Symbian appeal dismissed

The much anticipated Court of Appeal judgment in Symbian Ltd v Comptroller General of Patents has now arrived*, and is available from BAILII here.  The judgment relates to an appeal by the UK-IPO against the decision of Mr Justice Patten in the High Court (also available from BAILII here, and with IPKat commentary here and here), in which the UKIPO's approach relating to patentability of computer programs was overturned, after the Comptroller had refused Symbian's application under Section 1(2) for being excluded on the grounds of being a program for a computer as such.  The UKIPO clearly thought this needed to be further tested, as they thought they were correctly following the approach laid down by the last Court of Appeal judgment in Aerotel. 

Having now had chance to read the judgment in full, the IPKat is impressed by the way Lord Neuberger, opining on behalf of all three appeal judges (including Jacob LJ), has smoothed over the apparent inconsistencies and difficulties between the UK and EPO approaches to this tricky and controversial area of patent law.  Putting aside (but by no means ignoring) the clear provocations between the UK courts and EPO boards of appeal in Aerotel and Duns Licensing, Lord Neuberger seems to have managed to convince at least himself that there is little actual difference between the patentability test in the UK (as characterised by the four step test in Aerotel) and at the EPO (the rather different test for technical character/contribution).  Both, according to Lord Neuberger, should arrive at the same result for the great majority of inventions.  It did no good to emphasise the differences, and instead we should be looking for what there is in common:

"[I]t is particularly important to scrutinise the domestic and EPO authorities to see whether a clear and consistent view, or at least a predominant view, as to the scope of the computer program exclusion can be discerned. The last thing that we should do in this case is to add to the uncertainty in this difficult and somewhat controversial field" (paragraph 32).

Lord Neuberger could not, however, ignore the extensive commentary in Aerotel relating to the apparent contradictory Technical Board of Appeal decisions coming from the EPO in recent years, nor the decisions that have come since Aerotel was decided in October 2006.  Did the fact that there were at least three decisions at the EPO that flatly claimed the Aerotel approach was wrong mean that the Court of Appeal should now change its mind, as it recently did in Actavis v Merck? Not a bit of it:

"The fact that there are now three such decisions of the Board subsequent to Aerotel which appear to support the approach disapproved in Aerotel might suggest that this court should now adopt that approach. We do not agree. First, there is no decision of the Enlarged Board. Not only does that mean that the view of the Board is not as authoritative as it could be; it also suggests that the Board does not consider that the time has arrived for the point to be conclusively determined. Secondly, the approaches in the four decisions since Aerotel are not identical: in particular, one of them appears more consistent with the view preferred in Aerotel. Thirdly, we are concerned that, particularly if the passage quoted from File search method/Fujitsu represents the Board's view, the computer program exclusion may have lost all meaning. Fourthly, it is not as if the English courts are alone in their concern about the approach of the Board, as the observations from the German judiciary quoted in para 30, and referred to in paras [129] to [131] of Aerotel, demonstrate. Fifthly, if this court is seen to depart too readily from its previous, carefully considered, approach, it would risk throwing the law into disarray" (paragraph 46).

The Court of Appeal should instead hold a steady line, and should apparently not be swayed by some of the more extreme statements to be found in some EPO decisions. Instead, Lord Neuberger went back to the familiar territory of Vicom and the previous Court of Appeal judgments in Merrill Lynch, Fujitsu and Gale.  

Turning to the actual issue in question, which related to whether a purely software-implemented invention having no clear effect outside the internal workings of the hardware on which it was installed, was patentable or not, the issue was quickly dispatched by applying the second to fourth Aerotel steps as follows:

"Stage 2 Identify the contribution:
A program which makes a computer operate on other programs faster than prior art operating programs enabled it to do by virtue of the claimed features.

Stage 3 Is that solely excluded matter?
No, because it has the knock-on effect of the computer working better as a matter of practical reality.

Stage 4 Is it technical?
Yes, on any view as to the meaning of the word 'technical'" (paragraph 59).

Since there were no real issues relating to novelty and inventive step to be considered (which the IPKat thinks was a serious mistake on the part of the UK-IPO), the application was therefore seen to be patentable, and Lord Neuberger had no further hesitation in dismissing the UK-IPO's appeal.

The IPKat thinks that, on first reading, the judgment does not appear to really change anything.  However, the UK-IPO will inevitably now have to change its mind on how it deals with software patents, and will now be confronted with frustrated applicants who will have some serious ammunition to use against refusals under Section 1(2).  The result of this decision will therefore have the effect (presumably desired) that the pendulum will be swinging back towards applicants for software patents in the UK, and away from those who would prefer to shut down the possibility of software being patentable in any guise.

As a final point, and as two commenters to the previous brief version of this post have already pointed out, this judgment is notable for the fact that it makes a direct reference to a blog, something this Kat has not seen before in a UK legal judgment. The reference is not to the IPKat, unfortunately, but instead the US Patently-O blog, and to a rather dubious prediction of the US definition of patentability changing away from patenting software to the detriment of companies like Google. The IPKat, who is aware that he has already caused one previous recent Court of Appeal judgment to be altered at the last minute, looks forward to the day when his words are cited by an eminent Lord or two. Merpel, however, is glad that the UK legal system maintains its apparent ignorance of fictional cats in its deliberations, because otherwise the Kats in question might get ideas above their station.

*Thanks to the IPKat's Scottish deserter friend for letting him know!