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UK
COURT OF APPEAL DECISION - SYMBIAN
On
8 October 2008, the UK Court of Appeal handed down a judgment in relation to
patentability of a patent application directed to a computer program belonging
to Symbian Limited. The decision gives clear direction that the UK court
believes our law should be interpreted in line with both European Patent Office
(EPO) decisions and earlier UK Court of Appeal decisions.
Importantly,
the decision appears to reverse the approach currently adopted by the UK
Intellectual Property Office (UKIPO) on excluded subject matter and clarifies
that patent protection should be available for computer program implemented
inventions that make a technical contribution to the art, including inventions
where the technical contribution solves a technical problem lying within a
general purpose computer itself.
THE
BACKGROUND
Whilst
computer programs "as such" are not patentable under either UK or European law,
it was established in the Vicom decision, issued by the European Patent Office
Board of Appeal in 1986, that it is possible to patent such inventions provided
they make a “technical contribution”. The UK subsequently followed this European
Patent Office (EPO) decision, but has since diverged from EPO case law with
regard to the importance and meaning of the term “technical contribution”. This
has led to it being easier to obtain a patent for software implemented
inventions via the EPO than via the UKIPO, and this is clearly illustrated in
Symbian's case, where an application for the same invention was granted by the
EPO but refused by the UKIPO.
THE
DECISION
Upholding
Symbian's patent for an improved method and software for linking executing
programs with DLL program files, the Court of Appeal has now relaxed the
requirements for patenting software in the UK. In particular, it seems that the
court is trying to rein in the strict approach being applied by the UKIPO and
bring the application of UK case law more in line with the EPO.
The
UKIPO currently holds the view that a computer program is not patentable unless
it makes a contribution outside the computer. Looking for
general principles to apply when establishing patentability, the Court of Appeal
reverted back to the EPO Board decisions of Vicom and two IBM Corp cases, as
well as their own previous decisions, Merrill Lynch and Gale's Application. In
contrast to the UKIPO's current approach, the court came to the conclusion that
the question of patentability of an invention should be determined:
“by
answering the question whether it reveals a “technical” contribution” and noted
that “a technical innovation, whether within......or outside the computer will
normally suffice to ensure patentability”.
COURT
GUIDANCE
The
court gave further clear guidance:
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Software will not be patentable merely by virtue of being used with a
general-purpose computer, but a technical contribution indicates that a software
implemented invention should be patentable.
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Guidance on the meaning of “technical contribution” should be sought from the
earlier decisions Vicom, IBM Corp, Merrill Lynch and Gale. According to the
court, improving the speed and reliability of the functioning of the computer is
a technical contribution; in particular a program that makes a computer operate
on other programs faster than prior art operating programs is patentable.
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Correct application of UK law should result in software inventions that provide
a technical contribution, even one solely within the computer, being
patentable.
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The court was keen to warn against the risk of blindly following specific staged
approaches such as the four step test approach established in Aerotel (for
further details of this decision please see our earlier
case note). The Aerotel four step test requires identifying whether the
contribution made by the invention falls within excluded matter and then
separately determining whether the contribution is technical in nature.
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The court came to the conclusion that, at least in principle, the steps of prior
tests could be combined into a single step striking to the heart of the question
of patentability; namely whether the contribution of the invention is technical.
The real issue to be decided would then become whether the invention provides a
technical contribution to the art.
COMMENT
So
what does this decision mean for those seeking to protect software related
inventions?
It
is clearly good news that the UK courts have issued a more favourable view on
patentability, particularly for computer implemented inventions that could be
argued to improve the functioning of the computer, such as improving the speed
and reliability of the functioning of the computer. Patents to such inventions
now have a better chance of being upheld by the UK Court of Appeal, whether
obtained via the UKIPO or EPO.
A
UKIPO practice note in response to the Symbian decision is eagerly awaited. It
will be interesting to see how widely the UKIPO interprets the court’s words and
how they alter their current practice to bring their approach to software
patentability into agreement.
For
more background on the Symbian case, please refer to our earlier
note on the possible outcomes of the appeal.
If
you have any questions about how the decision affects your patent application or
portfolio, or require any other information about us please contact your usual
Reddie & Grose contact or email
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