Symbian Ltd v Comptroller-General of Patents, 8 October 2008 [2008] EWCA Civ 1066

The Comptroller-General of Patents (Comptroller) appealed against a High Court decision overturning his refusal to grant a patent application made by Symbian. The application related to software for improving performance of data access in dynamic link libraries in computer systems. The Comptroller argued that this was excluded from patentability because it was a “program for a computer….as such” under section 1(2) of the Patents Act 1977 (which mirrors Art. 52(2)(c) of the European Patent Convention 1973).  

A dynamic link library (DLL) is a known means of storing functions common to a number of different applications. The function is accessed by the application program according to its name or numbered address in the DLL. The problem comes when new functions are added to a DLL. Each new function is given a new numbered address, and allocation is sequential. Difficulties arise when new functions are added independently from one another by different software – they may be given the same numbered address leading to incompatibility. The invention was software which created an extension part of the DLL in which new functions could be added but would not be directly linked to programs. They were available only via a library, which held the numbered address for each new function in the extension. This avoided the incompatibility problems and enabled devices to work faster and more reliably.  

The Court of Appeal, led by Lord Neuberger (coming down from the House of Lords to hear the case), dismissed the appeal and held that the invention was not excluded from patentability. The Court applied the test set out by the same court in Aerotel. This required the Court to properly construe the claim, identify the actual contribution, ask whether that contribution fell solely within the excluded subject matter (e.g. a computer program or business method) and check whether the contribution was technical in nature. The English Courts therefore have interpreted “as such” as requiring an enquiry as to what the actual contribution is. In the Symbian case, the Court found that the software did make a technical contribution because the invention enabled a computer to be faster and more reliable.  

The EPO has taken a different approach to this issue in latter years. As set out in cases such as Pension Benefits, Hitachi and Microsoft (and cases since), it has taken the position that if a computer or other hardware is involved then there cannot be a computer program (or a business method) “as such”. Importantly, however, in Hitachi, Pension Benefits, Duns Licensing and others, the Boards of Appeal went on to find the applications invalid for lack of inventive step, as only technical features could be taken into account in the obviousness assessment. (There were differences between those cases as to whether the form of claims was important.) In Microsoft, however, there was no finding of obviousness at all. The Court of Appeal in Aerotel criticised the EPO approach and its perceived inconsistencies; correspondingly certain Boards of Appeal of the EPO have been critical of the Court of Appeal’s decision in Aerotel, considering the enquiry as to the actual contribution to be “illegitimate”.  

The Court of Appeal in Symbian seemed keen to calm the mood and to identify areas of agreement rather than differences. Lord Neuberger’s view was that the Aerotel approach could in most cases be reconciled with the EPO’s approach on a fair analysis and that the differences between the approaches were not as pronounced as some had suggested. Fundamentally, he considered that the test was the same – it was just posed at a different stage.  

The Court of Appeal referred to its decision in Actavis v Merck (see above), concerning the desirability of following EPO case law when it is settled, however at this stage it decided to follow Aerotel rather than the EPO Board of Appeal’s approach because:  

(a) there has been no decision of the Enlarged EPO Board of Appeal yet on this issue;  

(b) the approaches in the decisions of the EPO Board of Appeal were not consistent and therefore there is no settled position; and  

(c) there was a danger that the computer program exclusion exception would lose all meaning if the Court followed certain decisions of the EPO Board of Appeal such as Microsoft.  

There is a hint of a suggestion that once the issue is considered by the Enlarged Board of Appeal the English Courts will come into line with the EPO, in accordance with the principles set out in Conor v Angiotech and Actavis v Merck; however it is not appropriate to do so now. In the meantime, the President of the EPO has now made a referral to the Enlarged Board of Appeal on this issue.