UK Court of Appeal: a computer program which results in a 'better computer' is patentable

In an important decision handed down earlier today, the Court of Appeal sought to bring the UK position on patentability of computer-implemented inventions more in line with that of the European Patent Office (EPO).

In Symbian Ltd v Comptroller General of Patents (dated 8 October 2008), the Court of Appeal refused the appeal by the Comptroller General of Patents against the decision of Mr Justice Patten. In the High Court, Mr Justice Patten allowed an appeal by Symbian (the well-known provider of operating systems for mobile communication devices) against the decision by the UK Intellectual Property Office (UKIPO) refusing GB application 0325145.1 on the grounds that the alleged invention was excluded from patentability.

In reaching its decision, the Court of Appeal first considered the general approach to assessing excluded subject matter. The court compared previous decisions of both UK courts and the EPO Boards of Appeal, notably Aerotel Limited v Telco Limited; Macrossan's Application and Duns Licensing Associates (EPO decision T154/04), and considered whether there was a general approach towards assessing whether an invention is excluded from patentability. It concluded that at least 'as a matter of broad principleÉthe approachesÉwere capable of reconciliation'. Thus, the court saw no reason why the third stage of the test set out in Aerotel should not amount to the same as that identified in Duns, namely whether a contribution cannot be characterised as 'technical'.

Then, the Court of Appeal went on to consider whether there was a clear and consistent view as to the scope of the computer program exclusion. It held the analysis of the EPO Board of Appeal in Vicom (T208/84), IBM (T6/83) and IBM (T115/85), and that of the Court of Appeal in Merrill Lynch and Gale, to be the most reliable guidance. It accepted that it was difficult to formulate a precise test for deciding whether a computer program was excluded from patentability and that each case must be determined by reference to its particular facts. However, it suggested following the guidance given in these decisions.

In the end, the court concluded that the claimed invention did make a technical contribution: the program did not embody excluded subject matter (such as a method of doing business or a mathematical method). It its view, a computer containing the computer program instructions would be a better computer, namely one which would be faster and more reliable.

This decision is welcome not least because it should result greater consistency in the outcomes of applications for computer-implemented inventions filed at the UKIPO and the EPO. In fact, it should be noted that a patent for the same invention was granted by the EPO earlier this year.

A copy of the judgement can be found here.

Pawel Piotrowicz 27 Oct 2008

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