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Symbian – What the Patents Court and UK IPO did next

This article was included in our Winter 2009/10 edition of Inside IP magazine.

It is a year since a decision was handed down by the Court of Appeal in the case of Symbian Limited v Comptroller General of Patents. The Symbian decision was welcomed as helping to bring the UK position on the patentability of computer-implemented inventions more into line with the view of the European Patent Office.

So what has happened in the last year? How have the UK Courts and the UK Intellectual Property Office reacted? And where does the UK Intellectual Property Office now stand on the patentability of computer-implemented inventions?

Introduction

In Symbian Ltd v Comptroller General of Patents [1], the Court of Appeal refused the appeal by the Comptroller General of Patents against the decision of Mr Justice Patten. In the Patents Court, Mr Justice Patten allowed an appeal by Symbian against the decision by the UK Intellectual Property Office (UK IPO) refusing GB application 0325145.1 on the grounds that the alleged invention was excluded from patentability.

In Symbian, the Court of Appealconsidered once again the scope of the exclusions from patentability set out in Section 1(2) of the Patents Act 1977.

The Court had previously considered the exclusions in Aerotel Limited v Telco Limited; Macrossan’s Application [2]. In Aerotel/Macrossan, it concluded that the question of excluded matter should be based on whether there was a technical contribution and set out a structured four-step test for deciding whether an invention was excluded from patentability, namely:

(1) properly construe the claim;

(2) identify the actual contribution;

(3) ask whether it falls solely within the excluded subject matter; and

(4) check whether the actual or alleged contribution is actually technical in nature

The Aerotel/Macrossan decision was criticized on the grounds that the technical contribution approach was inconsistent with the approach adopted by the EPO Boards of Appeal. In fact, in decision T 0154/04 Estimating sales activity/Duns Licensing Associates [3], the Board of Appeal went so far as to say that the approach applied in Aerotel/Macrossan was “irreconcilable with the European Patent Convention”.

Why did this matter? It mattered for the important reason that the provisions in the UK Patents Act relating to exclusions from patentability “are so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention, …[has] in the territories to which [that] Convention [applies]” (Section 130(7) Patents Act 1977). Put more simply, if a claim in a patent application filed at the EPO is found to involve patentable subject matter, then the same conclusion should be reached at the UK IPO and in the UK courts.

Clearly, therefore, if the UK and the EPO followed different approaches when interpreting the exclusions and which yielded different results, then this could have serious consequences, not least on the validity of European patents in the UK. If the EPO interprets the exclusions more narrowly and grants a patent containing a claim which, in the UK, would fall within a wider interpretation of the exclusions, then this would result in a European patent having effect in the UK which would be invalid as far as the UK courts were concerned.

This is why the Symbian decision was important. In Symbian, the Court of Appeal believed that it was possible, at least in principle, to reconcile the test set out in Aerotel/Macrossan with the approach applied at the EPO and followed in Duns Licensing Associates.

In Symbian, the Court of Appeal considered that it did not need to depart from Aerotel/Macrossan and held that question to be answered was whether there was a “technical” contribution. The Court indicated that the most reliable guidance as to whether there was such a contribution was to be found in the EPO Boards of Appeal T 0208/84 Computer-related invention/Vicom [4], T 0006/83 Data Processing Network/IBM [5]and T 0115/85 Computer-related invention/IBM [6], and Court of Appeal decisions in Merrill Lynch’s Application [7] and Gale’s Application [8].

Thus, the structured four-step approach of Aerotel/Macrossan could still be applied and it could be argued that UK authority and EPO authority on exclusions were in agreement, at least in theory.

The Patents Court has its say

About four months after the judgement in Symbian was handed down, the Patents Court had an opportunity to comment on Aerotel/Macrossan and Symbian. The Patents Court is part of the High Court, which is a lower court than the Court of Appeal and, thus, is bound by decisions of the Court of Appeal. The Patents Court confirmed that the four-part test should still be used and formulated some rules to help in determining whether there was a “relevant” technical effect, that is, a technical effect which did not lie solely within excluded subject matter.

In AT&T Knowledge Ventures LP Application & CVON Innovations Limited v Comptroller General of Patents [9], Mr Justice Lewinson heard appeals against decisions by the UK IPO refusing GB application 0602349.3 and GB application 0623571.7.

Mr Justice Lewinson considered the Aerotel/Macrossan and Symbian decisions. He decided that the structured four-stage test remained the law, but it should not be followed blindly. He added that the question whether the contribution is “technical” must be asked and answered, but that it did not matter whether it was asked at stage three or four of the test.

