The IP guide to... software patents

A recent decision by the UK Court of Appeal seemed to suggest that initial blocks to software patentability could be relaxed. But the outcome is still not clear, says Kenneth Mullen

The patentability of computer-implemented inventions (or software patents) has generated considerable debate in the UK over the years. In particular, the ability of an inventor to claim protection for software running on conventional computer hardware is an issue that regularly taxes the minds of patent examiners and judges.

The Court of Appeal considered the issue recently in Symbian Limited v Comptroller General of Patents (2008). Here, the Court disagreed with the UK Intellectual Property Office’s (IPO) rejection of a patent application to protect a computer program on an electronic mobile device. Initially, it was thought by some commentators that this judgement would trigger a more sympathetic regime for software patent applications in the UK, in line with the more liberal approach taken by the European Patent Office (EPO). However, subsequent IPO guidance issued in December 2008 and recent decisions at the High Court seem to indicate a continuing divergence of views between the IPO and EPO’s examiners.

Under the UK Patents Act 1977, a patent may only be granted for an invention that is: (a) new; (b) inventive; (c) capable of industrial application; and (d) not excluded. Under s1(2) of the Act (implementing Article 52 of the European Patent Convention 1973), a program for a computer is not regarded as a patentable invention to the extent that the patent or application relates to the program as such. It is this ‘as such’ qualification that has become a key issue in the field of patent protection for software inventions over the past 20 years.

The current law
Symbian (acquired by mobile phone manufacturer Nokia in 2008) develops operating systems for phones and handheld electronic devices. This particular patent relates to a claimed invention, running on conventional hardware, for a method of accessing data in a dynamic link library (DLL). DLLs are already widely recognised as a means of storing functions common to a number of different applications on a one-off basis, helping (among other things) to save memory. Problems could arise, however, in relation to upgrading or adding new functionality to DLLs, and Symbian’s application sought to overcome this issue via a method for splitting the DLL.

The IPO refused Symbian’s patent application on the grounds that the invention claimed was an excluded computer program ‘as such’. Symbian then successfully overturned the decision in the High Court. On appeal by the UK Comptroller General of Patents, the Court of Appeal looked at the exclusion of computer programs ‘as such’ from the scope of patentable inventions under both the Act and European Patent Convention and concluded that Symbian’s claim in relation to DLLs could not be rejected on this basis alone.

The legal approach to considering excluded subject matter from the scope of patentability had been set out definitively in the UK in Aerotel Ltd v Telco Holding Ltd and Macrossan’s Application (both 2006). In them, the Court outlined a four-stage test that can be summarised as follows: (1) properly construe the claim; (2) identify the actual contribution (what does it add to human knowledge?); (3) ask whether the invention falls solely within the excluded subject matter (does the contribution fall entirely within the excluded matter, ie the ‘as such’ test?); and (4) check whether the actual or alleged contribution is technical in nature.

DESPITE SOME INITIAL OPTIMISM IN THE DEVELOPER COMMUNITY AFTER SYMBIAN, IT IS UNLIKELY THAT THE UK WILL SEE A MATERIAL SHIFT IN POLICY TOWARDS QUESTIONS OF SOFTWARE PATENTABILITY

In Symbian, the Court (as it had observed in Aerotel/Macrossan) noted that the stage (3) and (4) tests could effectively be merged to come to the same result. A key issue in Symbian was whether or not the program for accessing data in DLLs made a technical contribution to the state of the art (in the computer programming industry). This was simply to get over the ‘as such’ exclusion. The novelty and obviousness of Symbian’s invention would still need to be determined.

Lord Neuberger (with Lords Justice Jacob and Maurice Kay) observed that although he was bound to follow earlier Court of Appeal decisions, if it seemed that the EPO had reached a ‘settled’ view on the software exclusion point, the Court could depart from previous UK case law. However, the judges were unable to find any such consistency, noting at the extreme end one recent EPO decision in File Search Method/Fujitsu which adopted an ‘any hardware will do’ approach to establishing technical contribution.

In order to identify if Symbian’s invention involved a technical contribution, a crucial question was whether the claimed program solved a technical problem lying with the computer. The Court’s decision (influenced by recent EPO decisions approving IBM data-processing- related inventions) was not to exclude the computer program because it had the knock-on effect of making the computer work ‘better’ as a matter of practical reality. Ultimately, even if the hardware itself remained unchanged, there was a technical contribution because there was a ‘faster, more reliable’ computer internally.

As exemplified in Aerotel/Macrossan and Symbian, the UK courts appear frustrated by the inconsistency of approach in the EPO’s own line of decisions in respect of excluded subject matter. The EPO’s president, Alison Brimelow, has since referred a series of questions on the scope of the European Patent Convention’s exclusions from patentability to the Enlarged Board of Appeal of the EPO with the aim of providing a definitive ruling on this issue. However, until the Enlarged Board issues its opinion (which is unlikely to appear soon) Aerotel/Macrossan and Symbian represent the state of the law in the UK.

Recent IPO guidance
In the meantime, the IPO has issued further updated guidance to its examiners as to how to deal with the exclusion of computer-related inventions post-Symbian. In its accompanying press statement, the IPO noted that it would not seek to challenge the Symbian decision further pending the Enlarged Board making its ruling, and that although the Court of Appeal rejected the IPO’s approach in Symbian, patent examiners should continue to apply the structured approach in the Aerotel/Macrossan test, taking account of Symbian ‘whenever appropriate’.

As regards the updated guidance itself, the Symbian decision has perhaps only had a limited influence but for the acknowledgement that a program will not be excluded if it improves the operation of a computer by solving a problem arising from the way the computer was programmed ‘leading to a more reliable computer’. However, the guidance confirms that the UK IPO will continue to reject the EPO approach stating that ‘the mere presence of conventional computing hardware does not in itself mean an invention makes a technical contribution and so avoids the computer-program exclusion’.

Despite some initial optimism in the developer community after Symbian, and until there is a definitive ruling from the Enlarged Board of Appeal, it is unlikely that the UK will see a material shift in policy towards questions of software patentability. As the rejection of software applications in the recent AT&T Knowledge and CVON cases in the High Court illustrate, the path for UK software patent applications is still not altogether clear.


Kenneth Mullen is a partner in the media and technology division of UK law firm Shepherd and Wedderburn


This article first appeared in IP Review, issue 26