Symbian Ltd v Comptroller General of Patents

A computer program is not excluded from patentability merely because its effects occur within a computer. The decisive question is whether the claimed contribution is technical when the invention is considered as a practical reality.

A program may make a technical contribution where it solves a technical problem within the computer and produces a faster or more reliable computer. The improvement need not be implemented in hardware or produce a novel effect outside the computer. The four-stage approach in Aerotel remains applicable, but its exclusion and technical-character stages normally address the same central issue. No universal bright-line rule defines technical contribution. Each application must be assessed on its particular facts and features.

Symbian Ltd applied for a patent for a method of mapping dynamic link libraries. The claimed program separated fixed functions from later extensions, thereby reducing conflicts between ordinal addresses and enabling computing devices to operate faster and more reliably.

The Comptroller refused the application under section 1(2)(c) of the Patents Act 1977, holding that it related to a computer program as such. Patten J allowed Symbian’s appeal. With the judge’s permission, the Comptroller appealed to the Court of Appeal.

The central issue was whether a program which improves the internal operation of a computer makes a technical contribution and therefore falls outside the exclusion for computer programs as such.

1. Appeal dismissed. Patten J was right to hold that the claimed invention made a technical contribution and was not excluded from patentability by article 52(2)(c) of the European Patent Convention or section 1(2)(c) of the Patents Act 1977.

2. The principles governing the domestic exclusion must be the same as those governing article 52. The four-stage approach in Aerotel requires the tribunal to construe the claim, identify its actual contribution, decide whether that contribution consists solely of excluded subject matter, and check whether it is technical. The third and fourth stages will ordinarily address the same decisive question.

3. The fact that the claim concerns a computer program is not determinative. The court must ask whether the program reveals a technical contribution to the state of the art. The guidance in Vicom, the two IBM decisions, Merrill Lynch and Gale represented the most consistent line of authority. The more recent EPO approach under which any program on a carrier or any method requiring a computer is technical was not adopted.

4. No precise universal rule identifies the boundary of technical contribution. In particular, patentability does not invariably require a novel effect outside the computer. Each case must be determined from its own facts and features, with the statutory exclusion remaining the controlling test.

5. The claimed program solved a technical problem within the computer. It allowed the computer to operate on other programs faster and more reliably than the prior art. As a matter of practical reality, the result was a better computer, with beneficial consequences for cameras and other devices incorporating the system. It was immaterial that the improvement was implemented in software rather than hardware.

6. Applying the Aerotel stages, the contribution was a program enabling faster operation on other programs. It was not solely excluded matter because the computer itself worked better in practice. The contribution was technical on any view of that expression.

1. Court of Appeal (Civil Division): The Comptroller’s appeal was dismissed. The court upheld Patten J’s conclusion that the claimed invention made a technical contribution and was not excluded as a computer program as such: [2008] EWCA Civ 1066.
2. High Court, Patents Court: Patten J allowed Symbian’s appeal from the Comptroller’s refusal of the patent application. No citation for that judgment is stated.
3. Comptroller General of Patents: The application was refused under section 1(2)(c) of the Patents Act 1977 as relating to a computer program as such.