Symbian vs The Comptroller (UKIPO)

In an eagerly awaited decision, the Court of Appeal in Symbian vs Comptroller General of Patents [2008] EWCA Civ 1066 has rejected an Appeal by the UK Intellectual Property Office (UKIPO) and made it clear that computer software that provides a “technical” contribution to the state of the art is patentable.  The case therefore confirms that Aerotel Limited v Telco Limited; Macrossan’s Application [2007] RPC 7, [40] did not change the previous test, contrary to what had been thought by the UKIPO.

In brief:

• Critically, it is now likely to be easier to obtain patent protection for software related inventions in the UK. 
• The UKIPO have been applying the four step test incorrectly.
• The four step test should not be “followed blindly”.
• The UK approach has been realigned with the older “technical contribution” test of the European Patent Office (EPO), but not quite with their current practice.
• The conditions under which a future Court of Appeal may depart from current UK precedents to align with the approach of the EPO have been clarified.
• The validity of the concept of “internal technical effect” has been strengthened. 

Although providing significant clarity on this complex issue, the case does not fully align the UK’s approach with that currently being taken by the EPO Boards of Appeal, although it does align it with the original approach taken by the EPO (as defined by the Board of Appeal in Vicom/Computer-related invention T0208/84, [1987] 2 EPOR 74).  However, if both approaches are followed correctly, then in most cases the results of the two tests will be the same.

Thus, whilst filing software related patent applications via the EPO remains the more favourable route, the Court of Appeal decision in Symbian has greatly improved the prospects for those seeking to obtain UK patents for computer implemented inventions directly through the UKIPO. The way in which the decision will be applied at the UKIPO remains to be seen, but we are nevertheless confident that we will begin to see applications being granted which would have been rejected under the approach being taken by the UKIPO prior to this decision. It also increases the prospects for successful enforcement of patents in the UK, whether granted by the EPO or the UKIPO.

A summary of the decision can be viewed below for those for whom the case is of particular interest.

Summary of the Symbian Decision

The Application under appeal relates to an invention concerning the use of dynamic link libraries (DLLs) in computers. The invention involves splitting these libraries into a ‘fixed’ part (containing functions linked directly to a program’s applications), and an ‘extension’ part which enables the addition of further functions which are not linked directly to the program’s applications but are instead accessed by an interface which advantageously allows the location of functions in the extension part to be changed without altering the way in which they can be accessed via the interface. The invention apparently enables devices in which it is implemented to work faster and more reliably than the prior art devices.

Initially, considering the four step Aerotel test adopted in the UK, the Court of Appeal re-emphasised that the test was never intended to represent a departure in UK law and that it should inevitably produce the same result as previous approaches, which were based on the landmark EPO decision in Vicom. In considering the application of the controversial third step the Court rejected the current approach taken by the UKIPO (of not considering the technical contribution made by the invention) stating that there was no reason why the third step should not amount to a consideration of “whether the contribution cannot be characterised as technical”. The Court also stressed that the four step test should not be “followed blindly” in every case.

Stressing the need for harmony between the UK and EPO approaches, the Court went on to consider the more recent “any technical feature” approach taken by the EPO in Pension Benefit (2000) T931/95, and Hitachi/Auction method (2004) T258/03 and whilst it did not go as far as embracing this new EPO approach it did open the way for such a change by clarifying the criteria under which a future Court of Appeal could depart from earlier precedents. Of particular note was the implication that the UK courts may be free to adopt the new EPO approach if the Board of Appeal were to adopt it more consistently in future cases or if the Enlarged Board of Appeal (having greater precedential weight) were to support the new approach.

It is particularly noteworthy that in reaching this conclusion the Court reinforced the concept that an “internal technical effect” (a technical benefit arising within the computer itself) can be sufficient to take an invention out of the computer program exclusion. At paragraph 56, for example the Court stated:

Putting it another way, a computer with this program operates better than a similar prior art computer. To say “oh but that is only because it is a better program – the computer itself is unchanged” gives no credit to the practical reality of what is achieved by the program. As a matter of such reality there is more than just a “better program”, there is a faster and more reliable computer.

Thus in allowing the appeal the Court applied the “technical contribution” test to the facts of the case and concluded that the invention as claimed was technical in nature on the basis that it resulted in improved operation of a computer. The invention was not therefore excluded from patentability by the computer program exclusion.