UK INTELLECTUAL
PROPERTY OFFICE News Release issued by The Government News Network
on 18 March 2008
A judgment in the
case of Symbian's Patent Application has been issued today by
the High Court overturning an earlier decision of the UK
Intellectual Property Office (UK-IPO) to refuse the application
because it relates to nothing more than a computer program.
Symbian's patent application describes how in a computer a
library of functions (DLL), which can be called on by multiple
application programs running on the computer, is accessed. In
particular, it provides a way of indexing these library functions
to ensure the computer will continue to operate reliably after
changes are made to the library.
In his judgment Mr Justice Patten observes that the UK-IPO's
decision in this case illustrates the divide which exists between
the UK-IPO and the European Patent Office (EPO) about how the
patentability of inventions involving computer programs is
assessed. This is because although the UK-IPO refused
Symbian's patent application, the EPO has granted Symbian a
patent for its invention.
The UK-IPO believes that when deciding whether this computer
implemented invention is patentable, Mr Justice Patten did not
apply the so-called "Aerotel/Macrossan test", which was
established by the Court of Appeal in an earlier case, in the way
intended by the Court of Appeal. This in UK-IPO's view has
created uncertainty about how the Aerotel/Macrossan test should be
applied for inventions of this type.
The UK-IPO will therefore appeal this judgment with a view to
seeking clarification from the Court of Appeal. Pending a decision
by the Court of Appeal, the UK-IPO will be continuing to follow
the practice, set out in its Practice Notices issued in November
2006 and February 2008, which are founded on the established
Aerotel /Macrossan test. When applying this test, the UK-IPO will
take account of the Symbian judgment in appropriate cases.
Editor's Notes
1. What is patentable in the UK is determined by the Patents Act
1977 which is aligned with the European Patent Convention (EPC).
Among other things, this states that patents are not available for
computer programs as such. Thus, whilst it is possible to get
patents in the UK for some inventions involving computer programs,
it is not possible to get patents for innovations which are solely
computer programs, such as an improved word processing program.
2. The way that the UK-IPO decides if an invention is patentable
is different from that used by the EPO. The two approaches should
generally give the same answer.
3. As with all High Court decisions the Symbian judgment is
binding on the UK-IPO until such time as it is overtaken by the
judgment of the Court of Appeal.
4. England and Wales Court of Appeal (Civil Division) Decision http://www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html
5. The Practice Notice issued in November 2006 can be found at http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice-subjectmatter.htm
6. The Practice Notice issued in February 2008 can be found at http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice-subjectmatter-20080207.htm