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!
Symbian appeal dismissed Symbian appeal dismissed Reviewed by David Pearce on Wednesday, October 08, 2008 Rating: 5


  1. Jacob LJ cites a blog as a source. Is this a first?

  2. Is this a first?

    Lord Neuberger cites a blog, the Patently-O Patent Law Blog(see par 50). What does this mean for legal blogs? Surely this decision is a significant acknowledgement of their importance?

  3. I found it pretty disturbing that he could argue different "philosophies" have different opinions on where technical lines could be drawn; it shouldn't be a matter of someone's opinion that a label be attached.

    I think the Judge was bamboozled in this case, sadly. Having a piece of software which makes a computer do something faster/more reliably is one thing; that's not what Symbian's patent does, though. It just does things slightly differently, with different results. No faster, no more reliable, just different.

  4. In all respects a really impressive decision based on a refreshing openness of mind, not often witnessed so clearly in court decisions. The genuine attempt to bring this difficult matter a step further on European scale is highly appreciated.

  5. David believes that this judgement does not appear to really change anything. In paragraph 11:

    "However, at least as a matter of broad principle, it seems to us that the approaches in the two cases [Aerotel and Duns Licensing] and indeed in the great majority of cases in this jurisdiction and in the EPO, are, on a fair analysis, capable of reconciliation. The third stage mandated in Aerotel, which we would have thought normally raises the crucial issue, is whether the alleged contribution is excluded by article 52(2), as limited by art 52(3). So far as we can see, there is no reason, at least in principle, why that test should not amount to the same as that identified in Duns, namely whether the contribution cannot be characterised as "technical". In effect, this can be said to involve conflating the third and fourth stages in Aerotel, a conflation which is easy to accept bearing in mind that it was said in Aerotel that the fourth stage, while required by Merrill Lynch, was unlikely to add anything to the third stage (a view supported by Kitchin J in Astron Clinica Ltd v Comptroller-General [2008] RPC 14, [49] and by Patten J in this case at [44])."

    This is a clear departure from the UKIPO recent practice in as much as it reestablishes that technical contribution is the determinant of whether a claim falls solely within excluded subject matter. As Patten J said earlier: it matters less where technical contribution is assessed than whether it is assessed at all (paraphrasing because I can't be bothered to look it up).

    It seems that the UKIPO can't continue to blindly follow the Aerotel test without expressly considering technical contribution at step 3. Is a new practice note needed?

  6. As ever, the first criticisms of the judgment are "these judges are out of their depth / too old to understand computers / being mislead by money grabbing attorneys".

    It's a sad fact of the debate that it's characterised by character assassinations rather than real arguments.

  7. Poor decision.

    It seems clear that to develop the solution adopted required no considerations of any factors outside the subject matter of "programs for computers".

    Therefore, even if one adopts the shorthand "technical" for "subject matter outwith the exclusions of Art 52(2)", and argues that there was a "technical problem", nevertheless this was not a "technical solution" in those terms.

    Mr Prescott seems to have gone for broke by demanding "a novel effect outside the computer". But perhaps this narrower question, of a "technical" solution necessarily depending on at least some considerations outside the subject matter of programs for computers, was never raised?

  8. @anonymous: I don't know if you're referring to my comment or not, but it certainly wasn't a piece of character assassination. I don't think the Judge necessarily made the wrong decision on the facts, I think the facts as presented are wrong.

    Symbian argued their setup made a computer more reliable. It plainly doesn't; the computer wasn't doing anything incorrectly. The design of a "traditional" system just doesn't fit Symbian's needs very well.

    This is purely a patent on a process.

  9. Thanks for such an in-depth post (and comments) on this case. I have little knowledge of UK or EU patent law and learned a lot from this.

  10. Does anybody agree with me, that this Decision reveals a lamentably poor understanding of (by now well settled!!)EPO caselaw on Art 52. Why does the judge keep on referring to "technical effects", when addressing Art 52? Has he not grasped the difference between technical character(Art 52) technical feature (in the claim) objective technical problem (problem and solution approach) and technical effect (what you discuss when you get on to Art 56)? Was the CA perhaps briefed by people who have not had the advantage of years of steeping in inter partes proceedings before the various Technical Boards of Appeal of the EPO? Lord Hoffmann hasn't either, but nevertheless maybe he can help here?

  11. I agree with you, poster immediately above.

    The discussion of the Board's decisions is, frankly, woeful. The distinction which they draw between, e.g. Gameaccount and Hitachi or File search method, is a nonsense.

    They simply haven't grasped, or most likely have deliberately ignored, the Board's approach of: technical character (i.e. some technical feature or result) = 'escape the exclusion zone of Art 52', to quote Gameaccount; and technical effect/contribution required to have inventive step under Art 56.

    Their criticsm of File search method is particularly poor. They quote the judgement at Reasons 4. That is assessing technical character, i.e. does the claim have enough to escape the exclusion zone.

    In assessing inventive step, the Board then says:

    'To assess the inventive step it must first be considered in how far the features of the claim, and in particular distinguishing feature b) (cf point 6.1), contribute to the solution of a technical problem'.

    The Court's failure to note this in the Board's decision is simply not understandable. They appear to be either ignorant or deliberately misleading.

    IMHO, the reason they fail to correctly state the approach provided by the Board, and invent 'discrepancies' between Board decisions, is because they know the EPO law is settled.

    But if they followed it, it would inevitably mean having to adopt problem solution, and they don't eant to give up Windsurfer/Pozzoli.

