The Court of Appeal (CA) judgment in Symbian Limited v Comptroller General of Patents (2008) EWCA Civ 1066 was issued on 8 October. This has upheld a High Court decision to overrule the UK Intellectual Property Office's (UK-IPO) rejection of a computer program on a conventional computer as non-patentable. While Lord Neuberger's judgment does not create any startling new law, it seriously questions the inconsistent approach of the UK-IPO and European Patent Office (EPO) in looking at patentability of computer related inventions and increases the prospect of the UK more closely following the EPO's liberal approach to granting computer software patents. In fact, you could argue that the legal exclusion of software from the scope of patentability is now potentially so limited that just about any coherently-drafted application in relation to a computer program that can claim to improve hardware functionality or performance is patentable.

What is the law at the moment?

Under the Patents Act 1977 ("the Act"), a patent may only be granted for an invention which meets the conditions of being (a) new; (b) inventive; (c) capable of industrial application and (d) not excluded under other sections of the Act. Under s1(2) of the Act (and almost identical provisions of Article 52 of the European Patent Convention 1973 (EPC), which are expressly intended to have the same effect in UK law) a program for a computer is not regarded as a patentable invention to the extent that the patent or application relates to the program as such. It is this two-word "as such" qualification that has become a key issue in the field of patent protection of software over the past 20 years.

What was the case about?

Symbian (recently acquired by Nokia) manufactures operating systems for mobile phones and other handheld devices. The claimed invention related to a method of accessing data in dynamic link libraries (DLLs). This method runs on a conventional computer and no special hardware is involved. DLLs are already widely known as a way of storing functions common to a number of different applications on a one-off basis helping (among other things) to save memory. Problems could arise however in relation to upgrading or adding new functionality to DLLs. Symbian's patent application sought to overcome this issue by means of a method for splitting the DLL into parts. The UK-IPO (apparently applying the 4 step test outlined previously by the Jacob LJ in the Aerotel/ Macrossan [2007] case, also in the CA) had refused Symbian's application on the grounds that the invention claimed solely consisted of a computer program and Symbian successfully overturned the UK-IPO's decision in the High Court.

The Court of Appeal's decision

On appeal by the UK Comptroller General of Patents, the CA looked at the exclusion of computer programs "as such" from the scope of patentable inventions under both the Act and EPC, reaching the conclusion that Symbian's claim could not be rejected simply on this basis. (Note: this does not necessarily mean that Symbian's UK application will be granted as issues such as novelty and obviousness would still need to be determined).

Excluded subject matter: the Aerotel Test

The general legal approach to considering excluded subject matter (including computer programs) from the scope of patentability in the UK was set out by Jacob LJ in the CA in Aerotel [2007]. This is a four stage test that can be summarised as follows:

(1) properly construe the claim;

(2) identify the actual contribution - what does it add human knowledge;

(3) ask whether it falls solely within the excluded subject matter - does the contribution at (2) fall entirely within the excluded matter (i.e.. the 'as such' test); and

(4) check whether the actual or alleged contribution is technical in nature.

In Symbian, the CA (as it had observed in Aerotel) notes that the stage (3) and (4) tests can effectively be merged to come the same result. For Symbian's application the question seems to have been whether of not the claimed program reveals a technical contribution to the state of the art (in the computer programming industry) to get over the "as such" exclusion.

Where was the technical contribution here?

Lord Neuberger (with Jacob LJ and Maurice Kay LJ) noted that although they were bound to follow earlier CA decisions, if they thought that the EPO had reached a "settled" view on the exclusion point, they could depart from previous UK case law. Looking at a number of previous UK and EPO decisions on computer related inventions, the CA was unable to find any consistent approach. At the extreme end, the CA notes the recent File search method/Fujitsu decision of the EPO that seems to indicate that simply involving computer hardware is enough to constitute an inventions technical contribution.

With Symbian's invention, the question was whether the claimed program (i.e. the instructions to the computer) solved a technical problem lying with the computer? The Court's view (looking in particular at two recent EPO decisions approving IBM data-processing related inventions) is that Symbian's program is not an excluded computer program because it has the knock-on effect of the computer working "better" as a matter of practical reality. So, even if the computer itself is unchanged, the CA suggests there is a technical contribution as long as the program creates a "faster, more reliable" computer internally or there is some external effect on peripheral equipment.

What now for the computer programs exemption?

The CA is clearly frustrated by the inconsistency of approach to not only between the UK and EPO on the issue but between the EPO's own cases. A review by the Enlarged Board of the EPO (as requested by Jacob LJ in Aerotel) would seem to be an opportunity to provide a definitive precedent on this issue, but this looks unlikely for the moment. Short of that, the CA demands a "two-way dialogue between national tribunals and the EPO" to achieve better consistency in decision making. In the meantime, it seems likely that the UK-IPO will have to further liberalise its stated policy on dealing with computer related inventions.

As regards what the Symbian decision means for developers, even if the "technical contribution" test proposed by the CA is a meaningful hurdle - which still remains the subject of debate - software-based patent claims now seem to have a better prospect of success in the UK than ever before.