The patentability of Computer Programs - a clarification (as such)
Case Update - On October 8 2008, the Court of Appeal issued their eagerly anticipated judgement in the case of Symbian v Comptroller General of Patents ( EWCA Civ 1066). In this decision, the Court confirmed that the 4 step test set out in Aerotel/Macrossan ( EWCA Civ 1371) is the correct approach in determining whether a patent should be granted in respect of a software program. The court also stated that would have been able (but not bound) to depart from the precedent set by previous Court of Appeal decisions, if it was satisfied that the European Patent Office Technical Board of Appeal (the "Board") had formed a settled view on a particular point of patent law. On the facts, however, the Court held that such a departure was not necessary.
s.1 of the Patents Act 1977 (which implements article 52 of the European Patent Convention) sets out the conditions to be met for an invention to be patentable in the UK. s.1(1) states that a patent may only be granted for an invention provided it is:
- involves an inventive step;
- is capable of industrial application; and
- does not fall under an excluded category.
s.1(2) sets out a list of items which will not be regarded as an invention for the purposes of s.1(1). Specifically, this section states that 'a program for a computer' is not to be regarded as an invention. However, the list in s.1(2) is qualified by saying that such items are only excluded "to the extent that a patent... relates to that thing as such".
It is this phrase "as such" that has been subject to a considerable amount of debate, analysis and litigation over the years and, as the Court of Appeal recognised in the present case, is a topic that is "inherently difficult and on which there is apparent inconsistent authority domestically and in the European Patent Office".
The Symbian Case
The Symbian case concerned a Patent application for "Mapping dynamic link libraries in a computing device". It was claimed that this invention would allow faster and more reliable access to certain data stored on a computer system and therefore a computer running this program would be faster and more reliable than the state of the art.
This application was initially refused by the UKIPO on the basis that the invention was excluded from patentability by s.1(2) as it related to a "program for a computer... as such". Symbian appealed this decision to the High Court where Mr Justice Patten allowed the appeal on the grounds that the UKIPO had taken too narrow a view with respect to the technical effect of the program. Following the decision of the High Court, the UKIPO appealed to the Court of Appeal.
The Court of Appeal approached this case by first conducting a review of the relevant case law from both from the UK courts and from the European Patent Office. In doing so, the Court revisited its previous decision Aerotel in which it established a 4 point test for determining whether a computer program was patentable namely:
- Properly construe the claim;
- Identify the actual contribution (i.e. what has the inventor really added to human knowledge);
- Ask whether the contribution identified in (2) above falls solely within the excluded subject matter; and
- Check whether the contribution is actually technical in nature.
Interestingly, the Court made it clear that it was able (but not bound) to depart from the precedent set by previous Court of Appeal decisions if it was satisfied that the Board had formed a settled view on a particular point of patent law. In doing so, the Court approved the earlier judgement of Jacob LJ in Actavis. This is a significant point which demonstrates the UK Courts' willingness to depart from precedent in order to achieve consistency in the application of patent law throughout Europe.
Whilst the Court of Appeal stated that, in its view, the majority of decisions arising from both the UK Courts and the EPO could, as a matter of broad principle, be viewed as being consistent, it did not feel that the Board had yet reached a settled view on the scope of the exclusion of computer software. In particular, the Court pointed to the fact that there was yet to be a decision of the Enlarged Board of appeal on this point (despite a request by the Court of Appeal for such a reference to be made following the decision in Aerotel) and to a number of recent Board decisions which seemed to be inconsistent in the approach adopted (namely Pensions Benefit 2000 T931/95; Hitachi/Action method (2004) T258/03; and Microsoft/Data Transfer (2006) T424/03).
As such, the court confirmed that the correct approach to be taken remains the 4 point test as set out in Aerotel.
The Court went on to apply the facts of the present case to the Aerotel test and held that the key issue was whether the computer program reveals a 'technical contribution' to the state of the art. The Court held that the program did indeed make a technical contribution on the basis that it solved a technical problem lying within the computer itself (i.e. the potential unreliability of the file system) and therefore, would in theory produce a better computer. It was because of this technical contribution that the application was able to satisfy the third test set out in Aerotel - i.e. the technical effect meant that the computer program did not fall solely within an excluded category.
Referral to the Enlarged Board of Appeal
Following the decision of the Court of Appeal, the President of the European Patent Office, Alison Brimelow, made a referral to the EPO's Enlarged Board of Appeal asking them to consider "the application of the exemption for computer programs as such". Given that the President of the EPO had refused to refer the same issue to the Enlarged Board of Appeal as recently as 2006 (following the request of the Court of Appeal in Aerotel as discussed above), this referral seems to indicate a that the EPO have recognised the need to clarify this matter one way or another.
There have been a number of attempts to clarify the law relating to the patentability of software over the years - most notably the European Commission's proposed Directive in 2002 on the patentability of computer programs. However, due a range of both technical and political objections, these attempts have, to date, been unsuccessful.
Whilst this decision will no doubt be viewed as a blow to those in the software industry who oppose software patents as a matter of principle, this decision seems to focus more on the need to achieve consistency in the way the law is applied. From this perspective, the decision (and the subsequent referral) is a welcome development.
Article posted: 2008-11-28