Patentability of Computer Programs in the UK: The Symbian Case

(IPRinfo 5/2008)

Rosa Maria Ballardini
Researcher, HANKEN School of Economics & INNOCENT Graduate School, IPR University Center. Visiting scholar at UC Berkeley, Boalt Hall

The Court of Appeal of England and Wales has rejected an appeal from the UK Intellectual Property Office (UK-IPO) on a computer-related invention patent in the Symbian case. This represents but the umpteenth failed attempt of British courts to clarify the issue of software patentability.

Symbian is a British company producing operating systems for mobile devises. Back in 2004 Symbian had filed a PCT application on an invention for ”Mapping of dynamic link libraries in computer devises”.

The application described how – in a computer – a library of functions (DLL), which can be called on by multiple application programs running on the computer, is accessed. Specifically, it provided a way for indexing these functions to ensure that the computer would continue to operate reliably also after changes have been made to the library.

The patent was granted by the European Patent Office (EPO), but rejected by the UK-IPO. Applying the ’four-step test’ developed by the UK Court of Appeal in the Aerotel/Macrossan case (2006), the UK office found the application to be no more than a computer program ’as such’, and rejected it.

Symbian appealed to the High Court and won. The UK-IPO, however, found Mr Justice Patten’s decision to be faulty. In particular, the Office retained that the decision had created uncertainty on how the Aerotel/Macrossan test should be applied for inventions of this kind. Consequently, it filed an appeal.

The Court of Appeal dismissed UK-IPO’s appeal
The crucial question in the appeal was straightforward: was the UK-IPO justified in excluding Symbian’s application from patent law?

The decision of the Appeal Court was given by Lord Neuberger. He clearly opposed a categorical exclusion of software from the patent field. Affirming that ’to exclude inventions in computers is arbitrary and unfair’, Neuberger opined that the Office’s decision had been wrong.

He derived his justification from the technical contribution the Symbian ’invention’ added to the state of the art. Specifically, he found that the UK-IPO had interpreted the ’as such’ exclusion too narrowly.

Particular attention was also posed on the different approaches followed by the UK-IPO and the EPO with respect to the patentability of computer programs. On this concern, the Appeal Court retained that, as a matter of fact, there should not be any remarkable difference between the two. Instead, both practices should bring to the same conclusions.

On these grounds Lord Neuberger had not further hesitations in dismissing the UK-IPO’s appeal.

Will the EPO Enlarged Board Provide Further Clarification?
The exclusion of computer programs ”as such” under the dictate of Art. 52, EPC has been a controversial issue for a long time in Europe. In the UK, in particular, recent court decisions have contributed in adding fuel to the already highly heated discussions.

Whether this latest development adds any clarification on how to interpret the provision when it comes to software, remains questionable. What is certain, though, is that the UK-IPO will inevitably have to change again its practice on how to deal with the matter.

Will the referral recently made by the EPO President to the EPO Enlarged Board on the patentability of computer programs spread any light on this overall highly confusing situation? Unfortunately, we strongly doubt it. UK-IPO however, in the light of this development, decided not to seek to appeal the Symbian judgment to the House of Lords.