The English High Court, acting as appellate court for decisions from the UK Intellectual Property Office (UKIPO), handed down an important and timely decision clarifying the much-debated test for patentability of computer-implemented inventions and particularly the analysis of when a software invention provides a technical contribution. Symbian Ltd v. Comptroller General of Patents [2008] EWHC 518 (Pat), (English High Court, March 18, 2008).
In Europe software innovations have been excluded from patentability to the extent the claims are found to relate to program code per se. Software inventions have been found to be patentable only when the claims define a "relevant technical contribution," which is something more than merely loading the program onto the computer to run it. The UKIPO has adopted a rather strict approach to software inventions, issuing a raft of decisions refusing claims defining inventions in software on the basis they lack the required technical contribution. Late in 2006, in the case of Aerotel v. Macrossan, the English Court of Appeal endorsed a four-step analysis to determine whether software-related subject matter was claimed as patentable subject matter: properly construe the claim; identify the contribution of the invention; ask whether the invention falls solely with in one of the types of excluded subject matter; and insure the contribution is technical in nature. A software claim was only patentable (in terms of subject matter) if it passed all four steps of the analysis.
The claims under consideration in this case were to a method of accessing data in a computer. Specifically, the inventors had made the operating system of a cellular telephone more stable by providing a new software interface with more reliable mapping between the operating system files, which need to be updated from time to time, and the applications that call them. The UKIPO Hearing Officer agreed with the examiner's refusal of the application on the ground that the only "contribution" made by the claimed invention was to insert yet more code into an already existing computer program; this was excluded from patentable subject matter because it did not meet the technical contribution requirement. The applicant appealed.
On appeal, the judge indicated that the four-part analysis was not intended to be a departure from the main principles set out in earlier cases from the Court of Appeal and commented that there were real dangers in placing too much emphasis on the second step of the analysis. In this case, the Court found that UKIPO had defined the contribution of the invention too narrowly (i.e., as nothing more than inserting one piece of software into another), and clarified that the contribution of an invention should include consideration of the how the invention actually works to solve a problem or provide an advantage. In this case, the Court found that such consideration requires the improvement in reliability of the operating system to be taken into account as relevant to the technical contribution and allowed the appeal.
Practice Note: The author understands that the UKIPO intend to appeal this High Court Decision. As it now stands, this case brings the UK practice a step closer to the current EPO practice; in that providing program code leading to performance improvements within a computer is acknowledged as the type of technical contribution that supports patentability. However, the judge warned against assuming all computer-implemented inventions made such contributions, particularly if software merely concerns the processing of data and does not fix some technical shortcoming in the computer. This decision follows on the heels of another recent case (Astron Clinica; see IP Update, Vol. 11, No .2) that confirmed patent claim formats directed to computer code are allowable in the UK, whether recorded on a carrier or not. In any event, this decision allows a patent claim concerning part of the operating system of a computer and provides a useful lesson in how to apply the current test for patentability of commuter implemented inventions.
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