A collective sigh of relief resonated across the computer industry when Mr Justice Patten allowed the appeal in Symbian Ltd v Comptroller-General of Patents [2008] EWHC 518 (Pat) arising from a UK Intellectual Property Office (UK-IPO) decision, refusing to grant a patent for a method of accessing data held in a dynamic link library on the grounds that each of the claims related to a computer program and therefore were not patentable under Section 1(2) of the Patents Act 1977. Whether that sigh will give way to a collective groan will depend on how Symbian and the judge’s refusal to be shackled by Aerotel/Macrossan [2007] RPC 7 fare before the Court of Appeal. Nevertheless, this latest decision is a pivotal case and provides a further glimmer of hope for any company developing new technology that has one or more computer programs at its core.

Moreover, the fact that the UK-IPO refused the exact same claims that just received a notice of grant from the European Patent Office (EPO) demonstrates the divergence in the respective Offices’ approaches to the patentability of computerrelated inventions. If that divide has been reduced by recent decisions, most notably Mr Justice Kitchin’s ruling in Astron Clinica, Mr Justice Patten appears to have reduced it further in allowing Symbian’s appeal on the basis 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”.

BACKGROUND

One cannot do better than use the excellent summary provided by Patten J regarding this complex area of technology. He summarised as follows:

“Most modern computer operating systems embody a dynamic link library (DLL). The DLL is a collection of small programs or files, any one of which can be called up as required by an executable program (EXE) running on the computer at the relevant time. DLL files are used to perform a variety of functions. A common example is allowing the EXE program to communicate with a specific device such as a printer. But they can also be used to perform routine management functions required by the EXE program. Examples given in the evidence and the specification include identifying free space on the hard drive, saving data to physical memory, the creation or destruction of an object within a process and causing a device to perform a function such as emitting an alarm sound. Once the relevant DLL file has been called by the EXE program it can then be run within that program so as to execute the particular function required.”

According to the specification of Symbian’s patent application, which was the primary focus of the appeal, the invention related to: “…a method of accessing data in a computing device and, in particular to a method of accessing data held in a dynamic link library in the computing device. The present invention also relates to a computing device controlled by the method.”

Symbian’s invention therefore applied to a wide range of electrical devices including any form of computer, various forms of cameras and communication devices such as mobile and smart phones and other products which combine communications, image recording and computer functionality within a single device.

AEROTEL/MACROSSAN

During prosecution of the application, the hearing officer focussed on the method of Claim 1 and then went through the all-important Aerotel four step test:

  1. Construe the claim (i.e., decide what monopoly is being claimed before going on to the question of whether it is excluded);
  2. Identify the contribution. Symbian’s case before the hearing officer stated that the contribution made by the invention lay in the improved reliability of a computing device enabled by the provision of a novel interface. This enabled the EXE program to access available functionality regardless of additions or amendments made by the updates to the DLL and its ordinal numbers.
  3. Ask whether it falls solely within the excluded subject matter. This is the “as such” test. In Symbian, the hearing officer referred to Aerotel and in particular to paragraph 92 of the judgment in which Jacob LJ said: “A technical effect which is no more than the running of the program is not a relevant technical effect… merely putting a new program on a known memory device is not enough to escape Article 52(2).”
  4. Check whether the actual or alleged contribution is actually technical in nature. The hearing officer combined Steps 3 and 4 essentially by stating that: “I therefore find that the contribution made… is nothing more than a computer program for allowing an executable program to link to a DLL through a further computer program interface and hence sits squarely within the computer program exclusion. I do not need to apply the fourth step of the test as the contribution has failed the third step.”

In brief, the only exclusion relied upon by the UK-IPO for rejecting Symbian’s application was that the invention related to computer programs.

EPC AND THE PATENTS ACT

Article 52 of the EPC (which is given effect by Section 1(2) of the 1977 Act provides as follows: 

1. European patents shall be granted for any inventions, [in all fields of technology] which are susceptible of industrial application, which are new and which involve an inventive step.

2. The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

a) discoveries, scientific theories and mathematical methods;

b) aesthetic creations;

c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

d) presentations of information.

