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Symbian Limited’s
Application: The UK
High Court indicates that the UK
Intellectual Property Office’s (UKIPO) treatment of computer program inventions
is too strict.
A recent decision from the UK High Court has observed that the UKIPO has
taken too narrow a view of the test for what kind of computer programs are
excluded from patentability.
The decision in Symbian
Limited’s Application, handed down on 18 March 2008, highlights the problems currently facing applicants in the UK for inventions that are implemented as
computer programs. Although, computer programs “as such” are excluded from
patent protection in both the UK and Europe, such inventions can be found patentable
provided they go further than a conventional computer program and make a
contribution in a non-excluded or technical field.
Although, both the European Patent Office (EPO) and the UKIPO have
developed their own tests to determine whether a computer program is merely a
computer program as such, the tests should in theory give the same results. The
UKIPO test is however widely felt to be far more restrictive than that of the
EPO, meaning that UK applicants for computer program implemented inventions are often put at
a disadvantage to their European counterparts. Symbian’s application is a case
in point, as claims to the same invention had been accepted by the EPO as a
patentable invention, but had been refused by the UKIPO.
In the Symbian decision, the
Judge, Justice Patten, noted the “sharp divide” between the UKIPO and the EPO,
and explained his belief that the current four stage test set out in Aerotel and
Macrossan, is not being applied by the UKIPO in the way intended by the
Court of Appeal (see below for more detailed discussion). Applying the test,
the Judge found that the contribution made by the invention was in a
non-excluded field, and that the UKIPO was wrong to refuse the application.
The UKIPO has indicated that it will now appeal to the Court of Appeal,
for clarification. Although, the UKIPO will continue to apply its current
interpretation of the test until a decision is handed down by that court, the
decision of the High Court provides hope that the UKIPO strict stance against
computer program implemented inventions may now be brought more into line with that
of the European Patent Office. The UKIPO press release is here.
Analysis of the Decision
The invention in Symbian related to a novel form of Dynamic Link Library
(DLL), and addressed a “perceived technical shortcoming” in that a computer
relying on the DLL may cease to work if the DLL is modified as a result of
updates to the computer's functionality. Although, the invention provided a
contribution in the form of a computer that operated more reliably, the UKIPO
had taken the view that the invention was merely one software program in
communication with other, and was therefore excluded subject matter.
The current test for whether a computer implemented invention is excluded
from patent protection is set out in the Court of Appeal decision Aerotel and
Macrossan. It is a four stage test that requires the UKIPO to:
(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.
Step 4 was retained in the test so that it would be explicitly consistent
with the earlier “technical contribution” approach set out in decisions of the
Court of Appeal in Merrill Lynch's
Application, and Fujitsu Ltd's
Application. Although, step 4 is supposed to be a cross-check and integral
with step 3, the UKIPO tend to regard step 4 as unnecessary, that is to say, if
the UKIPO throw a case out at step 3 of the judgement, then they do not always
feel obliged to consider step 4. According to Justice Patten in Symbian, this
undue emphasis on step 3 is problematic. Paragraphs 57 and 58 of his decision
are illuminating.
57. [The Hearing Officer] clearly therefore takes the view that an
improved method of accessing files in the DLL (although creating improvements
in the reliability of the computer as a functioning machine) cannot amount to a
relevant technical contribution because it is confined to the improvement of
one piece of software by another. Having excluded the invention as part of Step
3, [the Hearing Officer] regards Step 4 as redundant.
58. Clearly one needs to avoid treating any
computer program as some kind of technical advance. But 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. I think this is what Pumfrey J had in mind when he referred in Shoppalotto to a patentable invention as providing a
solution to a concrete technical problem.
In conclusion, the Judge noted:
63. In the present case there is a perceived
technical shortcoming caused by modification to the DLL as a result of updates
to the computer's functionality. This is not a case where the invention is
limited to the processing of data. If an increase in the speed at which the
computer works can take the program out of Art.52 (3) (see Aerotel at paragraph
92) it is difficult to see why the improved reliability of the machine brought
about by the re-organisation of the DLL in its operating system does not.
64. I think that the Hearing Officer took too narrow a view of the
technical effect of the invention and was wrong to exclude it from
patentability on the basis that it amounted to no more than a computer program.
The appeal will therefore be allowed.
If the Court of Appeal uphold the
view presented in Symbian, the UKIPO will be forced to move away from its
current strict approach to the computer program exclusion, back to the more
European style interpretation favoured before the UKIPO changed its practice in
light of CFPH LLC’s
Application. CFPH LLC’s
Application is itself the precursor to the Aerotel and Macrossan case in
which the current four step test was agreed.
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