In an appeal concerning the proper application of the exclusion of computer programs from patentable subject matter, the Court of Appeal last week decided that the four-stage test it had formulated in Aerotel was the appropriate test to apply, declining to follow the recent line of European Patent Office authorities (Symbian Limited v Comptroller General of Patents [2008] EWCA Civ 1066).

Business impacts

  • The Aerotel four-stage test is the correct approach to apply to the consideration of the patentability of computer related inventions. However, it seems that the third and fourth stages of that test can now be combined to, in effect, ask whether the invention makes a technical contribution to the state of the art.
  • This will be a welcome decision to the software industry in the UK developing software that solves a genuine technical problem appear more readily patentable. The UKIPO will now need to reconsider its previously restrictive approach to the examination of software patents in the UK.
  • The Court of Appeal expressed itself willing to depart from UK authority to follow established, authoritative and settled EPO authority (as it had done in Actavis v Merck (May 2008)) but expressed clear reasons for not following recent EPO case law in relation to the patentability of computer programs.


Excluded subject matter

Article 52 of the European Patent Convention (the "EPC"), implemented into UK law by section 1 of the Patents Act 1977, states that a patent may be granted for an invention that is new, involves an inventive step and is capable of industrial application. Article 52(2) lists the following categories of subject matter that are not to be regarded inventions:

  1. discoveries, scientific theories and mathematical methods; 
  1. aesthetic creations; 
  1. schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
  1. presentations of information.

Finally, Article 52(3) qualifies the list of excluded subject matter, stating that they only apply to the extent to which a patent or patent application relates to such subject matter or activities "as such".

The Aerotel four stage test for patentability

Almost two years ago, the Court of Appeal handed down its now famous (in the patent world at least) judgment in the joint appeals of Aerotel (see our newsflash "Exclusions from patentability – The Court of Appeal sets a four stage test" (27 October 2006). This decision considered at length the previous authorities in the UK and EPO on the scope of the exclusions to patentability in Article 52 of the EPC, in particular the application of the exclusion to computer implemented inventions. Jacob LJ formulated the following four stage test:

Step 1: Properly construe the claim – decide what the monopoly is before going on to question whether it is excluded.

Step 2: Identify the actual contribution – what has the inventor really added to human knowledge? Consider factors such as the problem said to be solved, how the invention works, what its advantages are.

Step 3: Ask whether it falls solely within the excluded subject matter – this captures the "as such" qualification.

Step 4: Check whether the actual or alleged contribution is actually "technical" in nature – Jacob LJ observed that this step may not be necessary as it should have already been considered by Step 3, but decided to include it in the test in order to follow the previous Court of Appeal authorities.

Symbian's patent application for software to organise other software

Symbian Limited ("Symbian"), a software development and licensing company, filed an application for a patent at the UK Intellectual Property Office (the "UKIPO") concerning a method of accessing data in a dynamic link library in a computing device.

A dynamic link library is a means of storing functions common to a number of different applications so that they are only required to be stored once. The function is then selected and linked to an application program when it is loaded and run. A function can be selected by its name or by the numbered address at which it is stored (by ordinal). Problems and malfunctions can occur with dynamic link libraries when further functionality is added.

Symbian's application claimed to overcome this problem by splitting the dynamic link library into two parts: a 'fixed' part, containing one or more functions linked directly to the program applications, and an 'extension' part, enabling the addition of further functionality. These extension functions are not directly linked to applications but are accessed via a further library or interface located in the extension part of the dynamic link library. This library or interface is a computer program that avoids the difficulties and potential unreliability of standard dynamic link libraries.

The examiner at the UKIPO objected to Symbian's patent application on the basis that each of the claims related to a program for a computer and could not be saved by amendment. This objection was confirmed by the UKIPO Hearing Officer. On appeal to the Patents Court (Symbian Limited v Comptroller General of Patents [2008] EWHC 518 (Pat)), Patten J decided that the UKIPO took too narrow a view of the technical effect of the invention and was incorrect to exclude it from patentability on the basis that it amounted to no more that a computer program. The UKIPO appealed Patten J's decision.

