Patenting Computer Programs: The Symbian Effect!

October 20, 2008

The question of what types of computer programs are patentable inventions has long vexed the UK Intellectual Property Office and companies looking to file applications for such inventions. The tendency has been for the UK-IPO to refuse patents on the basis that computer programs comprise excluded subject matter – an approach which has been in stark contrast to the approach of the European Patent Office which has granted European patents for the same and similar inventions.  It is not surprising that this has led to some confusion on the part of would-be patentees, who have been wary to commit investment towards seeking UK patents for their inventions based in computer programs.


In the latest decision on this subject, the UK Court of Appeal has handed down its verdict in Symbian Ltd v Comptroller of General Patents [2008] EWCA Civ 1066, a decision published on 8 October 2008.


Symbian’s Invention


This case concerned an application by Symbian Ltd for a patent for a method of accessing data in a dynamic link library (DLL), and computing device which implemented that method. The program re-structured the DLL within the operating system, thereby improving the reliability of that operating system.


Article 52(2) and (3) of the European Patent Convention (EPC), which in the UK is set out in the Patents Act 1977, s. 1(2), excludes certain subject matter from patent protection. That subject matter includes ‘a program for a computer’. However, the exclusion applies only to the extent that the invention relates to that thing ‘as such’.


In this instance, the Comptroller of Patents concluded that Symbian’s invention constituted an application for a patent relating to ‘a program for a computer….as such’ within the meaning of s. 1(2) of the Patents Act 1977 and refused the application. Symbian successfully appealed to the High Court. The Comptroller of Patents appealed the matter to the Court of Appeal.


The Court of Appeal dismissed the Comptroller’s appeal and found the invention to be patentable (the novelty and inventive step of the patent had not been challenged). However, the decision, led by Lord Neuberger coming down from the House of Lords to deliver the judgment, highlights a wider issue facing patentees who create inventions relating to computer programs: Just what is a computer program … as such?


The European Approach to Computer Programs


In Europe, the EPO has developed a doctrine based on assessing the technical nature of the invention, beginning with the decision in Vicom/Computer-related invention. In this case the EPO Board commented:


‘A claim directed to a technical process which ….process is carried out under the control of a program (… in hardware or in software) cannot be regarded as relating to a computer program as such …’.


The EPO was essentially saying that an invention relating to a computer program must make a technical contribution or it must constitute the solution to technical problem – in essence it must have a technical character – to be patentable.


Unfortunately, the EPO has not always applied its reasoning consistently in its decisions on this issue (it is not, after all, bound by precedent in the same way that the UK courts are). In a number of decisions the EPO Board has moved away from the technical character test and instead focussed on whether the invention involved the use of or the interaction with any hardware.


The ‘any hardware’ approach was particularly prevalent in Pension Benefits. In this case the EPO Board concluded that, if the computer system ‘has the character of a concrete apparatus in the sense of a physical entity, man-made for a utilitarian purpose’, it is patentable.


In Hitachi, the Board went even further, rejecting the technical contribution approach entirely in favour of the ‘any hardware’ approach.


A Contrasting Approach in the UK


Until Symbian, the leading judgment on this issue in the UK had been given by the Court of Appeal in the conjoined appeals of Aerotel Ltd v Telco Holdings Ltd and others and In re Macrossan’s Application. The Court of Appeal considered that, in view of varying approaches to the issue by the EPO Board, and in the absence of a decision of the Enlarged Board, it felt able largely to ignore the decisions of the Board. Jacob LJ expressly rejected the ‘any hardware approach’ and expressly approved the technical effect approach, but the Court of Appeal found itself bound by a ‘rider’ in its earlier decision, Merrill Lynch’s Application, and to an extent the decision of the Court of Appeal in Gale’s Application, that matter which falls solely within excluded subject matter cannot be included.


The Court of Appeal adopted a four-stage approach namely:


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 Aerotel/Macrossan test, as this has become known, has become the accepted basis on which both the UK-IPO and the UK courts have considered this issue – seemingly in contrast to the EPO’s approach. Indeed the EPO Board rounded upon the Aerotel/Macrossan test in Case: T 0154/04 3.5.01 Method of estimating product distribution/DUNS LICENSING ASSOCIATES, describing it as not a faithful interpretation of the EPC.


Has Symbian Smoothed the Waters?


Certainly it is true that Symbian represents a shift in emphasis towards the EPO, since it seeks to reconcile the two approaches, but the extent to which the approaches are now unified remains to be tested. The Chartered Institute of Patent Attorneys (CIPA) has responded to the Symbian judgment, stating ‘the decision means that applications to patent software should now be examined by the UK-IPO and the courts in the UK on the same basis as they are at the European Patent Office (EPO)’: an interpretation of the decision that might not be shared by all. It will be interesting to hear the views of the EPO’s counterparts at UK-IPO.


In his judgment in Symbian, Lord Neuberger makes clear that, in his view, the approaches of the EPO and the Court of Appeal can be squared, stating, it seems to us that the approaches in the two cases [Aerotel and Duns] and indeed in the great majority of cases in this jurisdiction and in the EPO, are, on a fair analysis, capable of reconciliation.


