Computer Patents: Symbian Confusion

March 19, 2008

The UK Intellectual Property Office (aka the Patent Office) has released a press release about a High Court judgment on the patentability of a computer program. The judgment in Symbian v Comptroller General of Patents [2008] EWHC 518 (Pat) is now on bailii.


The UK-IPO press release states as follows:

‘A judgment in the case of Symbian’s Patent Application has been issued today [18 March 2008] by the High Court overturning an earlier decision of the UK Intellectual Property Office (UK-IPO) to refuse the application because it relates to nothing more than a computer program.
Symbian’s patent application describes how in a computer a library of functions (DLL), which can be called on by multiple application programs running on the computer, is accessed. In particular, it provides a way of indexing these library functions to ensure the computer will continue to operate reliably after changes are made to the library.
In his judgment Mr Justice Patten observes that the UK-IPO’s decision in this case illustrates the divide which exists between the UK-IPO and the European Patent Office (EPO) about how the patentability of inventions involving computer programs is assessed. This is because, although the UK-IPO refused Symbian’s patent application, the EPO has granted Symbian a patent for its invention.
The UK-IPO believes that when deciding whether this computer implemented invention is patentable, Mr Justice Patten did not apply the so-called ‘Aerotel/Macrossan test’, which was established by the Court of Appeal in an earlier case, in the way intended by the Court of Appeal. This in UK-IPO’s view has created uncertainty about how the Aerotel/Macrossan test should be applied for inventions of this type.
The UK-IPO will therefore appeal this judgment with a view to seeking clarification from the Court of Appeal. Pending a decision by the Court of Appeal, the UK-IPO will be continuing to follow the practice, set out in its Practice Notices issued in November 2006 and February 2008, which are founded on the established Aerotel/Macrossan test. When applying this test, the UK-IPO will take account of the Symbian judgment in appropriate cases.’

Dr. John Collins (Partner at Marks & Clerk), who provided legal representation for Neal Macrossan in his attempt to bring the case before the House of Lords in his patent battle of 2006-2007, commented:


‘Today’s ruling is an important move in the march towards much more harmonised patent rulings for software at the UK and European levels. Throughout the judgment, there was repeated reference to the impossible division in treatment at the UK Intellectual Property Office and the European Patent Office. Whilst the UK Office recognises its examination process is different to that at the European level, it states that this resolves in the same outcome. This clearly is not the case when the EPO accepts the same application that the UK Office has rejected under its own treatment of software patentability.  It is vital that this incompatibility is addressed, and today’s victory certainly indicates we are moving in the right direction. Until now, the only recent expansion of opportunities in the UK software arena was the Astron Clinica case, although this narrowly focused on the medium at stake not the principle. Today, we have been given a European analysis which drives straight to the heart of what is and isn’t patentable in software claims. An appeal of this judgment is welcome, should it result in a much more cohesive treatment of software patents in the UK, and one that is more in accordance with European practice. The UK Office believes that today’s judgment was incorrect and states it will apply these principles “in appropriate cases”. It is vital that we start to see greater harmony rather than a splintered practice between the UK Office and at the appeal stage.’