Second High Court decision this year on software-related patents is ‘further pressure’ for alignment of UK and European practice

Published: 25 March 2008
By: Peter Prowse

A spokesman for the Chartered Institute of Patent Attorneys (CIPA) has described last Tuesday’s (18 March) High Court decision on Symbian’s patent application as “further pressure for alignment between the UK and Europe when it comes to computer-implemented patents”. 

Dr Simon Davies, Chairman of CIPA’s Computer Technology Committee, commented: “Mr Justice Patten’s ruling has highlighted differences in practice between the UK-IPO and the European Patent Office regarding computer-implemented inventions. Coming so soon after the Astron Clinica High Court case in January, this decision again emphasises the desire of the courts to ensure a more consistent and uniform approach between the UK-IPO and the EPO when examining this sort of patent application.”

Last week’s High Court judgment related to a patent application by Symbian. According to the UK-IPO (formerly the Patent Office), Symbian's patent application ‘describes how in a computer a library of functions (DLL), which can be called on by multiple application programs running on the computer, is accessed. In particular, it provides a way of indexing these library functions to ensure the computer will continue to operate reliably after changes are made to the library.’ 

The judgement overturned an earlier decision of the UK Intellectual Property Office (UK-IPO) to refuse the application because it related to ‘nothing more than a computer program’. Mr Justice Patten observed that the UK-IPO's decision in this case illustrated the divide which exists between the UK-IPO and the European Patent Office (EPO) about how the patentability of inventions involving computer programs should be assessed. This was because although the UK-IPO refused Symbian’s patent application, the EPO had granted Symbian a patent for the same invention – despite the UK-IPO and EPO operating according to a shared legal framework.

The UK-IPO has announced its intention to appeal against this judgment with a view to seeking clarification from the Court of Appeal. Pending a decision by the Court of Appeal, the UK-IPO has said that it will continue to follow the practice, set out in its Practice Notices issued in November 2006 and February 2008, which are founded on the established Aerotel /Macrossan test. When applying this test, the UK-IPO will ‘take account of the Symbian judgment in appropriate cases’.

For further information, contact:

Dr Simon Davies Tel: 023 8071 9677
Peter Prowse  Tel: 01372 271234, mobile: 07973 213039
Nicholas Pope  Tel: 020 7405 9450

Background

For details of the Symbian ruling, see the UK-IPO press release.

For information about the Astron-Clinica High Court decision in January, see CIPA’s press release.

The vast majority (83 per cent) of patents in force in the UK today were submitted to and granted by the European Patent Office. The direct UK route has, however, remained popular with British businesses due to the typically lower costs and speedier prosecution to grant.

What is patentable in the UK is determined by the Patents Act 1977 which is aligned with the European Patent Convention (EPC). Among other things, this states that patents are not available for computer programs as such. On the other hand, the also EPC states that patents are available for inventions in any field of technology. The way that the UK-IPO decides if an invention is patentable is different from that used by the EPO. The UK-IPO tends to focus directly on the specific computer program exclusion, while the EPO applies a broader positive test based on the whether or not the invention is technical.