Patentability of computer programs, recent Court of Appeal judgment and questions raised by the President of the European Patent Office

1. On 8 October 2008 the Court of Appeal upheld a High Court judgment which had overturned an earlier decision of the Intellectual Property Office in the case of Symbian’s Patent Application. The Intellectual Property Office originally refused this application because it considered that it related to nothing more than a computer program.

2. Symbian’s patent application describes how a library of functions (DLL), which can be called on by multiple application programs running on a computer, is accessed. In particular, it provides a way of indexing these library functions to ensure the computer will continue to operate reliably after changes are made to the library. The Court of Appeal has held that this invention is not solely a computer program because as a matter of practical reality there is more than just a better program, there is a faster and more reliable computer.

3. The Court of Appeal did not give the Intellectual Property Office leave to appeal to the House of Lords because in its view it would be premature for the House of Lords to decide what computer programs are patentable before the issue has been considered by the Enlarged Board of Appeal of the European Patent Office (EPO). The President of the EPO has now referred a series of questions on the patentability of computer programs to the Enlarged Board. This body has the ability to make a definitive statement of EPO practice and as such also carries significant weight in terms of the practice adopted by the Intellectual Property Office and other national Patent Offices within Europe.

4. In the light of this development, the Intellectual Property Office will not seek to appeal the Symbian judgment further. The Intellectual Property Office agrees with the Court of Appeal in that it would now be premature to seek a view from the House of Lords when European practice is likely to be settled shortly by a decision of the EPO’s Enlarged Board of Appeal. The Intellectual Property Office will have an opportunity to submit observations to the Enlarged Board of Appeal on the questions put to it. In order to inform any such observations the Intellectual Property Office will undertake a study to determine the economic impact of patenting computer programs.

5. Although the Court of Appeal did not accept the Intellectual Property Office’s view on the patentability of Symbian’s invention, the Intellectual Property Office believes that the Court has confirmed that the so called  "Aerotel/Macrossan" test, established by the Court of Appeal in a previous case , provides a legitimate approach to analysing whether an invention should be refused as no more than a computer program. The Court of Appeal declined to follow the EPO approach, considering it unclear at present. Therefore, the Intellectual Property Office will continue to use the Aerotel/Macrossan test but in doing so it will take account of the Court of Appeal’s judgment in the Symbian case whenever appropriate.

Editor's notes

1. Patents having effect in the UK can be obtained through two routes. The first is by application under the Patents Act 1977 to the Intellectual Property Office, which grants protection effective only in the UK. The second is by application to the EPO. The EPO, which is not an EU body, is a centralised granting authority through which an applicant can make a single application under the European Patent Convention (EPC) and in effect be granted a bundle of patents in up to 34 European states, including the UK. The Patents Act 1977 sets out what is patentable in the UK and is aligned with the EPC.  Among other things, the Patents Act and EPC state that patents are not available for computer programs as such.

2. The interpretation of the computer program exclusion has presented difficulties for many years both in the UK and elsewhere. Reliance has been placed on the concept of "technical effect" or "technical contribution" as a means of legal interpretation. In a nutshell, a computer-implemented invention could be regarded as patentable if its operation gives rise to a technical effect or contribution; software which could not be said to do that fell squarely within the exclusion and could not be patented. The problem then was: what is “technical” and what is not? A watershed in the UK was reached in 2006 with the Court of Appeal’s judgment in a case known as Aerotel/Macrossan. In its first contact with the issue for ten years, the Court of Appeal side-stepped the "technical contribution" concept in favour of a new four-step test which was proposed to the Court by the Intellectual Property Office as being simpler and clearer.

3. The Intellectual Property Office now uses the "Aerotel/Macrossan" test to determine if an invention is patentable. This test is different from the approach developed by the EPO but the two approaches should generally give the same answer. However, in this case, the Intellectual Property Office rejected Symbian’s UK patent application whilst the EPO allowed Symbian’s equivalent European patent application.

4. The Enlarged Board of Appeal is a body made up of EPO Appeal Board members and international experts. Its decisions are binding on the EPO (although not the UK courts). The EPO President has referred questions on the computer program exclusion to the Enlarged Board because she is concerned that decisions of EPO Appeal Boards have not been consistent. Referral under Article 112(1)(b) EPC

5. As with all UK court decisions the Symbian judgment is binding on the Intellectual Property Office.