The patentability of software is a controversial area of UK
intellectual property law. The question seemed to be settled in a
decision by the Court of Appeal in 2006 which outlined how courts
should determine whether an invention consists purely of software,
and therefore should not be awarded a patent.
That ruling took in two cases, one involving a company called
Aerotel and another involving inventor Neal Macrossan.
In a judgment
handed down today, the High Court apparently says that the UK-IPO
was wrong to reject a patent application for an invention by
London-based company Symbian.
The UK-IPO said in a statement that the judge did not apply the
methodology outlined by the Court of Appeal in the
Aerotel/Macrossan case. It will appeal the case because it believes
that the new ruling makes it unclear what approach should be taken
to software patent applications.
"The UK-IPO believes that when deciding whether this computer
implemented invention is patentable, Mr Justice Patten did not
apply the so-called 'Aerotel/Macrossan test', which was established
by the Court of Appeal in the way intended," said a UK-IPO
statement. "This in UK-IPO's view has created uncertainty about how
the Aerotel/Macrossan test should be applied for inventions of this
type."
Symbian makes operating systems for mobile devices and its
invention in this case was related to the indexing of library
functions to ensure operating system stability. It was awarded a
patent by the European Patent Office (EPO) which has different
rules on software patents.
The UK-IPO said that Mr Justice Patten's ruling in the High
Court pointed out the discrepancy between EPO rules and UK-IPO
ones.
The UK-IPO said that it will continue to decide on inventions'
patentability based on the guidance it published previously, which
itself is based on the Aerotel/Macrossan ruling. It did say,
though, that it would "take account of the Symbian judgment in
appropriate cases".
The UK-IPO has faced criticism before from courts on how it
applied the Aerotel/Macrossan rulings to its own guidelines. In a
High Court case in January Mr Justice Kitchin said that the UK-IPO
had rejected some patent applications on the software grounds that
they should have accepted.
"The question I must now consider is whether the decision
prohibits the patenting of all computer programs and, in
particular, those which under the old approach would have been
considered to make a conventional computer operate in a new way so
as to deliver a relevant technical contribution," wrote Mr Justice
Kitchin in his High Court ruling.
"UK-IPO has apparently concluded that it does and so has
reverted to its previous practice of rejecting all computer program
claims … I do not detect anything in the reasoning of the Court of
Appeal which suggests that all computer programs are necessarily
excluded," he wrote.
The original UK-IPO application by Symbian was heard by Mrs S E
Chalmers. She applied the four-step test laid out in the
Aerotel/Macrossan ruling and found that the invention was a
computer program and nothing more, and therefore could not be
patented.
"The actual role of the DLL [dynamic link library] has not been
changed by the claimed invention - it still provides exactly the
same functionality as it had before," she wrote in her ruling.
"What has changed is the manner in which the DLL has been accessed
– it is now done by an additional piece of software in the form of
the interface. I therefore find that the contribution made by the
claims on file, the main claims and the first auxiliary claims
boils down to nothing more than a computer program and hence is
excluded from patentability."
