Joff Wild

Companies looking to obtain and enforce software patents in the UK received a boost today when the Court of Appeal ruled against the UK IP Office in its appeal against a decision of the High Court in the Symbian case. The High Court had overturned a UKIPO decision not to grant a patent to Symbian for an accelerator relating to iPods, mobile phones and computers.

Although the UK is a member of the European Patent Organisation, it has proved harder to get protection for software-related technology here than in other parts of Europe. This has not only applied in terms of UKIPO applications, but also in the enforcement of patents granted by the EPO through the UK courts. It seems that many patent practitioners in the UK believe that not only will the UKIPO now have to liberalise its patenting policy, but that also the courts here will be less likely to overturn EPO-granted patents in the future. The following is a press release on the decision that I have just received from leading patent and trademark attorney firm Marks & Clerk:

Today’s Court of Appeal decision on the Symbian case has affirmed that the UK and European approaches to software patentability are fundamentally compatible. This upholds the High Court decision which had overturned the rejection by the UK-IPO of an application to patent “Mapping dynamic link libraries in a computing device”.

Following the Aerotel case the UK-IPO had devised a four step approach to software patentability, the last of which asked whether the contribution was ‘technical’ in nature – technical contribution being central to the EPO’s approach. However the UK-IPO’s interpretation of this four step approach diverged from the European approach in the case of an application filed by Symbian, in that the ‘technical test’ was considered optional, with no need to apply it in the event that the application failed the third step. Today’s judgment rejected this interpretation, stating that the two approaches are ‘capable of reconciliation’ involving ‘conflating the third and fourth steps’.

Dr. John Collins, Partner at Marks & Clerk, one of Europe’s leading firms of Patent and Trade Mark Attorneys, commented: “This is an important step on the road to harmonising UK and Europe’s approach to software patentability. Software developers in the UK who had previously faced a much narrower interpretation of what could be patented should welcome this news. The ‘technical test’ has been placed back at the heart of the UK approach, which is particularly crucial in the case of ‘pure software’ – implementing technical solutions to technical problems that don’t extend beyond the computer itself. While the details of the UK and EPO approaches still differ, the interpretation outlined in today’s judgment should lead to the same outcome in the majority of cases.”

The decision also suggested that further clarification of the EPO’s approach is necessary for the UK-IPO to fall in line, claiming that the EPO’s previous decisions have themselves been inconsistent. Lord Justice Jacob refused leave to appeal on the basis that an appeal to the House of Lords would be inappropriate without first consulting the EPO’s Enlarged Board of Appeal.

Dr John Collins concluded: “The claim that previous EPO decisions have been inconsistent is not accepted by the EPO. The EPO’s approach has evolved over time and in the opinion of the EPO its approach is now clear cut. The previous request for the President of the EPO to refer this matter to the Enlarged Board of Appeal following the Aerotel case was rejected. In the unlikely event that the Enlarged Board become involved it would lead to a deferral of any borderline applications while a decision was made. This is a process that could take many years, creating a backlog that could be disastrous for European business.”