| PATENT — Exclusion from patentability — Computer program — Technical invention for better accessing dynamic link libraries used as means of storing functions common to different computer programs — Whether invention excluded from patentability as being computer program as such — Patents Act 1977 (c 37), s 1(2)(c)
Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066; [2008] WLR (D) 310
CA: Jacob, Maurice Kay LJJ and Lord Neuberger of Abbotsbury: 8 October 2008
A patent application concerning a method of accessing data in a dynamic link library in a computing device was not excluded from registration under s 1(2)(c) of the Patents Act 1977 on the ground that it related to a computer program “as such”, since it involved a technical contribution to the prior art which would enable computers and related devices to work faster and more reliably.
The Court of Appeal so held when dismissing an appeal by the defendant, the Comptroller General of Patents, against the decision of Patten J dated 18 March 2006 allowing an appeal by the applicant, Symbian Ltd, against the Comptroller’s refusal of its patent application (UK Patent Application No GB 0325145.1) entitled “Mapping dynamic link libraries in a computing device”. Dynamic link libraries (DLLs) were used as a means of storing functions common to a number of different applications, so that they were only required to be stored once. The particular function was selected and linked to the application program when it was loaded and run. The program concerned a method of overcoming certain problems associated with the prior art in accessing DLLs and would enable a range of devices, including computers, cameras and mobile phones, to work faster and more reliably.
The 1977 Act declared by s 1(2) that “the following ... are not inventions for the purposes of this Act, that is to say, anything which consists of ... (c) ... a program for a computer ... but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.”
LORD NEUBERGER OF ABBOTSBURY, giving the judgment of the court, said s 1(2) of the 1977 Act was intended to have the same effect as art 52 of the Convention on the Grant of European Patents (1978) (Cmnd 7090) (the European Patent Convention). The reach of the exclusion of “programs for computers” from patentable inventions was an inherently difficult topic, on which there was apparently inconsistent authority both domestically and in the European Patent Office (“EPO”). The mere fact that what was sought to be registered was a computer program was plainly not determinative. Given that the application sought to register a computer program, the issue had to be resolved by answering the question whether it revealed a “technical” contribution to the state of the art. Despite the Comptroller’s sustained and elegant, and not unjustified, attack on the vagueness and arbitrariness of the term “technical”, that question embodied the consistent jurisprudence of the EPO Board (even though the precise meaning given to the term had not been consistent), and it had been applied by the Court of Appeal in Merrill Lynch's Application [1989] RPC 561, Gale's Application [1991] RPC 305, Fujitsu Ltd's Application [1997] RPC 608 and Aerotel Ltd v Telco Holdings Ltd (Practice Note) [2007] Bus LR 634. In deciding whether the application revealed a “technical” contribution, the most reliable guidance was to be found in the Board’s analysis in Vicom/Computer-related invention (Decision T 208/84) [1987] 2 EPOR 74, IBM/Data processor network (Decision T 06/83) [1990] EPOR 91 and IBM/Computer related invention (Decision T 115/85) [1990] EPOR 107 and what the Court of Appeal had said in the Merrill Lynch and Gale cases. Those cases involved a consistent analysis, which should therefore be followed unless there was a very strong reason not to do so. Though they might use the same language, some of the subsequent decisions of the Board suggested a rather different analysis, but they were mutually inconsistent and were doubted in the Aerotel case (which was not in point on this central issue). Bearing in mind the multifarious features of computer programs and the unpredictable developments which would no doubt occur in the IT field, it would also be dangerous to suggest that there was a clear rule available to determine whether or not a program was excluded by art 52(2)(c) of the Convention. Each case must be determined by reference to its particular facts and features, bearing in mind the guidance given by the EPO in the Vicom and two IBM cases, and by the Court of Appeal in the Merrill Lynch and Gale cases. Based on those principles, Patten J was right and the claimed invention did make a technical contribution, and was not therefore precluded from registration by art 52(2)(c). It did not embody any of the items specifically excluded by the other categories in art 52. More positively, not only would a computer containing the instructions in question “be a better computer”, as in the Gale case, but it could also be said that the instructions would “solve a ‘technical’ problem lying with the computer itself”. Indeed, the effect of the alleged invention was not merely within the computer programmed with the relevant instructions. The beneficial consequences of those instructions would feed into the cameras and other devices and products which included computer systems. Further, the fact that the improvement might be to software programmed into the computer rather than hardware forming part of the computer could not make a difference: see the Vicom case. It was also difficult to see a logical or principled basis for holding that the contribution in the present case should not be treated as technical given the contribution in the two claimed inventions in the two IBM decisions of the Board which were held to be technical, particularly IBM/Data processor network [1990] EPOR 91, where the “technical” contribution identified by the Board was, as explained in the Aerotel case [2007] Bus LR 634, para 88: “the removal of limitations of prior art systems with the result that the data processing system was more flexible and had ‘improved communication facilities between programs and files’...” It was also appropriate to consider the conclusion already reached by reference to the guidance given in the Aerotel case [2007] Bus LR 634, para 40. Stage 1 was not in issue. Stage 2, identify the contribution. A program which made a computer operate on other programs faster than prior art operating programs enabled it to do by virtue of the claimed features. Stage 3, was that solely excluded matter? No, because it had the knock-on effect of the computer working better as a matter of practical reality. Stage 4, was it technical? Yes, on any view as to the meaning of the word "technical".
|
