Canada: U.K. High Court Judgment Expanding Ambit Of Software Patents To Be Appealed

The recent High Court decision of Mr. Justice Patten in Symbian Ltd. v. Comptroller General of Patents overturned an earlier decision by the U.K. Intellectual Property Office (UKIPO) refusing Symbian's patent application with respect to an interface to facilitate access to updated dynamic link libraries. In its decision, the UKIPO had applied the so-called "Aerotel/Macrossan test", determining that the technical contribution of the invention lay solely within the excluded subject matter of computer programs and that the application was therefore claiming a computer program as such (which is unpatentable). In allowing the appeal, and therefore the patent, the High Court identified the unreliability of the computer itself as the technical shortcoming that was overcome by Symbian's computer program, a finding that established the program's contribution outside the field of computer programs as such, and its patentability.

The fact that the European Patent Office recently granted a patent for virtually the same application highlights the different approaches to the application of Article 52 of the European Patent Convention (EPC) on either side of the English Channel. (The Patents Act 1977 is aligned with the EPC, so a determination of patentability in the U.K. should be consistent with that in other EPC member states.) As noted by the High Court, the EPO has since replaced the very decisions on which the Aerotel/Macrossan test is based with newer decisions, and now merely examines of the form of the claims to determine whether or not a claim is to excluded subject matter as such. At the EPO, apparatus claims (using language such as ". in the programmed computer") are not considered excluded subject matter. The High Court rejected the new European approach and based its analysis on the Aerotel/Macrossan test, concluding that the UKIPO took too narrow a view of the "technical effect" of the invention in refusing the application.

The UKIPO has announced that it intends to appeal the decision on the grounds that Patten J. did not apply the Aerotel/Macrossan test "in the way intended by the Court of Appeal". Until this issue is resolved, there will continue to be confusion over the applicable test in the U.K. and the extent to which it may ultimately be converging with the EPO standard; although Patten J.'s ruling indicates that while the results should converge, the approach should not. To better understand what is at issue, it is useful to consider the conflicting interpretations of the Aerotel/Macrossan test in the rulings of the UKIPO and the High Court.

There is no dispute about the bare outlines of the test, which has four steps:

  1. properly construe the claim;
  2. identify the actual contribution;
  3. ask whether it falls solely within the excluded subject matter; and
  4. check whether the actual or alleged contribution is actually technical in nature.

The UKIPO decision omitted any consideration of step 4, on the basis that it had already found at step 3 that the contribution was purely within the realm of computer programs. This approach is arguably problematic, given that the Aerotel/Macrossan decision itself is somewhat ambiguous as to whether or not step 4 is a necessary check even if step 3 seems determinative: "The fourth step - check whether the contribution is 'technical' - may not be necessary because the third step should have covered that. It is a necessary check however if one is to follow Merrill Lynch as we must." (para. 46)

At the High Court, Patten J. does not explicitly state that step 4 was incorrectly ignored by the UKIPO. Nevertheless, he does state that the question of whether there is a relevant technical contribution must be posed at some point as the analysis proceeds through steps 2, 3 and 4. He warned that treating each of steps 2, 3 and 4 as self-contained could produce an overly restrictive view of the contribution being made. The implication of this appears to be that if the step 4 analysis reveals a technical contribution that extends beyond computer programs as such, then steps 2 and 3 should have came to the same conclusion.

The upshot of the High Court ruling is that, in determining whether or not a technical contribution lies solely in the field of computer programs, the examiner must take a broad view of whether a technical contribution is made to non-software aspects of the system. Significantly, it suggests that the operating system is so important as to go to the function of the computer itself, and that improvements to address the reliability of the operating system are really improvements in the reliability of the computer itself - and therefore patentable.

It is unclear, on the basis of the decision, which steps in the analysis the High Court believed were improperly applied by the UKIPO. Also at issue is the mixed finding of fact or law regarding the elevated status Patten J. has given to operating system software over other types of software.

If upheld on the appeal, the decision is likely to expand the ambit of patentable software and make Art. 52 objections to software patents somewhat easier to overcome in the U.K. It is important to note, however, that Patten J.'s ruling does not call for overturning the U.K.'s existing structural approach to the Art. 52 analysis in favour of the apparatus claims approach adopted at the EPO.

In the Canadian context, the decision highlights that there is a high degree of flux in this area in multiple jurisdictions, with a lack of clarity at where protection will be granted, and even if granted, where it will be upheld or enforced. Since most courts will face the problem for the first time, they can be expected to address the issue tabula rasa.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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