Another judge rules for program patentability

Arguing that 'it is simply inaccurate to label all programs within the computer as software', a High Court judge has ruled Symbian should be granted a patent for an indexing method

Symbian has won a High Court appeal against a ruling that said it could not patent part of its mobile operating system.

The patent application — labelled GB 0325145.1 — related to Symbian's method of indexing library functions within the operating system. Although the European Patent Organisation (EPO) had granted Symbian the patent, the same application was turned down in July last year by the UK Intellectual Property Office (UKIPO) on the basis that computer programs cannot be patented because they are not physical inventions — a stance, based on the UK Patents Act 1977, that has remained consistent within UK law until recently.

Symbian then appealed against the UKIPO decision and, last Tuesday, Mr Justice Patten of the High Court granted the company's appeal. In doing so, he drew on another recent judgment, that of Mr Justice Kitchin in the case of Astron Clinica Limited v Comptroller General. In that case, Kitchin decided that "claims to computer programs are not necessarily excluded by Article 52 [of the European Patent Convention]", despite the fact that the Article in question specifically excludes "programs for computers" from patentability.

Referring to Kitchin's decision, Patten wrote in his own judgment that: "…there is no reason in principle to exclude claims to computer programs from patentability under Article 52 where the claims to a method performed by running a suitably programmed computer or to a computer program to carry out the method are allowable. The question in each case is whether the technical effect produced by the invention is sufficient to make it patentable or whether (to use the words of Article 52 (3)) it is more than a patent for the computer program as such".

Patten argued that "advances in technology mean that most improvements to a computer or computer-based device can be effected via a software program", and said Symbian's "invention" was "no exception to this".

"Without an effective operating system, a computer is nothing. It is simply inaccurate to label all programs within the computer as software and, on that basis, to regard them as of equal importance in relation to its functionality," wrote Patten in his judgment. "The end result of the invention (as claimed) is that it does… solve a technical problem lying within the computer."

"I think that the Hearing Officer took too narrow a view of the technical effect of the invention and was wrong to exclude it from patentability on the basis that it amounted to no more than a computer program," Patten added. "The appeal will therefore be allowed."

Patten's ruling drew an immediate response from UKIPO, which said it would take the case to the Court of Appeal. "The UKIPO believes that, when deciding whether this computer-implemented invention is patentable, Mr Justice Patten did not apply the so-called 'Aerotel/Macrossan test', which was established by the Court of Appeal in an earlier case, in the way intended by the Court of Appeal," the organisation said. "This, in UKIPO's view, has created uncertainty about how the Aerotel/Macrossan test should be applied for inventions of this type."

"The UKIPO will, therefore, appeal this judgment with a view to seeking clarification from the Court of Appeal. Pending a decision by the Court of Appeal, the UKIPO will be continuing 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 UKIPO will take account of the Symbian judgment in appropriate cases," UKIPO said.