Computer Implemented Inventions

Latest guidance from the UK courts, and the EPO's response.

The debate over patentability of computer software in Europe continues. On 8 October 2008 the Court of Appeal handed down its judgment in an appeal relating to patentability of a computer software invention of Symbian Ltd. The judgment confirmed that the concept of "technical effect", as regularly applied by the European Patent Office when considering patentability of computer software inventions, is the approach to be used in the UK.

The Court of Appeal had previously considered the origin and interpretation of "technical" in the cases of Merrill Lynch and Gale, and most recently in the case of Aerotel. The judgment in Symbian confirmed that these cases are still good authority on the issue of "technical". In addition, the judgment in Symbian clarified that a technical innovation, whether within or outside the computer will normally suffice to ensure patentability for a computer software invention. This is contrary to recent practice at the UK Intellectual Property Office, which had adopted a restrictive approach to the issue of patentability of computer software inventions, allowing patents only for software that produced a technical innovation outside a computer.

The questions developed in Aerotel to aid in the determination of whether a particular computer software invention is patentable were applied to the invention in this case. It was found that contrary to the UK Intellectual Property Office's original decision to refuse to grant a patent, Symbian Ltd's invention was patentable.

The judgment noted a degree of inconsistency between the European Patent Office's approach to computer software inventions and the approach applied by some national courts across Europe, and called for "a two-way dialogue between national tribunals and the European Patent Office, coupled with a degree of mutual compromise".

In a perhaps surprising response to this call, on 22 October 2008 the President of the European Patent Office has referred a number of questions on the subject of patentability of computer software to the European Patent Office's Enlarged Board of Appeal. It is likely to be some time before the Enlarged Board of Appeal responds, if they even do – they have the power to refuse to consider the President’s referral. In the meantime we expect the Symbian judgment will be very helpful in securing UK patents for computer software inventions that improve the speed and efficiency of computers themselves.

Click here The full text of the Symbian judgment.

Click here for a summary of the President of the European Patent Office's referral.