UK Court of Appeal upholds High Court decision that the UK Intellectual Property Office was wrong to exclude a patent application from Symbian Limited.

Executive Summary

In Symbian Limited v Comptroller General of Patents [2008] EWCA Civ 1066, the UK Court of Appeal has upheld the High Court’s decision that the UK Intellectual Property Office (UKIPO) was wrong to exclude Symbian’s patent application from patentability. The UKIPO had held that Symbian’s patent application claimed a computer program “as such”, and hence was excluded from patentability.

The mere fact that a patent claims a computer program is not determinative: to assess the patentability of a computer program, one must ask whether it reveals a “technical” contribution to the state of the art. However, there is no universal rule to determine whether a program is excluded from patentability, and each case must be determined on its particular facts and features.

On its particular facts, the Symbian application contributed a program which makes a computer operate on other programs more reliably and/or faster than prior art programs, which on any view is a technical contribution.

In its judgment, the Court of Appeal emphasised the need for consistency of approach between the European Patent Office (EPO) and the UKIPO, and highlighted the important commonalities (as well as the unfortunate disagreements) between European and UK precedent.

The Background

In July 2007, the Comptroller General of Patents refused Symbian Limited’s UK Patent Application GB0325145.1 on the grounds that the application related to “a program for a computer…as such” within the meaning of section 1(2)(c) of the Patents Act 1977 (the Act) and hence that it was excluded from patentability. Symbian appealed the decision. The matter came before Mr Justice Patten in December 2007, and in March 2008 the court handed down its judgment overturning the comptroller’s decision. The comptroller appealed (with Mr Justice Patten’s permission), and the matter came before the Court of Appeal in July 2008.

Symbian’s patent application concerns mapping of “dynamic link libraries” in computing devices. Dynamic link libraries are a known means of storing functions common to different applications in a computing device. In very brief summary, Symbian’s claimed invention is intended to improve the speed and reliability of a computing device by the re-organisation of the dynamic link libraries in its operating system.

The Law

Section 1(2)(c) of the Act excludes from patentability “a program for a computer…as such”. Article 52(2)(c) of the European Patent Convention (EPC) from which section 1(2)(c) of the Act derives, contains an equivalent exclusion. In Symbian, the court emphasised very strongly that precisely the same principles must apply under UK law as apply under the EPC when assessing patentability on these grounds.

In Aerotel Limited v Telco Limited; Macrossan’s Application [2007] RPC 7, the UK Court of Appeal set out a four-stage approach to assessing patentability on the above grounds, namely:

  • Properly construe the patent claim in question;
  • Assess its actual contribution to human knowledge;
  • Ask whether that contribution falls solely within the excluded subject matter; and
  • Check whether the contribution is actually technical in nature.

The EPO’s Technical Board of Appeal (the Board) considered this issue, and specifically the UK Court’s 2007 judgment and the “four-stage” approach outlined above, in Duns Licensing Associates (T0154/04). The Board held that an invention is “any subject matter or activity having technical character”, and could be patentable “even if it was related to the items listed in [art. 52(2)] since these items were only excluded ‘as such’ – art. 52(3)”.

In the above cases, the UK Court and the Board were mutually critical of one another. However, in Symbian, the court has noted that the approaches of the Board and the UK Court were not necessarily irreconcilable, at least in most instances. It was the court’s view that the Board’s approach as set out above amounts to a conflation of the third and fourth stages of the UK Court’s approach. Also, in Symbian the court referred to a more recent decision of the Board, Gameaccount Ltd (T1543/06), which considered both the UK Court’s and the Board’s approaches and which ultimately adopted an approach that was consistent with both.

Application of the Law

In Symbian, the court stated that devices like Aerotel’s four stage test, while often valuable, should not be followed blindly in every case. Also, there is no clear rule available to determine whether or not a computer program is excluded from patentability by Art 52(2)(c): each case must be determined by reference to its particular facts and features.

Echoing the Board’s statement in Duns, the court stated that the mere fact that what is claimed is a computer program is not determinative. The question of patentability on these grounds has to be resolved by asking whether what is claimed “reveals a ‘technical’ contribution to the state of the art”.

In the case of Symbian’s application, the computer program solves a technical problem lying within the computer itself. The beneficial consequences of the computer program’s instructions will “feed into…cameras and other devices and products”. Also, the fact that the improvement to the computing device may relate to software rather than hardware does not make any difference.

The court also referred to a comment of Lord Justice Jacob in a previous Court of Appeal case, where it was emphasised that “a code as embodied on a physical medium which causes the computer to operate in accordance with that code” is not sufficient to take a claim outside the exclusion to patentability, but that “a change in the speed with which the computer works”, for example, would be. In Symbian, the court held that Symbian’s application claims a program that causes a computer to operate “better than a similar prior art computer”.

As the Court of Appeal stated in paragraph 56 of its judgment: “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.”

To conclude, the court progressed through the final stages of the four stage approach outlined above:

  • Stage 2: The Symbian patent application contributes a program which makes a computer operate on other programs faster than prior art operating programs enabled it to do.
  • Stage 3: The contribution identified above is not solely excluded matter, because it has the knock-on effect of the computer working better as a matter of practical reality.
  • Stage 4: The contribution identified above is “technical” on any view as to the meaning of the word.

Therefore, Symbian’s application should not be excluded from patentability under s.1(2)(c) / Art 52(2)(c).

Finally, the court commented that a European patent is to be granted for the Symbian’s invention, and hence that there is no question of lack of patentability under 52(2) so far as the EPO is concerned.


The Court of Appeal decision provides useful guidance on the test for determining when an invention involving software meets the English test for a technical contribution. It comes on the heels of a High Court decision acknowledging that claims defined in terms of software function are allowable in principle.