Historically the UK-IPO and the European Patent Office (EPO) have been at odds in their assessment of the patentability of computer software. The same software program could be granted patent protection by the EPO but refused by the UK-IPO. However, a recent decision of the Court of Appeal on 8 October 2008 in Symbian Limited v Comptroller General of Patents is hoped to mean that applications to patent software will now be examined by the UK-IPO and the courts in the UK on the same basis as they are at the EPO.

The EPO

The EPO has developed a doctrine which focuses on assessing the technical nature of the invention. In Vicom/Computer-related invention the EPO held that to be patentable, an invention relating to a computer program must make a technical contribution or it must constitute the solution to a technical problem.
 
However, it should be noted the EPO has historically been inconsistent on this matter, moving away from its own ‘technical contribution’ test in some cases and instead considering the inventions use of or interaction with any hardware as the primary factor.

Aerotel

Prior to the Court of Appeals decision in Symbian the leading case in this area in the U.K was Aerotel. In Aerotel the Court of Appeal held that the UK courts and UK-IPO should not be bound by previous decisions made by the EPO due to the inconsistency of the EPO’s approach.   

In Aerotel, the court decided to follow the ‘technical effect’ approach of the EPO and expressly rejected the ‘any hardware’ approach. The Court however remained bound by an earlier Court of Appeal decision, Merrill Lynch's Application, which found that a matter that falls solely within excluded subject matter is not patentable.

Excluded subject matter includes a ‘program for a computer’ to the extent that the invention for which the patent application has been made relates to that matter ‘as such’. This was provided for by Article 52 (2) of the European Patent Convention (EPC) and bought into U.K law by section 1 (2) of the Patents Act 1977.

Aerotel therefore adopted a four staged approach to be used when considering a patent application:

• Properly construe the claim;
• Identify the actual contribution;
• Ask whether it falls solely within the excluded subject matter; and
• Check whether the actual or alleged contribution is actually technical in nature.

Seemingly, in contrast to the ‘technical contribution’ approach taken by the EPO, the Aerotol test became the standard by which the U.K courts and the UK-IPO assessed the patentability of software.

Symbian: a step toward harmonisation?

The UK-IPO initially rejected Symbian’s patent application as it related to ‘nothing more than a compute program’.

The application related to a Dynamic Link Library (DLL), which are a means of storing functions common to a number of different applications so that they are only required to be stored once. Additional functionality can be added to the DLL. However, such additions can lead to problems for the computer. Symbian’s patent application claimed to provide a new way of indexing library functions, otherwise known as DLL, to ensure that the computer will continue to operate reliably after changes are made to the DLL.

However, the UK-IPO concluded that Symbian’s invention was a computer program and thus excluded from patent protection by the EPC and the Patents Act 1977.

However, when the case reached the Court of Appeal they considered that the invention was not solely a computer program because as a matter of practical reality there was more than merely a better program as a result of using the invention, there was a faster and more reliable computer.   The Court held that as the invention did not fall solely within the Article 52(2) exemptions, it was held to relate to more than just a computer program. Furthermore, the invention was held to have a ‘technical effect’.  The Court of Appeal had therefore reconsidered the four-step approach set out in Aerotel and held that the third and fourth steps of the test should be combined.  Therefore whether the invention has a ‘technical effect’ became part of the examination of whether the invention fell solely within excluded subject matter. Therefore should a computer program have such an effect it may still be patentable.

The decision in Symbian means that the exclusions from patentability listed in Article 52(2), which includes ‘programs for computers’ should now be more narrowly defined. This will, of course, be welcomed by the software industry in the U.K.

The future….

However those who hoped that the decision in Symbian would result in U.K law being bought into line with the approach taken by the EPO are likely to be disappointed.  the UK-IPO has currently declined to follow the EPO’s approach due to its historical inconsistency.

The Court of Appeal is Symbian did not give the UK-IPO leave to appeal the decision as the court held that this would be premature for the House of Lords to make a judgement on the patentability of computer programs before the issue has been considered by the Enlarged Board of appeal of the EPO.

At present the EPO has referred a series of questions on the patentability of computer programs to the Enlarged Board. The response will, hopefully, provide the basis for a harmonised approach to computer software patentability across Europe.