In Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066, the English Court of Appeal has provided guidance on the test for determining whether a software program is patentable. Upholding the High Court’s decision, the Court of Appeal found that the United Kingdom Intellectual Property Office (UK-IPO) was wrong to reject Symbian’s patent application.

BACKGROUND

In July 2007, the Comptroller General of Patents refused Symbian’s UK Patent Application (GB0325145.1) on the grounds that the invention was not patentable as it related to “a program for a computer…as such” within the meaning of Section 1(2)(c) of the Patents Act 1977. Symbian appealed the decision, and, in March 2008, the High Court overturned the Comptroller’s decision. The Comptroller appealed and the matter came before the Court of Appeal in July 2008.

Symbian’s patent application concerned the mapping of “dynamic link libraries” in computing devices. The Technical Board of Appeal of the European Patent Office (EPO) had previously considered whether this should be excluded from patentability as “a program for a computer…as such” in Duns Licensing Associates (T0154/04). In that case, the Board held that an invention is not an excluded type of computer program if it is “subject matter or activity having technical character”, and could be patentable “even if it was related to the items listed in [Article 52(2)] since these items were only excluded “as such””.

The Court of Appeal, however, stated that there is no clear rule available to determine whether or not a computer program is excluded from patentability under Section 1(2)(c) and each case must be determined by reference to its particular facts and features. The Court of Appeal found that the mere fact that what is claimed is a computer program is not determinative. The question of patentability has to be resolved by determining whether what is claimed “reveals a “technical” contribution to the state of the art”.

The Court of Appeal followed the consistent guidance of both the Board and the English Court of Appeal. In particular, the Court of Appeal identified five decisions as providing the most reliable and consistent guidance in this context, namely: Vicom/Computer-related invention T0208/84; IBM Corp/Data processor network [1988] T06/83; IBM Corp/Computer-related invention [1988] T115/85; Merrill Lynch’s Application [1989] RPC 561 and Gale’s Application [1991] RPC 305.

The Court of Appeal held that Symbian’s application claimed a program that causes a computer to operate “better than a similar prior art computer”. While the computer itself remains unchanged, as a matter of practical reality there is more than just a better program: there is a faster and more reliable computer. The fact that the improvement to the computing device may come from software rather than hardware does not make any difference. Therefore, the Court concluded that Symbian’s application should not have been excluded from patentability.