Symbian Ltd. v. Comptroller General of Patents, EWCA Civ 1066 (October 8, 2008)
URL: http://www.bailii.org/ew/cases/EWCA/Civ/2008/1066.html
Historians may note the case number, 1066, coincides with the year which marks the Norman Invasion of Britain. Programmers need only appreciate that their software inventions have now achieved a crucial toehold in the ongoing struggle to patent software in Europe.
As is well-known to those who are skilled in the computer design and engineering arts, any technology that can be implemented in software also can be implemented with the static circuitry of hardware. Software may simply reflect a different embodiment of an otherwise patentable technology which could have been implemented by hardware albeit with practical disadvantages relative to software.
Unfortunately, most world patent systems have deigned that, although a technology in hardware form may be patented, its software equivalent is not eligible to receive patent protection. The notion that software does not constitute patentable subject matter is rooted in the lay observation that inventive technologies ought to physically transform something in the real world and software in and of itself is incapable of doing anything measurable.
A U.K. High Court ruling has rejected the majority view and more closely aligned Britain with current U.S. treatment of software patentability. In Symbian Ltd. v. Comptroller General of Patents, EWCA Civ 1066, decided on October 8, the High Court held that software does comprise patentable subject matter and, further, that the court’s ruling is consistent with the U.K. Patent Act and the European Patent Convention. The decision likely will open Europe to software patenting on a broader scale than at present.
Symbian had filed a U.K. patent application for a software method of “mapping dynamic link libraries in a computing device.” The invention bifurcated linked software object methods according to the frequency by which the operating system tended to call them. As a consequence, the more frequently called methods could be processed without a resource-consuming intermediate table lookup step and this significantly improves the speed and memory usage of a system. Because the applied-for technology enables an operating system to call the object methods through an unchanged system interface and without a table lookup, the loaded software would tend to behave more reliably as well. As claimed, the technology can benefit many types of digital devices, not merely traditional computers.
The High Court examined European legislation which prohibits patent grants for software inventions. The 1977 U.K. Patent Act, Section 1(2)specifically bars “a program for a computer … as such.” The court also noted European Patent Convention Article 52, which expressly provides the same. To the counter, in dicta, the court considered TRIPS Article 27, which states “patents shall be available for inventions … in all fields of technology.”
Based upon precedential case law, the High Court determined that the software exclusions were not such per se but actually contemplate the absence of observable physical transformation. Assuming a patent applicant is able to demonstrate that a purported software invention achieves a “technical effect,” a patent can be granted for software under the pertinent legislation since it does produce a tangible result – in this case the computing device itself operates with measurably improved performance.
Though obviously not as sweeping in scope as State Street Bank & Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998), the U.K. court decision in Symbian should greatly enhance future opportunities for business to patent software in the U.K. and other EPC countries.