I have been following with interest the software patent case of Symbian v Comptroller General for Patents. The Court of Appeals has rejected an appeal by the UKIPO, which seems to move English software patent rulings closer to te EPO Board of Appeals interpretation.

As background, Symbian is a UK company which produces a popular mobile phone operating system, and in 2004 made a PCT application for “Mapping of dynamic link libraries in computer devices“. The patent was awarded by the European Patent Office (EP1678608), but it was rejected by the UKIPO (GB0325145.1). Symbian appealed the decision and won. The UKIPO found the ruling by Patten J to be faulty, and filed an appeal, which as I mentioned, has been rejected.

The decision has been drafted by Lord Neuberger, and I have to say that it does not go into too much detail of the law, and therefore is a less compelling read than Aerotel and other rulings, but it still contains some interesting discussion. The core issue of the Symbian appeal is rather straightforward. Was the UKIPO justified in excluding Symbian’s patent application? Patten J opined that it was not, and the Court of Appeals agrees. Lord Neuberger is of the mind that excluding inventions in computers is arbitrary and unfair:

“It can also be said in favour of Symbian’s case that it would be somewhat arbitrary and unfair to discriminate against people who invent programs which improve the performance of computers against those who invent programs which improve the performance of other machines. However, as against that, what goes on inside a computer can be said to be closer to a mathematical method (which is, of course, not patentable by virtue of art 52(2)(a)) than what goes on inside other machines.”

Nueberger L makes a strong case against exclusion of software by the mere fact that it is software, while acknowledging the inherent difficulties in looking for prior art when the source code is absent. Nueberger L spends some time trying to determine whether or not there is a technical contribution in the Symbian “invention”, and concludes that there is, and therefore the patent application cannot be excluded on those grounds. The case then is not about the novelty of the application, it is about unwarranted exclusion of a valid application on the grounds of the patentability of software.

What is clear is that the Symbian appeal is a concerted attempt to bring the EPO and English decisions closer together. While Aerotel placed a large wedge between the EPO Board of Appeals and English courts, recent cases have been bridging the gap, particularly in the area of obviousness in non-software cases (namely, Conor v Angiotech and Actavis v Merck). Lord Neuberger spends his last paragraphs building bridges and making a friendly gesture to the EPO. He says:

“It is, of course, inevitable that there will be cases where the EPO will grant patents in this field when UKIPO should not, at least so long as the view in Pension Benefit and Hitachi is applied by the Board and is not applied here. The fact that the two offices and their supervisory courts have their own responsibilities means that discrepancies, even in approach or principle, are occasionally inevitable. However, the fact that such discrepancies have been characterised as “absurd” by Nicholls LJ, and the reasoning in [3] of Conor emphasise the strong desirability of the approaches and principles in the two offices marching together as far as possible. This means that there is a need for a two-way dialogue between national tribunals and the EPO, coupled with a degree of mutual compromise. More directly relevant to the present appeal, it means that, where there may be a difference of approach or of principle, one must try to minimise the consequent differences in terms of the outcome in particular patent cases.”

This seems reasonable, but to my mind the Symbian appeal is a wasted opportunity to clarify concepts. The ruling completely fails to address the fact that the Symbian patent application is woefully obvious, and should not have been granted on the grounds of novelt and inventive step. True, this case has never really been about the application itself, it has been about the narrowness of interpretation of what constitutes software as such, technical effects, and therefore whether software should be excluded from patentability on those grounds. However, most of the definitions of technical effect in the case law delimit it as a novel step that advances the state of the art in a comprehensive manner. The case might have analysed that the Symbian application is seriously lacking in those grounds, and therefore did not meet the technical contribution requirements. However, Neuberger L and Patten J before him do not go into this vital question in detail, and I believe they should.

It seem like the UKIPO will have to redraft their guidelines again.

Update: The Times Online has an article on the ruling, which I found quite misleading. They are making it seem as if software patents could not be obtained in the UK prior to the ruling, which is not true. As I mentioned, Symbian has brought EPO and UK practices closer together, which does indeed mean that more software will be subject to patent protection.

1 Comment


Symbian Blogger · May 16, 2009 at 2:36 pm

I found your blog on google and read a few of your other posts. I just added you to my Google News Reader. Keep up the good work. Look forward to reading more from you in the future.

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