Symbian Ltd v Comptroller General Of Patents

Computer-program claims are not excluded merely because the invention is implemented in software. The court must assess the substance of the contribution and ask whether it produces a relevant technical effect. Under the Aerotel approach, the stages of identifying excluded subject matter and checking for technical contribution must be applied consistently with the earlier authorities. Where the only alleged exclusion is a computer program, those inquiries are effectively inseparable. An invention which solves a technical problem within the computer, including by improving the reliability of an operating-system component, may make a technical contribution even though the solution is implemented through software.

Symbian appealed against the Comptroller-General’s refusal of UK patent application GB 0325145.1 under section 1(2) of the Patents Act 1977. The invention reorganised a dynamic link library and used an interface so that executable programs could access functions reliably after additions or amendments to the library. The Hearing Officer held that the contribution was no more than a computer program and was therefore excluded.

The appeal concerned the proper application of the four-stage approach in [2007] RPC 7, the relationship between technical contribution and the computer-program exclusion, and whether changes to the European Patent Convention permitted the court to depart from binding Court of Appeal authority.

1. Appeal allowed. The Hearing Officer had taken too narrow a view of the invention’s technical effect and had wrongly excluded the claims as relating only to a computer program.
2. The four-stage approach in [2007] RPC 7 is a structured means of applying the principles in the earlier authorities. It is not a substitute for Article 52 of the European Patent Convention or those principles. Identifying the contribution, deciding whether it consists solely of excluded matter, and checking whether it is technical cannot be treated as wholly self-contained inquiries.
3. Where the only potential exclusion is a computer program, the claim is excluded only if the contribution is not technical in the relevant sense. The technical-contribution inquiry is therefore inseparable from the application of Article 52(3).
4. The invention solved a technical problem within the computer. Its reorganisation of the dynamic link library and interface improved the reliability of access to functions after system modifications. The fact that the solution operated through software, and addressed a software problem affecting the computer’s functionality, did not prevent it from producing a relevant technical effect.
5. The addition of the words concerning inventions “in all fields of technology” to Article 52(1) of the EPC 2000 did not amend the Patents Act 1977 and did not justify disregarding binding Court of Appeal decisions.

• High Court (Patents Court): The appeal from the Comptroller-General’s decision dated 30 July 2007 was allowed.
• Comptroller-General of Patents: The patent application was refused under section 1(2) of the Patents Act 1977 on the ground that the claims related to a computer program.