3. The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subjectmatter or activities as such.

The words “in all fields of technology” included in square brackets were added to paragraph 52(1) EPC and came into effect on 13 December 2007. This was inserted in order to make the European Patent Convention (EPC) more compliant with TRIPs, which does not have the same categories of excluded material.

As yet, there has been no corresponding change to the UK Patents Act. Symbian’s argument, however, was based on the change to the EPC that afforded a broader interpretation of the law compatible with the current jurisprudence of the EPO in preference to the decisions of the Court of Appeal including the “Holy Grail” of decisions in this area, i.e., Jacob LJ’s ruling in Aerotel.

PATTEN J’S DECISION

Patten J began by expressing his disenchantment with the current state of affairs. It has long been recognised that the excluded categories under Article 52(2) have no common theme or purpose and need to be considered separately. The question of how to determine whether an invention is excluded from patentability as a computer program was one of the principal issues considered by the Court of Appeal in Aerotel.

In giving the judgment, Jacob LJ conducted an extensive analysis of the history of the case law on excluded matter.

Patten J proffered that advances in technology meant that most improvements to a computer or computer-based device could be effected via a software program. The present invention was no exception to this. It involved the re-structuring of the DLL (itself a computer program) by the provision of a novel interface to assist the EXE program to access the relevant DLL file regardless of intervening amendments or updates to the system. As such, this case provided another good example of the way in which the UK-IPO and the English courts are forced to struggle with concepts such as technical contribution or technical effect in a way that is alien to the EPO in its current approach to the same provisions of the EPC.

The judge noted that in Aerotel, Jacob LJ rightly described the various decisions of the EPO Board of Appeal as “mutually contradictory” and declined to follow any of the later trio of decisions. Jacob LJ suggested a reference of various ques tions of law to the Enlarged Board of Appeal in order to clarify the test of exclusion under Article 52. That invitation has subsequently been declined by the President of the EPO as unnecessary on the basis that the reasoning of the Board in Vicom [1987] T 208/84 has been replaced by that in Pension Benefit [2000] T 931/95, Hitachi [2004] T 258/03, and Microsoft [2006] T 424/03.

Then, in a statement of rather startling candour, Patten J stated that “this divergence between the jurisprudence of the English Courts and the EPO is a matter of considerable concern and renders hollow the sentiments expressed by judges such as Lord Hoffmann in Merrill Dow Pharmaceuticals Inc v HN Norton & Co Ltd [1996] RPC at p 82 about the need for consistency of approach. To some extent this is the inevitable consequence of the combination of our strict system of precedent and the inability of the EPO Board of Appeal to make decisions binding on the Courts of all member states.”

In the judge’s view “an invention may be viewed as a solution to a concrete technical problem. Merely to program a computer so that it operates in a new way is not a solution to any technical problem, although the result may be considered to be a new machine. It follows that an inventive contribution cannot reside in excluded subject matter. I consider that this is a correct statement of the principle…” He went on to declare that he was free to follow the more recent trio of EPO decisions in preference to Aerotel and others.

What was clear to Patten J was that having 1 step, 2 steps, 4 steps or any combination thereof was immaterial. He stated that:

“In a case such as this where the only potential application of Article 52(2) is in relation to a computer program care needs to be taken not to pre-judge the issue of technical contribution or even to exclude it by concentrating too much on the fact that the invention is program based. 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.”

Without an effective operating system a computer is no more than a plastic casing. It is simply inaccurate to label all programs within the computer as software and on that basis to regard them as of equal importance in relation to its functionality. The end result of the invention (as claimed) is that it does solve a technical problem lying within the computer. As a final blow to the UK-IPO Patten J concluded 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.”

COMMENT

Hot on the heals of the judge’s decision, the UK-IPO issued a press statement stating 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.” In the UKIPO’s view, this decision has now created great uncertainty about how the Aerotel/Macrossan test should be applied to inventions of this type.

The UK-IPO is therefore planning to appeal this judgment with a view to seeking clarification from the Court of Appeal. Pending that decision, the UK-IPO will be continuing to follow the practice, set out in its Practice Notices issued in November 2006 and February 2008, based on the established Aerotel/Macrossan test. When applying this test in the future, however, the UK-IPO will now take account of the Symbian judgment in appropriate cases—one would think quite an irksome prospect especially for the original examiner of Symbian’s patent.