Tuesday, 21 October 2008

Symbian: Software patents come to the UK?

“IP chambers 8 New Square has scored a Court of Appeal win for technology company Symbian, in a decision that could see software patents allowed in the UK for the first time.” So The Lawyer (a paper for which I will always have a soft spot, as it featured me on its first ever front page) tells us, anyway. It will, I think, be a sad day if that happens, for intellectual property law (already seeing unwarranted extensions into areas that should be free from private monopolies) and for society as a whole. But I think it is still some way off, and with luck will never arrive. And in fact, the judgment has actually reinforced what was already happening - no broadening of the availability of patents for software, indeed a rejection of the EPO's more generous approach. Software patents were available, within tight constraints, and they remain available on the same terms. Perhaps we should not look to The Lawyer for careful legal analysis.
Back in June, I went to the inaugural meeting of the Institute of Brand and Innovation Law at the University of London, where we were treated to a fascinating (though in essence private) discussion between two learned judges and one learned former judge. It struck me at the time that it was important, but reading Symbian v Comptroller-General of Patents [2008] EWCA Civ 1066 I begin to understand why.

In that case, the Court of Appeal decided not to follow recent authorities from the European Patent Office but to stay with the four-part test it had formulated in Aerotel v Macrossan. Not that it would never follow the EPO rather than domestic authorities: that is what it did in Actavis UK Ltd v Merck & Co Inc [2008] EWCA Civ 444 earlier this year, but it had reservations about following recent case law in the software patents field.

In Aerotel, the Court considered the previous authorities from both the UK and the EPO and Jacob LJ formulated this four-stage test:

  • First, properly construe the claim. Decide what the claimed monopoly is before going on to ask whether it is excluded.

  • Second, identify the actual contribution. What has the inventor added to human knowledge? Consider factors such as the problem which the invention claims to have solved, how the invention works and what are its advantages.

  • Third, ask whether the invention falls solely within the excluded subject matter. This step deals with the "as such" qualification.

  • Finally, ascertain whether the actual or alleged contribution is technical in nature. This step might not be necessary, as it could have been dealt with in step 3, but it was included to ensure consistency between Macrossan and earlier Court of Appeal judgments.

Symbian’s patent application was for a method of accessing data in a dynamic link library, or DLL, in a computer. It claimed to overcome problems frequently encountered with DLLs, which store functions that are common to a number of programs, but are vulnerable to malfunctions when new functionality is added. The invention claimed to overcome this by splitting the DLL into two parts, one of which remained fixed while the other – the “extension” part – allowed further functionality to be added. The extension functions would be accessed not through direct links to the applications that needed to use them, but via another library or interface.

The examiner objected that the claims related to a program for a computer, and that they could not be saved by amendment, and the Hearing Officer agreed. Symbian appealed, and Patten J held that the Patent Office had taken too narrow a view of the technical effect of the invention. The Comptroller-General of Patents appealed.

The judgment of the Court of Appeal was given by Lord Neuberger (taking time off from his day job in the House of Lords). Why? He had been the chairman of that meeting of the Institute of Brand and Innovation Law, where Jacob LJ had got into a long discussion about how the Court of Appeal should deal with a conflict between a decision of the Boards of Appeal of the European Patent Office and one of the House of Lords: his view was that the CA should follow the EPO because if the case went to the HL they would just reverse the conflicting judgment and follow the EPO anyway, so his solution was cheaper. According to the notes I made of the meeting, “Sir Hugh Laddie was asking him provocative questions and the chairman of the meeting, Lord Neuberger, was looking bemused. In the middle of this rather rarefied debate, the chap sitting in front of me, a solicitor from [name of well-known law firm redacted], wrote a note to the girl next to him saying he preferred the Solicitors Wine Society.”

In the present case, it was not a matter of conflicting authorities in the EPO and House of Lords, but between the EPO and the Court of Appeal. The Court of Appeal’s last word on the subject was Aerotel but the Boards of Appeal at the EPO didn’t like it. In Duns Licensing a Technical Board of Appeal held that it was inherent in the concept of an invention that the subject matter had technical character, and that a contribution could be patentable even if it were related to the categories of matter listed in Article 52(2). Moreover, the Board of Appeal took the opportunity to criticise Aerotel as “not consistent with a good-faith interpretation of the EPC.” Strong stuff.

Lord Neuberger thought that the third and fourth stages of the Aerotel test taken together gave the same result as that in Duns Licensing, namely asking whether the contribution cannot be regarded as technical: but then went on to consider a bunch of more recent EPO authorities (including Pension Benefit (T931/95), Hitachi (T258/03) and Microsoft (T424/03)), which the court concluded were inconsistent with other decisions of the Boards of Appeal and with the current approach of the English courts (found, of course, in Aerotel).

So the question for the Court of Appeal was, should it depart from its own previous decisions and follow the EPO case law, or was it bound by its own earlier decisions? In Actavis v Merck Jacob LJ said:

... we hold that there ought to be, and is, a specialist and very limited exception to the rule in Young v The Bristol Aeroplane Company [1944] KB 718 . Spelling it out it is that this court is free but not bound to depart from the ratio decidendi of its own earlier decision if it is satisfied that the EPO Boards of Appeal have formed a settled view of European Patent law which is inconsistent with that earlier decision. Generally this court will follow such a settled view.

So Jacob LJ had left the door open a couple of inches. The Court was able to say that this was not a case in which it would be appropriate to depart from its previous decision, as there was no settled view of the Boards of Appeal. "The fact that there are now three such decisions of the Board subsequent to Aerotel which appear to support the approach disapproved in Aerotel might suggest that this court should now adopt that approach. We do not agree", said Lord Neuberger, going on:

First, there is no decision of the Enlarged Board. Not only does that mean that the view of the Board is not as authoritative as it could be; it also suggests that the Board does not consider that the time has arrived for the point to be conclusively determined. Secondly, the approaches in the four decisions since Aerotel are not identical: in particular, one of them appears more consistent with the view preferred in Aerotel. Thirdly, we are concerned that, particularly if the passage quoted from File search method/Fujitsu represents the Board's view, the computer program exclusion may have lost all meaning. Fourthly, it is not as if the English courts are alone in their concern about the approach of the Board, as the observations from the German judiciary quoted in para 30, and referred to in paras [129] to [131] of Aerotel, demonstrate. Fifthly, if this court is seen to depart too readily from its previous, carefully considered, approach, it would risk throwing the law into disarray.

As far as the Symbian application was concerned, an application of the Aerotel approach revealed that the invention did make a technical contribution and was therefore not excluded. The instructions of the invention solved a technical problem lying within the computer itself, and the benefits would be available to other devices running the program.

We must still wait for a case in which Jacob LJ has the opportunity to implement his proposed cost-saving approach and decline to follow the House of Lords. Will Lord neuberger take time out again to keep an eye on him when that opportunity arises?

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