Court of Appeal eases the patenting of software

The Court of Appeal has allowed a software patent, possibly setting an important legal precedent. Last week's decision by the Court of Appeal has upheld a previous decision by the High Court that the Intellectual Property Office or IPO's refusal of a patent application by Symbian was not correct in law. The application was for a patent for an indexing system for library functions in an operating system. Accordingly, in considering the "technical effect" of the invention by smartphone OS vendor Symbian, the patent examiner had displayed an excessively "narrow" point of view. The Court of Appeal, under the leadership of Lord Justice Sir Robin Jacob, has thus wished to minimise somewhat the differences due to the so-called "absurd" discrepancies between the IPO and the EPO – the European Patent Office (EPO). The Court also wants to harmonise patenting practice in England and Wales with that on the Continent.

This legal dispute has been going on for a long time. The IPO refused Symbian's application (PDF) number GB 0325145.1 in July 2007 on the grounds "that it relates to a computer program as such". It pointed out that in general under British law, as well as the European Patent Convention (EPC), computer programs "as such" were excluded from patentability. It decided that it was therefore not necessary to test the further requirement for a possible "technical character" of the invention. The application deals with industrial property rights on the interaction between Dynamic Link Libraries (DLLs) and the Symbian operating system. It is intended to enable programs, on mobile phones for example, to run faster.

The Symbian group – which has since been completely taken over by Nokia – appealed against the decision to the High Court, which supported the appeal in March. The court then opined that on the basis of the EPC there was no reason to refuse computer programs in general the legal protection of commercial rights. On the contrary, it ruled, the "technical effect" should be checked from case to case, and a decision made on that basis, as to whether a patentable invention or a claim for software as such was concerned. The solution devised by Symbian did in any case tackle a "technical problem in a computer", it said, so the appeal by the operating system producer was justified. The Court of Appeal has now supported this opinion.

In its wide interpretation of the EPC, the EPO has already been granting patents in the controversial field of "computer-implemented inventions" for a long time. Its technical appeals chambers have repeatedly decided that, where a software solution running on a computer improves the contrast of an image, for example, or more efficiently subdivides main memory, its "technical effect" is to be taken as the fundamental point and patent protection is to be granted. Following the Court of Appeal decision, this principle is now likely to be given more weight in England and Wales as well. Nor did the judges see their decision as clashing with their previous rulings in the Macrossan and Aerotel cases. In those cases, they had on the one hand refused a patent application relating to a business method while, on the other hand, confirmed legal protection of commercial rights for a system for accounting for telecommunications services by a prepaid method.

John Collins, a Partner at Marks & Clerk patent attorneys, called the decision of the Appeal Court "an important step on the road to harmonising UK and Europe’s approach to software patentability." "Software developers in the UK", he went on, "who had previously faced a much narrower interpretation of what could be patented should welcome this news." It was now once more the "technical test" that should differentiate between pure software and more demanding inventions in the computer area, he said. In general, this decision increases the pressure on Brussels to take a clear position, for or against the exclusion of computer programs from patentability. In July 2005, following a prolonged period of lobbying on this question, the European Parliament buried a draft Directive on the legal protection of commercial rights for "computer-implemented inventions".

(lghp)