    Their disingenious approach to the Board's decisions can be (sharply) contrasted with the whitewash applied to the many recent high court decisions.

    Finally, on a different note, there's dicta, obiter and, er, hearsay. Seriously, the references to comments (allegedly) made by Judge Mellulis are weak in the extreme.

    If that's the only European 'case law' (ha ha) they can find in their support...

    As for the reference to Patently-O, who cares? A Prof's view on how he thinks US case law might change. What's the relevance of that then? They don't even have an Art 52!

  12. As far as I understand that decision, the most important point for the court was the "strong desirability" of European harmonisation with the "need for a two-way dialoge". Therefore the court made a step in the direction of a "compromise" (all in par. 61.)

    Sadly they based their reasoning on wrong facts about the "technical" effect (par. 56) and on the wrong belief that computer program instructions for calling methods or subroutines are anything different than a mathematical method (par. 53).

    In my view the court has sacrificed the rights of program developers codified in TRIPS 9-13, which are legitimate interests of third parties according to TRIPS Art 30, for the desirable European harmonization. The (political) question is if this is the right direction to promote technological innovation in view of TRIPS Art 7, as it would weaken the rights of programmers, provided by TRIPS Art 9-13.

  13. Thank you, that poster above, who mentioned PSA. UK-IPO, please try to get to the HL. Please bring on Lord Hoffmann, to drop England (at last) down onto the settled simple tramlines of by now 30 years of rigorous Problem and Solution jurisprudence. Then England gets to be European Poster Boy, English litigators get to be "Good Europeans" and Germany's arrogant, even obscene, stand out on Art 54 novelty will then get exposed for what it is. Don't forget the 5 year holding park in Germany, for validity decisions of the first instance (Munich Federal Court) before they get heard at the second instance in Karlsruhe. Readers, have you ever heard of the notorious "Confirmation bias". What people say is "Evidence, you say. I am willing to look at any that confirms the opinion I have already reached. Otherwise not". It is a black day when the C of A displays such bias, against PSA. Come on England, let's get moving here. Show that even if Germany has the confirmation bias bug, you don't. Attention: business opportunity. Wake up.

  14. Let's get one more thing clear. The "objective technical problem" that the C of A declares to be "artificial" in para 16, is, in reality, the only problem that ISN'T artificial. We look at patentability through the prism of the "skilled addressee" (SA), whom Jacob LJ rightly declares to be artificial, and who has a relationship with the prior art universe shared by nobody in real life. But no court says we are to ditch the SA and replace with the subjective views of the named inventor. To that artificial construct, the SA, the problem notionally addressed in the EPO's problem and solution approach is the only "real" one. And BTW, the so-called "problem invention", where perceiving the problem is the invention, has been well-settled in PSA since the early 1980's. Artificial, my foot.

  15. Anon. 2008.10.10.08:53Z, for your education, the speech of K.-J. Melullis is to be found at:

    Happy reading,


  16. Cheers EdT, I appreciate that.

    I'd read that in the past, but for some reason didn't connect it with the cite in the Symbian decision - in my defence, it is not very clearly referenced by the Court.

    I think the Court has played a little fast and loose with Judge Mellulis' words too. If one proceeds a few lines beyond where the Court quoted him, he says:

    "only those elements which
    serve to solve the technical problem by technical means will
    be included in the assessment of novelty and inventive step;
    particular developments outside the technical field may only
    be considered to the extent that they influence the technical
    development. To take a simple example: a novel program for
    commercial accounting with a computer is not inherently
    patentable merely because the business idea it embodies is
    novel and not readily found elsewhere: the yardstick of patentability can only be the underlying technical implementation of
    that idea, in so far as the implementation solves a technical
    problem arising from the idea, and does so by technical

    That reasoning sounds pretty similar to Duns, if you ask me.

  17. Anonymous@8.53 am, do you really think that the Court of Appeal deliberately misleads? That does no credit to your judgement. 'Ignorance' is nearer the mark, if still a bit strong.

    The real point is that 'problem and solution' is foreign to the British Courts' way of thinking: and the advocates who appear before them have not dealt with it as they might have done. The British Courts clearly want to line up with Europe on patenting computer-assisted inventions: but it won't happen until they appreciate that CAI's are being judged in the EPO primarily by whether they are a technical solution to a technical problem, not whether they fall foul of Art 52(2).

  18. PSA is like riding a bike. If you're watching it, you think it's easy and anybody can do it. When asked what it is, you confidently announce that you know how to do it so, there's no need to learn it.

    If you're a technical assistant in a firm of patent attorneys, or an EPO person, you have to learn it. And (like learning to ride a bike) you find (to begin with) that it isn't easy at all.

    BUT, after you've learned it, it becomes totally natural and, importantly, exhilarating. You realise how compatible it is, with the "real" world of researchers and developers. You forget what it was like, not to be able to ride that bike.

    The EPO Guidelines are written by bike-riders, for bike-riders. The English litigators suppose they know how to ride a bike, so there's no need to bother to try to master the skill. But that doesn't stop them telling everybody else: Not to worry. We do know how to ride that bike.

    Real bike-riders find that rather sad.

  19. Perhaps it doesn't matter with a unified court, if it ever gets ratified by enough members.

    On the other hand, it also seems like, any and all controversies in the patent world, whether relating to business methods, computer-implemented inventions, ever-greening, patent quality and anything else "under the sun (of patent) created by man" all points to one irreconcilable conclusion: society, as a whole is not benefiting from patents. The vast majority of patents currently in existence teach nothing...

  20. This comment has been removed by a blog administrator.


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