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On 8 October 2008, the UK Court of Appeal handed down its much anticipated judgement in the matter of Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066.
This case was an appeal by the UKIPO against a decision of the High Court between the parties, which was in turn an appeal by Symbian Ltd against a decision of the UKIPO to refuse UK patent application GB0325145.1, on the ground that the alleged invention was excluded from patentability by Section 1(2) of the Act [1].
In the High Court, Mr Justice Patten had overturned the UKIPO’s decision to refuse, allowing Symbian’s appeal. The UKIPO took issue with this decision and strongly attacked Patten J’s decision, alleging that it failed to follow the established case law [2]. The UKIPO therefore appealed the High Court’s decision, which is the appeal decision now discussed.
As readers active in this field may well be aware, the UKIPO has in recent times taken a very negative approach to examination of patent applications for inventions which can be implemented in software. The UKIPO maintains that its approach is based upon the previous decision of the Court of Appeal in Aerotel [3], despite the widely accepted fact that although the Aerotel decision considered itself only to be a restructuring of the test for patentability rather than a change in the test per se, the UKIPO underwent a step change in attitude to computer implemented inventions after Aerotel.
In the Decision, the Court of Appeal (the bench including Law Lord Lord Neuberger as well as Court of Appeal patents specialist Jacob LJ and Court of appeal judge Maurice Kay LJ) made a number of key determinations which are expected to affect the practice of the UKIPO in future, as well as setting the tone for future court decisions.
On the widest matters, the Court cautiously affirmed its earlier position in Actavis [4] that it can (but is not bound to) depart from its own precedent where there is a settled position in the body of EPO Board of Appeal decisions that is contrary to that earlier precedent of the Court. In the decision, Lord Neuberger stated at paragraph 36: “Given that there are decisions of this court and of the Board which relate to the ambit of the computer program exclusion in art 52, the right basis for assessing that ambit in this court should be as follows: if the judgements in the Court of Appeal cases give tolerably clear guidance which would resolve the issue on this appeal, then we should follow that guidance, unless it is inconsistent with clear guidance from the Board, in which case we should follow the latter guidance unless satisfied that it is wrong.“ This appears to set out clear guidance as to the ambit of the Acatvis principle of departing from precedent.
Applying this principle to the present case, the Court took the approach of reverting to the analysis used in early precedent of the Court in Merrill Lynch [5] and Gale [6] and that used by the Boards of Appeal in Vicom [7] and two IBM Corp. cases [8]. In so doing, the Court avoided the analysis used in Aerotel which (although stated therein to be a rephrasing of the previous analysis) has caused so much difficulty in recent times, and was the basis for the UKIPO’s refusal of the application in this case.
Considering the “program for a computer” “as such” exclusion of section 1(2) of the Patents Act 1977, a number of important points were made by the Court.
The Court started by confirming that, following Section 130(7) of the Act, the effect of this exclusion is to be considered in parallel with and provided with the same effect as the equivalent exclusion in Article 52(1) EPC. It was this determination that lead to the above-mentioned discussion of the Actavis principle of departing from precedent.
The Court also held that the computer program exclusion embodied in Section 2(1) of the Act is one of substance rather than form and gave a number of key points of guidance on this issue.
Lord Neuberger, giving the decision of the Court, states at paragraph 48 “[t]he mere fact that what is sought to be registered is a computer program is plainly not determinative. Given that the Application seeks to register a computer program, the issue has to be resolved by answering the question whether it reveals a "technical" contribution to the state of the art”, continues at paragraph 54 with “the fact that the improvement may be to software programmed into the computer rather than hardware forming part of the computer cannot make a difference” and then re-emphasises the issue at paragraph 56 “[t]o say "oh but that is only because it is a better program – the computer itself is unchanged" gives no credit to the practical reality of what is achieved by the program”.
Lord Neuberger concludes his discussion by holding, at paragraph 58: “Therefore, it must mean, consistently with Vicom and the two IBM Corp. cases, that a technical innovation, whether within (as in the last-mentioned cases) or outside the computer will normally suffice to ensure patentability (subject of course to the claimed invention not falling foul of the other exclusions in art 52(2))”.
The Court has clearly aimed to remove a large part of the uncertainty surrounding the computer programs exception; Lord Neuberger states at paragraph 51, “we should try to follow previous authority, we should seek to steer a relatively unadventurous and uncontroversial course, and we should be particularly concerned to minimise complexity and uncertainty”.
The Court of Appeal refused the UKIPO the right of further appeal, the UKIPO has the option to apply to the House of Lords for permission to appeal, but it appears very unlikely that the House of Lords would grant such leave, not least due to the presence of Lord Neuberger on the bench on in the Court of Appeal.
The result of the decision appears to be directly counter to the UKIPO’s present position, discussed above, of refusing even to fully examine almost every application of an invention which can be implemented using a computer. The author is therefore hopeful that the practice of the UKIPO will shortly be modified to coincide more often with the approach taken by the EPO.
Lord Neuberger does comment (paragraph 61) that it is “inevitable that there will be cases where the EPO will grant patents in this field when the UKIPO should not” and repeats earlier calls by the UKIPO judiciary for proper dialog and cooperation between the national offices and the EPO. Whether the offices will heed this call remains to be seen.