention in question.
Following the Aerotel case the UK-IPO had devised a four-step approach to software patentability, the last of which asked whether the contribution was ‘technical’ in nature – technical contribution being central to the EPO’s approach. However the UK-IPO’s interpretation of this four-step approach diverged from the European approach in the case of an application filed by Symbian, in that the ‘technical test’ was considered optional, with no need to apply it in the event that the application failed the third step. Today’s judgment rejected this interpretation, stating that the two approaches are ‘capable of reconciliation’ involving ‘conflating the third and fourth steps’.
Dr. John Collins, Partner at Marks & Clerk, commented:
“This is an important step on the road to harmonising UK and Europe’s approach to software patentability. Software developers in the UK who had previously faced a much narrower interpretation of what could be patented should welcome this news. The ‘technical test’ has been placed back at the heart of the UK approach, which is particularly crucial in the case of ‘pure software’ – implementing technical solutions to technical problems that don’t extend beyond the computer itself. While the details of the UK and EPO approaches still differ, the interpretation outlined in today’s judgment should lead to the same outcome in the majority of cases.”
The decision also suggested that further clarification of the EPO’s approach is necessary for the UK-IPO to fall in line, claiming that the EPO’s previous decisions have themselves been inconsistent. Lord Justice Jacob refused leave to appeal on the basis that an appeal to the House of Lords would be inappropriate without first consulting the EPO’s Enlarged Board of Appeal.
Dr. John Collins concluded:
“The claim that previous EPO decisions have been inconsistent is not accepted by the EPO. The EPO’s approach has evolved over time and in the opinion of the EPO its approach is now clear cut. The previous request for the President of the EPO to refer this matter to the Enlarged Board of Appeal following the Aerotel case was rejected. In the unlikely event that the Enlarged Board become involved it would lead to a deferral of any borderline applications while a decision was made. This is a process that could take many years, creating a backlog that could be disastrous for European business.”
Dr Myles Jelf of Bristows said: “This decision makes a lot of sense from a legal viewpoint, as the contrary view could effectively have shut out all patent protection for anything that takes place within a computer. It will, however, cause reverberations throughout the software industry as, following it, more patents will surely be granted which cover software applications and packages.”
