Symbian Legal Appeal Throws UK Software Patents into Confusion

Following a recent legal appeal by mobile phone OS vendor (and now Nokia subsidiary), Symbian, the UK Intellectual Property Office (IPO) has just issued a practice note relating to software patentability that, according to patent attorneys, still does not bring the UK fully in line with Europe, in spite of a recent court case that suggested the IPO should change its previous practice.

The IPOÃ's latest practice note means that innovators in the computing technology field continue to face a difficult time at home protecting inventions for which the European Patent Office will grant patents, and which the UK Court of Appeal considers should be patentable.

On 8 October, a Court of Appeal judgement was given in favour of Symbian, and significantly, the judgement ruled that software which improves the operation of a computer, but does not necessarily have an external effect, is not excluded from patentability. The decision overturned the IPOÃ's previous practice of consistently rejecting applications to patent software that did not have an external technical effect.

The invention in this case reduced the likelihood that a mobile phone using the inventive software would crash, an advance no doubt welcomed by many. A patent had been granted by the European Patent Office (covering the UK) for the same invention, without quibble.

However, the UK Office had initially rejected the patent application presented to them on the basis of its own test for patentability.

Symbian successfully appealed to the High Court but, unusually, the IPO then appealed to the Court of Appeal.

Distinguished judge Lord Neuberger, who normally sits in the UKÃ's highest court, the House of Lords, exceptionally came down to the Court of Appeal for this important case. In handing down judgement he criticised the IPO approach, stating that "while the ComptrollerÃ's test appears easier to apply, it is also somewhat imprecise and arbitrary in its effect." He also stated that "it would also be dangerous to suggest that there is a clear rule available to determine whether or not a program is excluded… each case must be determined by reference to its particular facts and features."

The Chartered Institute of Patent Attorneys says that the IPO has now, a couple of months after the decision, issued a practice note which does not resolve all uncertainties. The practice note emphasises what will continue to face objection. It states, perhaps surprisingly in view of Lord NeubergerÃ's remarks, that examiners will continue in practice to apply the very test that was criticised by Lord Neuberger as, in the IPOÃ's view, it is intended to achieve the same outcome as the test applied in Symbian. There is what can best be described as a grudging concession that computer-implemented innovations are technical and can be patentable without an external effect.

This potentially presents uncertainties and costs which will be particularly unwelcome in the present climate. However, UK patent attorneys believe they can still advise on the best route through the apparent conflicts and on getting protection that will stand up in a UK court by whichever route it is obtained. In the Symbian case, patent attorneys directly instructed leading counsel, thereby avoiding solicitor costs, and the IPO was ordered to pay SymbianÃ's costs. Thus Symbian achieved what seemed a just outcome at a commercially acceptable price.

The legal action is Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066 (08 October 2008)

Posted to the site on 15th December 2008