UK: Computer Implemented Inventions—The Debate Goes On

Article from our Summer 2008 edition of InsideIP.

The assessment of the patentability of computer-implemented inventions in the UK continues to cause controversy.  Since November 2006, the UK Intellectual Property Office (IPO) and courts have used the test set out in the Aerotel/Macrossan decision (2006 EWCA 1371) when assessing whether claimed subject matter is excluded from patentability.  The test consists of the following four steps:

(i) properly construe the claim;

(ii) identify the actual contribution;

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

(iv) check whether the contribution is actually technical in nature.

The types of claim that could be used to protect a computer-implemented invention have since been clarified.  In Astron Clinica ([2008] EWHC 85 (Pat)), it was held that, in principle, where a claim to a method when performed on a computer and/or a claim to a computer programmed to perform that method are allowable, a claim to the computer program should, likewise, be allowed, provided that the claim reflects the features of the invention that ensures the patentability of the method.

However, a recent case has highlighted inconsistencies in the results achieved using the new approach and the established practice of the European Patent Office.  Symbian’s application ([2008] EWHC 518 (Pat)) related to a technique for accessing data within a dynamic link library (DLL).  The invention provided an interface for mapping between functions and their locations in the DLL, so that the functions could continue to be accessed by an ordinal number linking system following changes or updates.  The UK Intellectual Property Office considered that the contribution made by the invention was confined to the improvement of software and, therefore, fell wholly within excluded subject matter (step (iii) of the Aerotel/Macrossan test).  However, a parallel European patent application had been granted.

The primary issue considered was whether the third and fourth steps of the Aerotel/Macrossan test should be considered separately.  Having found that the claim fell foul of step (iii) of the test, the Hearing Officer at the UK Intellectual Property Office dispensed with step (iv) completely.  However, the Court held that the second, third and fourth steps of the Aerotel/Macrossan test were not self-contained.  With particular relevance to steps (iii) and (iv), Patten J held that a program that has a technical effect on an “important component in the computer’s operating system” could qualify as doing more than “merely operating as a computer program”.  In this particular case, the invention related to a technical problem caused by modification of the dynamic link library following updates to the computer’s functionality.

Patten J then stated that care needs to be taken not to pre-judge the issue of technical contribution or to exclude it by concentrating too much on the fact that the invention is program based.  This statement would exclude the application of the third and fourth steps of the Aerotel/Macrossan test in a separate, self-contained manner.  It would, therefore, seem that the consideration of steps (iii) and (iv) in a less rigid manner could be favourable in cases where the contribution is an improvement in the software and/or operation of a computer.

The UK IPO has appealed to the Court of Appeal (the second highest court in the UK).  The Court of Appeal will need to address the apparent inconsistencies between the Symbian and Aerotel/Macrossan decisions.  Because their decision will impact so many cases, the IPO has requested that the appeal be accelerated, so we expect that a decision will take only a few months to issue.  It will be interesting to see whether this case will proceed all the way to the House of Lords, thereby allowing the courts to re-write the rules in this contentious area.  In the meantime, the UK IPO will take the Symbian decision into account when assessing patentability.

Diana Pisani 01 Jun 2008

Return to news list