Computers – Excluded subject matter – Patentability - Software

Symbian Ltd v Comptroller General of Patents: CA (Civ Div) (Lords Justice Jacob, Maurice Kay, Lord Neuberger of Abbotsbury): 8 October 2008

The appellant comptroller general of patents appealed against a decision overturning his refusal to grant a patent application made by the respondent (S).

S’s application concerned a method of accessing data in a dynamic link library (DLL) in a computing device. DLLs were known as a means of storing functions common to a number of different applications. Although additional functionality could be added to a DLL, difficulties could arise and cause incompatibility in the operation of the new functions. The purpose of the alleged invention was to overcome those difficulties, and it was claimed that it could be applied to a wide range of electronic devices, enabling them to work faster and more reliably. The hearing officer considered that the application related to a program for a computer and was thus excluded from patentability by virtue of section 1(2)(c) of the Patents Act 1977, which mirrored article 52(2)(c) of the European Patent Convention 1973. The comptroller general of patents submitted that article 52(2)(c) was qualified by article 52(3) and had the effect of excluding from patentability any program unless it had a novel effect outside the computer, so that a program for performing a new or improved function on any machine would be patentable unless the function was only performed on the computer itself. S submitted that article 52(2)(c) and article 52(3) only excluded programs that did not provide a technical solution to a technical problem – a program that improved the performance of a computer would not be excluded, but a program that simply embodied a theory would be.

Held: (1) When deciding whether a patent application should be rejected on one or more of the grounds contained in article 52(2), the proper approach to be taken was a staged approach that required the court to properly construe the claim, identify the actual contribution and ask whether it fell solely within the excluded subject matter. There was no reason why that latter test should not involve asking whether the contribution could not be characterised as ‘technical’, Duns Licensing Associates/ Estimating sales activity (T154/04) [2007] EPOR 38 EPO (Technical Bd App) and Gameaccount Ltd T 1543/06 considered, Aerotel Ltd v Telco Holdings Ltd [2006] EWCA Civ 1371, (2007) Bus LR 634 followed. In identifying the precise ambit of article 52(2)(c), the fact that since Aerotel there had been subsequent decisions of the board which adopted an analysis that was more restrictive of the exclusion than that propounded in Aerotel, and which supported an approach disapproved in Aerotel, did not mean that Aerotel should not be followed. There had been no decision of the enlarged board, the approaches in the subsequent decisions by the board were not identical, there was a danger that the computer program exclusion would lose all meaning and there was a risk that the law would be thrown into disarray if the court was seen to depart too readily from its previous, carefully considered approach.

(2) It would be dangerous to suggest that there was a clear rule available to determine whether or not a program was excluded by article 52(2)(c). Each case had to be determined by reference to its own particular facts and features, bearing in mind the guidance given in Vicom/Computer-related invention (T208/84) [1987] EPOR 74 EPO (Technical Bd App), IBM/Data processor network (T06/83) [1990] EPOR 91 EPO (Technical Bd App), IBM/Computer-related invention (T115/85) [1990] EPOR 107 EPO (Technical Bd App), Merrill Lynch Inc’s Patent Application [1989] RPC 561 CA (Civ Div) and Gale’s Patent Application [1991] RPC 305 CA (Civ Div). In the instant case, the claimed invention did make a technical contribution and was not precluded from registration by article 52(2)(c). A computer containing the instructions in question would be a better computer, and the beneficial consequences of the instructions would feed into other devices, Gale applied. The fact that the improvement was to software rather than to hardware could not make a difference, Vicom and Merrill Lynch applied. Given the decisions in the two IBM cases, there was no basis for holding that the contribution in the instant case should not be treated as technical, IBM Corp/Data processor network and IBM Corp/Computer-related invention applied. Moreover, to allow the appeal would be inconsistent with the reasoning of the board in Gameaccount. It would make a nonsense of article 52(3) and of all the previous board decisions to say that any technical advantage attributable to a computer program was excluded. Rather, a technical innovation, whether within or outside the computer, would normally suffice to ensure patentability.

Appeal dismissed.

Peter Prescott QC, Charlotte May (instructed by the Treasury Solicitor) for the appellant; Daniel Alexander QC, Richard Davis (instructed by Withers & Rogers) for the respondent.