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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.

The registration procedure carried out by the Community Office in Alicante has, until now, involved the carrying out of searches for conflicting marks both in the Community Office itself and in national offices in most member states of the Community. This month, that procedure is changing.

On applications filed after 10 March 2008, only the search of earlier Community marks will be carried out automatically; applicants who wish searches to be carried out in national offices will need to make a formal request on filing an application and pay an additional fee.

National search reports will only be available for 16 of the 27 members of the European Union. The following national offices will be conducting searches:

A request for national searches must be made in respect of all of the countries listed above, or none. It will not be possible to elect to have searches carried out in only some of the participating states.

France, Germany and Italy, all of which are likely to be commercially important to applicants, are continuing to opt out of the search procedure but they are now joined by the Benelux countries, Belgium, the Netherlands and Luxembourg. Where a new mark is to be adopted in those countries, separate freedom-to-use searches may be advisable.

Given the low cost of the national searches, they may, despite their geographical limitations, still be worthwhile as an inexpensive means to gain useful information in the territories covered. If you would like us to request that national searches be carried out, please let us know when you instruct us to file an application.

As part of the new search procedure, the content of national search reports is being harmonised. The new reports will list application, priority and registration dates, proprietor names and addresses, representations of the marks and the classes covered.

Important point for users of the Madrid System

Where the European Community is designated under the Madrid system, national searches must be requested and the fees paid directly to the Community Office irrespective of the office with which the Madrid application is lodged. The request must be made, and fees paid, within one month of the World Intellectual Property Office (WIPO) informing the Community office that it has been designated. In practice this deadline is likely to fall within a few weeks of the filing of the Madrid application.

We would recommend that the necessary steps be taken as soon as the international registration number is known and would be happy to handle this on your behalf at a cost of £65 over and above the fee payable to the Office (Euro 192).

If you would like more advice on searching in Community member states or help in requesting national searches in connection with designations of the Community in Madrid system applications, please ask your usual contact at Reddie & Grose or email This e-mail address is being protected from spam bots, you need JavaScript enabled to view it

Reddie & Grose is pleased to announce that Catherine Nursaw and Dr Michael Roberts will be joining the firm as associates on 17 March and 1 April respectively.

Catherine is a trade mark attorney and has a number of years experience working in private practice. She will be based in the firm's London office, and will be involved in prosecution and portfolio management matters.

Michael is a patent attorney specialising in biotechnology and life sciences, and spent several years with Reddie & Grose until April 2005 before spending some time working with a firm of patent attorneys in the south-west of England. He will be based in the firm’s Cambridge office, where he previously worked, which handles a significant part of the firm’s biotechnology practice for domestic and overseas clients. His expertise will be a welcome addition to the Cambridge office and to the firm.

Paul Brereton, senior partner said, “the Partnership are very pleased that Michael and Catherine are joining the professional team at Reddie & Grose. Their appointment confirms the partners’ commitment to building the business and increasing the depth of service and expertise available to our clients".

If you have any queries regarding this press release or require any other information about us please contact your usual Reddie & Grose Partner, or email This e-mail address is being protected from spam bots, you need JavaScript enabled to view it

THE UK INTELLECTUAL PROPERTY OFFICE (UKIPO) LIFTS ITS BLANKET REFUSAL OF “COMPUTER PROGRAM” CLAIMS, WHILE SIMULTANEOUSLY, THE UK PATENTS COURT STRENGTHENS THE SCOPE OF THE EXCLUSION OF COMPUTER PROGRAMS “AS SUCH” FROM PATENT PROTECTION

According to a new practice notice, dated 7 February 2008, the UKIPO will no longer require patent applicants to delete all claims defining computer programs from their patent applications before such applications can be allowed. Only those claims defining computer programs that do not “contribute in a non-excluded field” will have to be deleted.

Under recent practice, all claims directed to computer programs were objectionable, irrespective of whether any equivalent apparatus or method claims (directed to the same computer implemented invention) were allowable. This practice was believed by many to be incorrect, because it placed too much emphasis on the way the patent claim was written (the form of the claim), rather than on the nature of the invention itself when viewed in light of the prior art (the substance of the invention).

The new practice note reflects the High Court decision in Astron Clinica Ltd and others, and the Comptroller of Patents Designs and Trademarks, (2008 EWHC 85 (Pat)) handed down on 25 January 2008. In that decision, the Judge stated:

“In a case where claims to a method performed by a computer running a suitably programmed computer, or to a computer programmed to carry out the method are allowable, then in principle, a claim to the program itself should be allowable.”

However, only those claims that are “drawn to reflect the features of the invention that would ensure patentability of the method which the program is intended to carry out if it is run” would be allowable in practice.

The decision is welcome, as it means that where a computer implemented invention is not “a computer program as such”, patent applicants will be able to protect their invention using apparatus, method and computer program claims. Claims to the computer program may be of considerable value to the patent holder by allowing them to seek damages that arise directly from infringing copies of the software being put on the market by third parties.

The Astron Clinica decision and practice note do not otherwise change the interpretation of the exclusion of “computer programs as such” in section 1 of the Patents Act 1977, and inventions that are considered to relate purely to computer programs making no contribution in a non-excluded field (providing no technical effect) will still not be allowed.

However, a recent decision of the Patents Court, Autonomy Corp. Ltd., handed down on 7 February 2008, suggests that the test for what is and what is not an excluded “computer program as such” has now become a little stricter. While approving the comments of the Judge in Astron Clinica, the Judge in Autonomy Corp. Ltd. added the following as summary of the existing law:

“If the claimed contribution exists independently of whether it is implemented by a computer, in the sense of embodying a technical process lying outside the computer, then the contribution will not be a computer program as such”

“The mere fact that a computer program reduces the load on the processor or makes economical use of the computer’s memory or makes more efficient use of the computer’s resources does not amount to making a better computer, and thus does not take it outside the category of computer program as such”.

These comments consolidate the view that most computer implemented inventions will be required to provide an effect outside of the computer itself for them to be allowable, and that computer programs that operate internally to improve the working of the computer itself will continue to face objection.

The Judge does offer some hope by saying:

“If the contribution […] solves a technical problem in the functionality of a computer it is unlikely to be a computer program as such”

But it is not clear what, if processor load, economical use of the computer’s memory and more efficient use of the computer’s resources, are not considered relevant, what “technical problems in the functionality of a computer” remain. No doubt further case law will clarify this point.

If you have any questions about how the new practice note or decisions affect your patent application or portfolio, please contact This e-mail address is being protected from spam bots, you need JavaScript enabled to view it