The UK Intellectual Property Office Reacts to the Symbian Patent Decision
Article from our Winter 2008-2009 edition of InsideIP.
The UK Intellectual Property Office (UK IPO) has issued a practice notice aimed at clarifying its position on the patentability of computer programs, following the ‘Symbian’ decision handed down from the Court of Appeal in October last year.
Symbian had filed a patent application for a process for indexing a library of functions so that multiple applications running on a computing device could continue to access the functions following updates to the library, this having the overall effect of enabling the device to work faster and more reliably. The patent application was refused by the UK IPO on the ground that the invention related to a computer program ‘as such’ and accordingly was excluded from patentability under UK patent law. However, both the High Court and the Court of Appeal, allowed Symbian’s appeal against the UK IPO’s decision.
The Court of Appeal concluded that the invention claimed by Symbian did make a technical contribution and therefore that the program did not embody excluded subject matter (such as a method of doing business or a mathematical method). In the court’s view, a computer containing the computer program instructions described in the application would be a better computer, namely one which would be faster and more reliable. This was a significant outcome, since although it had previously been accepted that a computer program resulting in a technical effect external to a computer would be patentable, it was now confirmed that computer programs having a technical effect on the operation of the computer itself could also be patented. The Court of Appeal decision also supported the 4-step test for patentable subject matter set out in the Aerotel/Macrossan decision, but cautioned against applying such tests blindly.
The practice notice, issued in December 2008,indicates that the UKIPO will continue to apply the Aeroel/Macrossan test in deciding whether computer related inventions are excluded from patentability. Observers question whether this will really constitute the shift in UK patent law that one would expect following a decision as significant as Symbian. However, the practice notice goes on to suggest that there will be some change in the way in which the UKIPO assesses software-implemented inventions in future.
In particular, the practice notice states that an important factor is “what the program does as a matter of practical reality” and provides an example in which “improving the operation of a computer by solving a problem arising from the way the computer was programmed – for example, a tendency to crash due to conflicting library program calls – can also be regarded as solving ‘a technical problem within the computer’ if it leads to a more reliable computer”.
Users of the UK patent system are also reminded by the UKIPO that inventions in which business methods, mental acts, mathematical methods or methods of presenting information are implemented on a conventional computer system or network will still be excluded from patentability.
Although the practice notice stops short of sweeping changes, an olive branch is extended to patentees in this field, suggesting a more straightforward path to grant for applications in which it can be shown that a program has a clear technical effect on the internal operation of a computer.
Venner Shipley attorneys have a great deal of experience in dealing with patent applications in this field and in ensuring that any technical effect is emphasised to maximise the chances of the claimed subject matter being considered to be patentable.