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The UKIPO has appealed to the
Court of Appeal on the Symbian decision in order to “seek clarification” from the Court
of Appeal. The Court of Appeal decision
will most likely be issued in Autumn 2008, but what are the possible outcomes ?
The Court of Appeal will
certainly uphold the four step test set out in Aerotel and Macrossan for determining whether a
computer implemented invention is excluded from patent protection. As is now well known, that test 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.
The issue in the UK Symbian case involves steps
3) and 4). In particular, Justice
Patten, in the Symbian High Court decision took the view that the Article 52(3)
test “is part of the step 3 question but that, of course, is inseparable from
the issue of technical contribution in step 4”. The UKIPO, on
the other hand, takes the view (in their Practice Notice of 2 November 2006) that “it is not
necessary to apply this fourth step if the invention has failed at the third”.
So, if the Court of Appeal
decides in favour of the UKIPO (effectively agreeing that step 4) of the Aerotel
and Macrossan test is not necessary in all cases), the Symbian High Court
decision will be overturned and Symbian’s application will be refused. Given that that the application was allowed
before the EPO, this will exacerbate the split with Europe. It will become more difficult for the UKIPO
to argue that the UK and EPO approaches generally give the same results,
although we suspect that it will continue to do so.
However, if the Court of Appeal
decides in favour of Symbian, this will require a new approach from the UKIPO
regarding how the four step test is implemented. Whilst this will lessen the split with Europe, which can only be a good thing for the certainty of potential
patentees, we suspect that the Court will be concerned that this will open the
floodgates for huge numbers of UK applications. Whilst some of these UK applications will be allowable under the new
UKIPO approach, there will, no doubt, be a number of applications for subject
matter which should clearly be excluded, hoping to capitalise on the Court’s
decision.
Another question
is whether the Court of Appeal will once again ask that the Enlarged Board of
Appeal at the EPO consider the issue of excluded subject matter and issue a
definitive decision on the EPO position. There are, after all, big differences between
the UK and EPO approaches which really need to be dealt with. Essentially, the
EPO take a broader view on what is the contribution made by an invention - step
2) of the Aerotel and Macrossan four step test - and consider a new technical result to give a
claim patentability, even if the claimed feature which renders the claim novel
is not, in fact, technical in nature, for example, a computer program. If the
UKIPO and Courts construed technical contribution more broadly, then perhaps
the four step test could be used to give the same result as at the EPO. This request for a definitive decision on the
EPO position was made by the Court in Aerotel and Macrossan, but was refused by
Alain Pompidou, who was President of the EPO at the time. However, there is a view that Alison Brimelow
who is now the EPO President, could take a more favourable approach to such a
request. Perhaps this will go some way
to clarifying the situation at the EPO.
Whatever the decision of the
appeal, there is a general consensus that, for inventions on the boundary of
patentable subject matter, it is currently most prudent to file an application
at the European Patent Office rather than at the UK Intellectual Property
Office. This is, indeed, what we
generally advise. This does seem a great
shame for UK applicants, given that the UK has a service industry, particularly
in financial and business services, with an excellent International standing.
The patent system doesn’t seem to be serving those industries particularly
well, but things may change.
October 2008: The decision has now been issued - please see our comments here .
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