In its ruling on October 8, 2008, the British Court of Appeal confirmed the decision of the High Court that the invention claimed in GB application 0325145.1 by Symbian Ltd is patentable under UK law.
The claimed invention relates to a new and improved way to access DLL (dynamic link library) files in an operating system, potentially making a computer function faster. The court decided that such a solution could not be considered a computer program “as such”, and was thus not excluded by Article 1(2) of the British patent law (corresponding to Article 52(2) EPC). It also noted that a corresponding patent has been granted by the EPO.
In its decision the Court made a significant effort to deal with the tendency of recent decisions by UK Courts to diverge from the practice of the EPO. The Court stated its view that, at least as a matter of broad principle, the British Appeal Court precedence (Merrill Lynch, 1989, Gale, 1991, and Macrossan, 2007) should be reconcilable with the recent Technical Board of Appeal decisions (T154/04 and T1543/06).
To be more specific, the Court noted that the test stipulated by UK courts for determining whether claimed subject matter is excluded from patentability, is whether the “contribution” (i.e. novel features) relates to excluded matter as such. It further argued that this test corresponds to the test applied by the TBA, for example in T154/04, to determine whether or not a contribution is technical.
However, the Court explicitly disagreed with the approach followed in some EPO decisions (e.g. T1188/04 and T1351/04). The Court motivated its decision not to follow these precedents, by arguing that such an approach indicates that “the computer program exclusion may have lost all meaning”. Further, these decisions are not in line with earlier EPO jurisprudence, at least not until they have been confirmed by the Enlarged Board of Appeals.
The Court finally noted that, as long as the principles of Pension Benefit (T931/95) and Hitachi (T258/03) are applied by the EPO, there will be a discrepancy between the practice of the UKIPO and the EPO, and called for a “two-way dialogue between the national tribunals and the EPO”. As long as the discrepancy remains, the Court believes that efforts need to be made to minimise the effect on practical outcome as far as possible. In the present case, the Court has done just that, and decided that the claimed invention is patentable in the UK, just as it was found patentable by the EPO.
While the outcome of this case, at least for the time being, seems to harmonize UK standards for patentability with those of the EPO, it should be noted that the “discrepancy” may be greater than the Court admits. According to present EPO jurisprudence (including T154/04 and T1543/06 mentioned above) Article 52(2) is only used to determine what features may contribute to inventive step. Or, to put it differently, the EPO will not reject any claim under Article 52(2), as long as it contains the slightest of technical details. The UK Court of Appeal, on the other hand, is prepared to reject an admittedly technical invention as excluded subject matter, if its “contribution” lies within Article 52(2).
Fabian Edlund, European Patent Attorney