The judge found that there was a requirement to exclude, as an irrelevant “technical effect”, a technical effect that lay solely in excluded matter. He turned to the sources approved by Symbian and also to EPO Board of Appeal Decision T 0258/03 Auction method/Hitachi [10] for guidance as to what would be a relevant technical effect and adopted some “useful signposts”, namely:

(i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;

(ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;

(iii) whether the claimed technical effect results in the computer being made to operate in a new way;

(iv) whether there is an increase in the speed or reliability of the computer; and

(v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

AT&T’s application related to a content broker hosting service system - see the Figure ‘AT&T system’. Mr Justice Lewinson agreed with the UK IPO Hearing Officer that the contribution was the provision of means (“a device profile table”) to store information about the functionality and capability of one or more devices held by a user and to supply this information to a content provider so that it can supply content suitable for use on the device.

The judge looked at his signposts. He found that the claimed invention did not make the computer work in new or different way, that it did not work irrespective of the data being processed, that it simply circumvented a problem and that it did not increase the speed or reliability of the computer. He concluded that the claimed result was essentially a method of doing business and dismissed the appeal.

CVON’s application related to a messaging system - see the figure ‘CVON system’ - which modified a message sent from one phone to another dependent on the sender’s membership of a group, for instance, a supermarket loyalty scheme, by adding, for example, an advertising slogan.

In the CVON system, a database contains group membership details of its subscribers and updates the group membership by using user-provided information to attempt logging on to a third part server. Group membership records are updated on the basis of the third party server response to the attempted log-on.

Mr Justice Lewinson summarised the contribution as being that the subscriber initiates the authentication process by using a user ID and password and, again, applied his rules. In his view, the claimed invention simply caused information to flow in a different direction and that it did not provide a technical solution to any alleged incompatibility of formats, but instead avoided the problem by changing the direction of information flow. Again, he considered that the invention was simply a method of doing business and dismissed the appeal.

AT&T Knowledge Ventures/ CVON Innovations provided guidance on how to assess technical contribution, particularly a “relevant” technical contribution.

As will be seen later, the decision has been applied in UK IPO decisions.

The UK IPO has its say too

After the Symbian decision, the UK IPO issued a Practice Notice aimed at clarifying its position on the patentability of computer programs. The Practice Notice confirmed that the UK IPO would continue to apply the four-part Aerotel/Macrossan test.

The Practice Notice also set out the position of the UK IPO:

“5. The Intellectual Property Office has previously recognised that an invention which either solves a technical problem external to the computer or solves “a technical problem within the computer” is not excluded. What Symbian has now shown is that 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.”

The Practice Notice also confirmed that:

“…the mere presence of conventional computing hardware does not of itself mean an invention makes a technical contribution and so avoids the computer program exclusion. This is in contrast to the practice of the European Patent Office, which the Court of Appeal rejected in Symbian.”

Clearly, the UK IPO thought that there was still a difference between its position and the position of the EPO with regards to the exclusions. How was this reflected in practice?

Earlier this year, the UK IPO issued over 20 decisions following hearings relating to exclusions from patentability. About half of the hearings took place after the decision in AT&T Knowledge Ventures/ CVON Innovations was handed down and only three cases refer to this Patents Court case.

The applications related to a wide range of subject matter including electronic trading systems, quality control analysis, modelling process plant operation, generation of golf course maps, software application development, control of Internet access, modelling cable routing, antivirus software, remote authentication, hardware validation, script generation, text string searching and gaming machines.

In all the cases, the hearing officer applied or at least referred to the structured four-part test presented in Aerotel/Macrossan and assessed whether the invention provided a technical contribution.

In many cases, the applications were refused on the grounds that the claimed invention related to excluded subject matter. However, in a few cases, such as in Nokia Corporation’s Application [11] and Fisher-Rosemount Systems Inc’s Application [12], the contribution made by the invention was found to be technical in nature.

In Nokia, the invention related to a method of software application development for a wireless mobile device. The hearing officer found the contribution made by the invention to be a software-implemented method for developing networked applications for a wireless mobile device, the software enabling a developer to use a computer remote from a wireless mobile device to call, over a network connection, modular software elements resident on the wireless mobile device and to combine and execute modular software elements resident on the device by using a script composed on the computer and transferred to the wireless mobile device. The hearing officer went on to say that the precedents did not provide much in the way of direct assistance in deciding whether the invention made a technical contribution. Nevertheless, he concluded that the invention contributed a way of controlling the interaction between a mobile phone and a remote computer in such a way that the functionality of the mobile can be changed whilst avoiding the technical problems inherent in prior art solutions, namely an inadequate interface on the phone or an imperfect emulator on the remote computer.

In Fisher-Rosemount, the invention related to a process plant having a plurality of process devices which implemented a control strategy. The hearing officer considered that the contribution was the particular way a control signal for adevice is generated in response to a current state of part of the system which could, itself, be in changed in dependence upon an input signal from a second device in the system. He concluded that the invention was “inexorably linked” to the control of a process plant and, thus, clearly made a technical contribution.

Comment

The UK IPO and the UK Courts have made it clear that inventions involving computer programs are not excluded from patentability provided they make a technical contribution. This view is reflected in practice: the UK IPO routinely grants patents relating to computer-implemented inventions and continues to do so after Symbian and AT&T Knowledge Ventures/ CVON Innovations.

