Symbian Ltd v Comptroller General of Patents

Factual and Procedural Background

This opinion concerns an appeal brought by the Comptroller General of Patents against a decision of Mr Justice Patten. The Judge had allowed an appeal by Company A against the Comptroller's refusal of UK Patent Application No GB 0325145.1 ("the Application"). The refusal was based on the ground that the alleged invention was excluded from patentability under section 1(2) of the Patents Act 1977 as a "program for a computer as such". The Application relates to a method of accessing data in a dynamic link library (DLL) in a computing device, aiming to improve the reliability and speed of linking functions within DLLs by splitting the DLL into a fixed part and an extension part accessed via a program interface. The appeal raises the complex issue of the scope of the exclusion of computer programs from patentability under UK and European law.

Legal Issues Presented

1. What is the proper scope of the exclusion of "programs for computers as such" from patentability under section 1(2)(c) of the Patents Act 1977 and article 52(2)(c) of the European Patent Convention (EPC)?
2. Whether the claimed invention in the Application makes a "technical contribution" sufficient to avoid the exclusion and be patentable.
3. How to reconcile the differing approaches and decisions of domestic courts and the European Patent Office (EPO) Technical Board of Appeal regarding the patentability of computer programs.
4. Whether the Court of Appeal should follow previous domestic precedents or the jurisprudence of the EPO when assessing the patentability of computer programs.

Arguments of the Parties

Appellant's Arguments (Comptroller General of Patents)

• The exclusion in article 52(2)(c), as qualified by article 52(3) EPC, excludes any computer program from patentability unless it produces a novel effect outside the computer itself.
• A program that carries out a new or improved procedure is patentable only if the effect of that procedure extends beyond the computer.
• Programs improving computer performance alone are not patentable unless they relate to processes carried out outside the computer.
• It would be difficult for third parties to search prior art in computer programs due to the confidential nature of source code and lack of accessible literature.
• The test advanced by Company A is imprecise and arbitrary, and the exclusion should be given a broad effect.
• There is no explicit "technical" requirement in article 52, and the concept of "technical contribution" is vague and potentially misleading.

Appellee's Arguments (Company A)

• The exclusion in article 52(2)(c) EPC only applies to programs that do not provide a technical solution to a technical problem.
• A program that improves the performance of a computer should not be excluded, analogous to programs improving other machines.
• Programs embodying mathematical methods, business methods, or mental acts are excluded because they do not make a technical contribution.
• The approach aligns with the view of the EPO, and domestic courts should avoid conflicting with EPO jurisprudence.
• The limitation in article 52(3) EPC requires a program to have a technical effect to be patentable, which Company A’s invention satisfies.

Table of Precedents Cited

Court's Reasoning and Analysis

The court began by acknowledging the inherent difficulty and inconsistency in the interpretation of the exclusion of computer programs from patentability under both UK law and the EPC. It emphasized that the same principles must apply domestically and under the EPC due to statutory provisions. The court adopted the four-stage Aerotel test as the framework for analysis, focusing particularly on whether the contribution is solely excluded subject matter and whether it is technical in nature.

The court reviewed relevant EPO Board of Appeal decisions, notably Vicom and IBM Corp. cases, which established that a computer program controlling a technical process or improving computer performance can be patentable because it makes a technical contribution. It contrasted these with other decisions that took a more restrictive view and noted inconsistencies in the Board's approach.

Domestic precedents Merrill Lynch, Gale, and Fujitsu were considered, with the court recognizing some difficulty in reconciling outcomes but affirming the importance of the technical contribution principle. The court also discussed the role of precedent, stating it would follow settled domestic authority unless clearly displaced by consistent EPO jurisprudence, which it found lacking.

The court analyzed the competing interpretations of the exclusion: the Comptroller's broader exclusion unless effects extend outside the computer, and Company A's narrower exclusion applying only to programs not providing technical solutions. The court found the narrower interpretation more consistent with established authority and the practical realities of computer programs.

Applying these principles to the Application, the court concluded that the invention makes a technical contribution by improving the speed and reliability of the computer's operation and by solving a technical problem within the computer itself. The improvement is not merely a better program but results in a faster and more reliable computing device, with beneficial effects extending beyond the computer to devices such as cameras and communication products.

The court found no reason to depart from the approach in Vicom, IBM Corp., Merrill Lynch, and Gale, and rejected the Comptroller's broader exclusion. It emphasized the importance of minimizing uncertainty and complexity in this evolving area of law and ruled that the claimed invention is not excluded from patentability as a program "as such".

Holding and Implications

The court dismissed the appeal brought by the Comptroller General of Patents.

The holding confirms that the claimed invention, a computer program improving the operation of a computing device by making a technical contribution, is not excluded from patentability under section 1(2)(c) of the Patents Act 1977 or article 52(2)(c) EPC. The decision affirms the application of the four-stage Aerotel test and the principle that a technical contribution within the computer suffices to avoid the exclusion.

The direct effect is that the Application may proceed to registration. The court did not establish new precedent but reinforced adherence to existing authority and the need for consistency between UK and EPO approaches, emphasizing the importance of technical contribution as the key criterion. The ruling highlights the continuing complexity and evolving nature of patent law concerning computer programs, urging cautious and fact-specific application of principles.