Indeed, this finding forms the backbone of Lord Neuberger’s overall approach in Symbian, which is to seek harmonisation between the UK Courts and the EPO. He states that, whilst the UK courts are not bound by the EPO, where there is settled EPO jurisprudence, the UK courts may depart from their own previous decisions in order to be aligned with the European position, provided of course that the UK court do not consider the EPO position to be ‘plainly unsatisfactory’. This is very much in line with the views of Lord Hoffmann, as expressed in decisions such as Kirin Amgen and, more recently, Conor v Angiotech. It also follows judgments such as Actavis UK Limited v Merck & Co Inc, where the Court of Appeal held that it can overrule itself to follow settled EPO case law.


Yet, the Aerotel/Macrossan test is far from abandoned. In Symbian, Lord Neuberger makes clear that the EPO Board will not be followed to the extent that post-Aerotel decisions contradict the Aerotel/Macrossan test. He noted that there has been no decision of the EPO’s Enlarged Board and that the Board decisions to date have not been consistent.


As a starting point, the very application of the staged test was itself questioned. Lord Neuberger followed the argument consistently put forward in the context of other staged tests relating to patent matters, in stating that ‘while staged approaches are often very valuable, they should not necessarily be followed blindly in every case’. One must always go back to the relevant statutory provision and ask the question from first principles, applying a staged test to the extent that it is helpful only. It appears then that the UK-IPO, when considering excluded subject matter, will be encouraged to adopt a flexible approach and it will be interesting to see how this develops.


So what remains of the Aerotel/Macrossan test itself? In reality, quite a lot, if not everything, but the value of the test has been downgraded.


Analysing the four stages, Lord Neuberger considered stages three and four of the Aerotel/Macrossan test to amount to a single stage, namely ‘is there a technical effect?’, in line with EPO. He suggests ‘conflating’ stages three and four on the basis that stage four ‘was unlikely to add anything to the third stage’: a point made expressly in Aerotel/Macrossan itself.


Having identified the contribution, the court must decide whether that contribution is solely excluded subject matter (stage three in Aerotel/Macrossan) and whether the contribution is ‘technical’ (stage four in Aerotel/Macrossan). Of this Lord Neuberger considered that ‘the order in which the stages are dealt with is different, but that should affect neither the applicable principles nor the outcome in any particular case.’


This suggests that what is more than ‘excluded subject matter’ and what is ‘technical’ remain distinct concepts, even if they should give the same answer.


Arguably, stages three and four of the Aerotel/Macrossan test can be treated as a single step, or at least, the order in which they are to be asked is interchangeable and a finding of technical contribution should answer both questions.


Having concluded from first principles that the Symbian invention was patentable, Lord Neuberger proved this conclusion against the Aerotel/Macrossan staged test, and arrived at the same conclusion.  Unfortunately, by actually applying the Aerotel/Macrossan test (all stages in the prescribed order) at the end of the judgment, it leaves the reader to question whether there has actually been any change at all.


What is a Technical Contribution?


Even more difficult is the question which is really at the heart of all this. What constitutes a ‘technical’ contribution? Lord Neuberger appeared to approve the technical contribution/character test (indeed anything other than express approval would have marked a serious shift away from the EPO), yet there is an opaque criticism of the test, recognising it to be ‘imprecise’ and ‘elusive’.


In Symbian, the Court of Appeal endorsed German judicial remarks at a Symposium of European Patent Judges in September 2006. The German approach is to assume that ‘software is not patentable merely by virtue of being used in conjunction with a general-purpose computer’. Lord Neuberger agreed that the use of the word ‘technical’ is difficult, not least because, as the German experience had found ‘when assessing software as such, the program’s interdependence with the technical device makes the technical content hard to deny’. Quite rightly, in a case called CFPH’s Application it was suggested that the use of the description ‘technical’ was ‘a useful servant but a dangerous master’.


The technical effect of Symbian’s invention was to improve the speed and reliability of the functioning of the computer. This was found to solve a technical problem, and so fell within patentable subject matter.


The fact that this invention has passed the test has been heralded by some as an indication that, provided the invention does not fall foul of the other excluded subject matter in the list (eg it is not a method for doing business or a method for performing mental acts), computer programs are more likely than not to be found to be patentable. Certainly it is clear that the test requires something more than a ‘better’ computer program than the prior art – there has to be a technical innovation which has an effect whether within or outside the computer. However, it remains to be seen how high the hurdle now is in the UK and whether there will now be a flood of computer-program-related patent applications which UK-IPO allows to proceed to grant.


A Harmonised Position


The final analysis must be that this is a sensible, if slightly equivocal, judgment in a difficult area that does little dramatically to alter the law, but a lot to move it in the right direction, or it least in the direction of harmonisation. UK courts look set to continue to apply the Aerotel/Macrossan test to inventions which concern computer programs, but with more than half an eye on the EPO’s approach. Perhaps the key phrase in the whole judgment is in the last paragraph, where Lord Neuberger expresses the need for a two-way dialogue between national tribunals and the EPO, coupled with a degree of mutual compromise. Certainly, it should now be much easier to seek to rely on decisions of the EPO and that could make all the difference both in relation to patent applications and patent litigation.


Mark Daniels and Nick McDonald are Intellectual Property Lawyers at Browne Jacobson LLP.