The Court of Appeal allows the patent

Lord Neuberger, sitting in the Court of Appeal with Jacob LJ and Maurice Kay LJ, gave the judgment of the Court. The main issue that the Court considered was the ambit of the computer program exclusion. The UKIPO argued that the exclusion had the effect of excluding from patentability any program unless it had a novel effect outside the computer. Symbian argued that the exclusion was more limited, only excluding programs which do not provide a technical solution to a technical problem. In order to aid its decision, the Court considered the wealth of case law in relation to computer related inventions in the English courts and in the Board of Appeal at the EPO, both before and after Aerotel.

EPO vs UK authority – Court of Appeal finds that it is not bound to follow a non settled EPO position

The extent of the statutory exclusion of computer programs from being patentable inventions is an area of patent law that has been much debated over the last few years both in the UK courts and at the European Patent Office (the "EPO").

As stated above, the UK approach to the application of the exclusions to patentability had been set out by Jacob LJ in Aerotel. This approach was considered shortly after the judgment in Aerotel by the EPO in Duns Licensing Associates (T 0154/04), where the Board of Appeal held that inherent in the concept of an invention was any subject matter having technical character, and that a contribution could be patentable even if it was related to the categories listed in Article 52(2). The Board of Appeal also took the opportunity to criticise the Court of Appeal's decision in Aerotel, stating that it was "not consistent with a good-faith interpretation of the EPC."

Lord Neuberger, giving judgment in Symbian, thought that Aerotel and Duns Licensing could in fact be reconciled with each other – the third and fourth stages of the Aerotel test, when combined, give the same effect as in Duns Licensing, asking whether the contribution cannot be regarded as technical.

However, the Court of Appeal then reviewed a number of other EPO authorities, including Pension Benefit (T931/95), Hitachi (T258/03) and Microsoft (T424/03), concluding that these decisions were inconsistent with other Board of Appeal decisions and the current approach in Aerotel.

The Court then considered whether it should depart from the previous line of Court of Appeal authorities (i.e. Aerotel and the UK authorities that case is based on) and follow the EPO case law. Earlier this year in Actavis UK Ltd v Merck & Co Inc (See our newsflash "The Court of Appeal upholds a patent for a new dosage regime" (22 May 2008)), Jacob LJ held that the Court of Appeal was at liberty to depart from one of its previous decisions if it was satisfied that the EPO Board of Appeal had formed a settled view which differed from the previous English authorities.

However, having considered both the UK and EPO case law, Lord Neuberger considered that it would not, in this case, be appropriate for the Court of Appeal to depart from its previous decision in Aerotel: "The fact that there are now three such decisions of the Board subsequent to Aerotel which appear to support the approach disapproved in Aerotel might suggest that this court should now adopt that approach. We do not agree."

Lord Neuberger gave a number of reasons for his decision:

  1. There was no decision on the issue by the Enlarged Board of Appeal and therefore the views of the Board of Appeal were not as authoritative as they could be. 
  1. The approaches in the four EPO cases since Aerotel were not identical (one is in fact more consistent with the opinion in Aerotel). 
  1. The Court was concerned that the computer program exclusion would lose its meaning if the Board of Appeal's views were followed. 
  1. Other courts were equally concerned about the EPO approach, in particular the German judiciary. 
  1. If the court is seen to depart too readily from its previous and carefully considered approach, it would risk throwing the law into disarray.

Lord Neuberger commented that it was desirable for the approaches and principles of the EPO and UKIPO to be "marching together as far as possible". He went on to say that there should be a two-way dialogue between the national tribunals of the EPC member states and the EPO.

Court of Appeal applies Aerotel

The Court then went on to apply the UK law, i.e Aerotel, to the claims of the Symbian patent. The Court noted that the mere fact that the invention sought to be registered was a computer program was not determinative. The key question was whether the invention revealed a technical contribution to the state of the art. Lord Neuberger considered that the Symbian invention did make a technical contribution and was not therefore precluded from registration by the exclusions to patentability. He based his conclusion on the fact that the instructions of the invention solved a technical problem lying with the computer itself, and that such beneficial consequences would feed into other devices that may incorporate the computer program.

Accordingly, the Court dismissed the UKIPO's appeal, upholding Patten J's first instance judgment. It is interesting to see the English judges willing, as they were in Actavis, to depart from UK precedents and follow an established line of authorities in the EPO. Whilst in this case the Court of Appeal declined to follow the EPO case law, Lord Neuberger's reasons for not departing from UK precedent are instructive when considering the situations that the English courts will not follow their own precedents.