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'."
