Court of Appeal confirms rejection of UK-IPO software patent approach

Symbian has won the right to patent a piece of software which makes other software run more quickly. The Court of Appeal rejected the UK Intellectual Property Office (UK-IPO)'s objections to the application.

The software in question was granted a patent by the European Patent Office (EPO), but the UK-IPO rejected an application to make that patent active in the UK.

The High Court had previously backed Symbian's case, and the Court of Appeal has reaffirmed that decision.

UK law has said that an invention that consists solely of software is not eligible for a patent, but what exactly this means has long been a contentious issue. Software patents are more commonly awarded by the EPO and are very common in the US.

Lord Neuberger of Abbotsbury gave the Court's decision, and said that it was desirable as far as possible to read the law so that the UK-IPO and the EPO came to similar decisions.

"It is, of course, inevitable that there will be cases where the EPO will grant patents in this field when UKIPO should not," said Lord Neuberger. "However, the fact that such discrepancies have been characterised as 'absurd' by Lord Justice Nicholls…emphasise[s] the strong desirability of the approaches and principles in the two offices marching together as far as possible."

"This means … that, where there may be a difference of approach or of principle, one must try to minimise the consequent differences in terms of the outcome in particular patent cases."

The Chartered Institute of Patent Attorneys (CIPA) said that it believes that the ruling will make it easier to acquire patents for software in the UK.

"The decision is particularly beneficial for SMEs, who can now pursue computer-related inventions at the UK-IPO rather than at the more expensive EPO," said Dr John Collins, a member of CIPA's Computer Technology Committee. "The clear and authoritative guidance from the Court of Appeal will end a difficult period of uncertainty and confusion for UK inventors."

Symbian's software produced an effect on other pieces of technology, the Court of Appeal said, and it was this which made it eligible for a patent.

"A computer with this program operates better than a similar prior art computer," said the ruling. "To say 'oh but that is only because it is a better program – the computer itself is unchanged' gives no credit to the practical reality of what is achieved by the program. As a matter of such reality there is more than just a 'better program', there is a faster and more reliable computer."

The Court said that it believed that the difference between the approaches of the UK-IPO and the EPO were resolvable in most cases. There were some that were not resolvable, but Lord Neuberger rejected the idea that the UK systems should simply adopt the EPO's.

"There is no decision of the Enlarged Board [of Appeal, a senior decision making body of the EPO]," he said. "Not only does that mean that the view of the Board is not as authoritative as it could be; it also suggests that the Board does not consider that the time has arrived for the point to be conclusively determined."

"It is not as if the English courts are alone in their concern about the approach of the Board, as the observations from the German judiciary … demonstrate," he said. "[And] if this court is seen to depart too readily from its previous, carefully considered, approach, it would risk throwing the law into disarray."

The UK-IPO had argued after the High Court's decision that the Court had not applied a four-step test formulated in the wake of two other patent cases involving Aerotel and Neal Macrossan.

The Court of Appeal, though, explicitly outlined why it believed the Symbian application satisfied the four-step Aerotel/Macrossan test.

"Stage 1 is not in issue," said the ruling. "As to the stages 2 to 4:

Stage 2 Identify the contribution:

A program which makes a computer operate on other programs faster than prior art operating programs enabled it to do by virtue of the claimed features.

Stage 3 Is that solely excluded matter?

No, because it has the knock-on effect of the computer working better as a matter of practical reality.

Stage 4 Is it technical?

Yes, on any view as to the meaning of the word 'technical'."