UK Court of Appeal opens the door for software patents

The UK Court of Appeal, on 8 October 2008, handed down a judgment (Symbian Ltd v Controller General of Patents [2008] EWCA Civ 1066) opening the way for broader computer software patents in the UK. This decision held that computer software would be patentable where there is a technical contribution even if that contribution is within the computer and not an external effect.

Background

Article 52(2) of the European Patent Convention (EPC) of 1973 provides that programs for computers are not to be regarded as inventions and exclude the patentability of programs for computers to the extent to which a European patent application or European patent relates to a computer program “as such”. Similarly, section 1(2) of the UK Patent Act of 1977 provides that programs for computers are excluded from patentability only to the extent that the application for a patent relates to that program “as such”. The Court of Appeal in the Symbian decision confirmed that “… when deciding whether a computer program is patentable or not, precisely the same principles must apply under section 1(2) of the 1977 Act as apply under art 52 of the EPC.”

The granting of patents for software inventions has been controversial. The UK courts and the EPO have each previously acknowledged that they take a different approach to each other. The EPO has been thought to have taken a more liberal approach. In contrast, the UK Intellectual Property Office (“UKIPO”), has historically taken a very strict view on the patentability of computer programs, such that any computer program was excluded from patentability unless it “has a novel effect outside the computer”. The Symbian decision is the latest in an ongoing struggle in the last few years between inventors, the UK IPO and the UK courts on the patentability of computer software.

Facts

In this case, Symbian’s application related to an improved method of accessing files from a dynamic linked library in a computer operating system. The invention sought to overcome problems of malfunction or incompatibility when new functionality is added, leading to increased speed and reliability in the operating system.

The Hearing Officer at the UKIPO rejected Symbian’s application, holding it was not patentable as it related to a “computer program” and nothing more. Symbian appealed to the High Court where Mr Justice Patten held the invention was patentable stating: “I fail to see why a program which has some novel technical effect on an important component in the computer’s operating system should not qualify as doing more than merely operating as a computer program notwithstanding its effect is to solve what on one view is a software problem affecting the functionality and reliability of the computer”. The UKIPO appealed to the Court of Appeal.

The Appeal

Faced with a number of decisions issued by UK Courts and also by the EPO and the Board of Appeal, the Court of Appeal stated: “if judgments in Court of Appeal cases give tolerably clear guidance which would resolve the issue on this appeal, then we should follow that guidance, unless it is inconsistent with clear guidance from the Board, in which case we should follow the latter guidance unless satisfied that it is wrong”.

In assessing the breadth of the computer program exclusion, the Court chose to reject the recent approaches taken by the EPO and instead followed the Court of Appeal in Aerotel Limited v Telco Limited [2007] RPC 7. In Aerotel, the Board of Appeal decision in Vicom [1987] 2 EPOR 74 is considered the correct approach. Vicom required that the invention makes a technical contribution to the known art.

The Court of Appeal warned against there being a clear rule to determine the question of whether or not a computer program is non-patentable. Instead the Court of Appeal stated that each case must be determined by reference to its particular facts and features, bearing in mind the guidance given in previous decisions.

In this case it was found that Symbian’s invention did make a technical contribution. The Court of Appeal found the computer containing the program would be a better computer and also the instructions in the software solve a technical problem lying within the computer itself. The Court of Appeal dismissed the UK IPO appeal in holding: “a technical innovation, whether within or outside the computer will normally suffice to ensure patentability.”

What next?

To the extent that an invention reveals a technical contribution, this decision opens the way for the UK IPO to grant patents for a wider class of computer-based inventions than has previously been the case in the UK. The decision will therefore be encouraging for those applicants who seek patent protection for a computer program. All eyes will now be on the response of the UK IPO to this decision and it is expected that it will issue a new practice note reflecting the new law.