In fact, a search of international patent classification (IPC) codes of the applications refused by the hearing officer reveals that the UK IPO has granted patents in the last year under these codes. The UK IPO has even granted patents under IPC code G06Q40/00 for data processing systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes and in particular finance, e.g. banking, investment or tax processing, insurance, e.g. risk analysis or pensions, all of which activities would normally be called business activities. Therefore, even though the UK IPO and EPO have adopted different approaches to interpreting the exclusion provision, does this really matter in practice?

In clear-cut cases, the UK IPO and EPO are likely to agree on the outcome. For example, if an application related, for example, to a computer-implemented business method, then it is extremely unlikely the UK IPO or the EPO would allow it.

What about other cases?

The Court of Appeal warned in Symbian that each case must be determined by reference to its particular facts and features, bearing in mind the guidance given in the sources referred to in that case. It could be argued that this guidance can be conveniently used to gloss over any differences in approach and potential outcome between the UK IPO and EPO. It is rare for applications for the same computer-implemented invention to be filed at both the UK IPO and the EPO. Therefore, if the UK IPO refused a patent application for a computer-implemented invention, but the EPO granted a patent for a similar, but slightly different, invention, then the difference in outcome can be explained away on the grounds that the facts of the two cases differed.

Nevertheless, there does seem to be a question mark over whether some of the inventions for which the EPO has granted patents would be considered to produce a “relevant” technical effect as set out under AT&T Knowledge Ventures/ CVON Innovations. For example, the EPO regularly grants patents in the field of computer games under IPC code A63F13/10 (Aspects of games using an electronically generated display having two or more dimensions, e.g. on a television screen, showing representations related to the game). Would an invention which had the effect of, for example, smoother display scrolling, be considered to be a “relevant” technical effect?

Arguably, the invention does not make the computer work in new or different way, does not necessarily operate at the level of the architecture of the computer and does not really increase the speed or reliability of the computer.

In Nintendo Co. Ltd’s Application [12] which was decided after the Aerotel/Macrossan decision but before Symbian, the hearing officer refused an application relating to a game machine involving a simulated race between karts displayed on a track in a virtual space. When a kart overturned or spun, the computer showed an animated sequence of steps to place it back on the track facing in the same direction as it was travelling immediately beforehand. This was achieved through a recovery sequence comprising distinct phases during which the kart moves under the influence of different virtual forces. The contribution was concerned with how the player object transitions from one game state to another which, according to the hearing officer, was realised wholly within the game computer by means which were in practice computer program elements. It is hard to imagine that the hearing officer in Nintendo would come to a different conclusion today, taking into account the signposts in AT&T Knowledge Ventures/ CVON Innovations.

Therefore, it seems entirely possible that a UK IPO hearing officer or examiner could refuse an application for an invention on the grounds that it lay solely within the computer program exclusion, but an EPO examiner could allow an application for the same invention.

This does not mean to say the UK IPO does not grant patents for computer games: it does grant patents in this area. However, it is likely that these were granted because there was a strong technical contribution.

The UK Supreme Court, which now replaces the House of Lords as the final court of appeal in the UK, has the power to harmonise the UK position on the exclusion with that of the EPO. However, there appear to be no cases due to be heard before the Supreme Court on this matter in the near future.

Before then, however, there may be a change in position at the EPO brought about by the referral, by the President of the EPO, of questions regarding the patentability of programs to the Enlarged Board of Appeal (G 0003/08). Any decision would certainly have an impact on the UK position. Even though such a decision would, strictly speaking, only be persuasive authority on UK courts, it is highly unlikely that it would be ignored. Particularly if the decision had the effect of re-affirming the EPO position or even interpreting the exclusion more narrowly than at present, it is unthinkable that any disparity between the UK and EPO positions would be tolerated in the longer term.

So, let us first see what the Enlarged Board of Appeal does next.

Cited cases

[1] Symbian Ltd v Comptroller-General of Patents [2008] EWCA Civ 1066

[2] Aerotel v. Telco; Macrossan’s Application [2006] EWCA Civ 1371

[3] T 0154/04 Estimating sales activity/Duns Licensing Associates OJ EPO 2008, 46

[4] T 0208/84 Computer-related invention/Vicom OJ EPO 1987, 14

[5] T 0006/83 Data Processing Network/IBM OJ EPO 1990, 5

[6] T 0115/85 Computer-related invention/IBM OJ EPO 1990, 30

[7] Merrill Lynch’s Application [1989] RPC 561

[8] Gale’s Application [1991] RPC 191

[9] AT&T Knowledge Ventures LP & CVON Innovations Limited v Comptroller-General of Patents [2009] EWHC 343 (Pat)

[10] T 0258/03 Auction method/Hitachi OJ EPO 2004, 575