The divergence between the English courts and the European Patent Office (“EPO”) as to the circumstances in which software is patentable has been a source of endless confusion for companies operating in the United Kingdom and their advisers. The EPO’s evolving case law is possible because the Technical Boards of Appeal at the EPO are not bound by their own previous reasoning, but at the same time national courts are bound neither by their decisions nor by those of the Enlarged Board of Appeal (the EPO’s Supreme Court). In contrast, the English courts at first instance are bound by decisions of the Court of Appeal or House of Lords – and naturally those higher courts consider any given legal issue only relatively rarely. Thus, the High Court may remain bound by a decision of a higher court given at a time when the EPO’s thinking was a generation or two less evolved. Keeping consistency between the two has proved impossible; but the inevitable result is inconsistent decisions in respect of the patentability of identical subject matter – and the UK Intellectual Property Office (“UKIPO”), responsible for examining UK patent applications, finds itself squarely in the cross-fire.
The EPO’s practice has liberalised over the last two decades, from a stance which required demonstration of some technical effect being wrought by an invention which went beyond the normal physical interaction between software and computer (Vicom Systems Inc’s Application  OJ EPO 14) to a current stance which appears to find the involvement in the execution of the invention of any hardware sufficient (Pension Benefit System Partnership (2000) T931/9 and subsequent decisions). This gave the UKIPO, which had been applying the Vicom approach, some cause for concern. Fortunately, in 2007 the Court of Appeal made a rare foray into the dispute and attempted to synthesise the existing English case law and evaluate it against the developing EPO practice (Aerotel/Macrossan ( RPC 7)). The outcome of that foray was a new four-step test setting out the Court of Appeal’s understanding of the law – and a recommendation to the EPO to get the Enlarged Board of Appeal to look at the vexatious question in order to set clear principles as to patentability of software once and for all. Unfortunately, the EPO firmly declined, being satisfied with the present arrangement. The UKIPO promptly changed its practice to conform with the four step test and its understanding of the Court of Appeal’s conclusion, which was that a computer program as such, on a carrier such as a CD, was not patentable in the UK.
But this would have been too simple an outcome. The majority of cases are pursued only to first instance, and four out of the six judges who hear all patent matters in the High Court have since had the opportunity to consider software cases – with arguably divergent results. The UKIPO has had to change its practice once again.
In the most recent case, Patten J has adjudicated a dispute between Symbian Ltd and the UKIPO where the patent examiner refused to grant a patent for Symbian’s improved interface for dynamic link libraries (“DLLs”), saying that the invention was excluded subject matter since it was nothing more than software controlling the operation of other software. In doing so, he has yet again reviewed the diverging reasoning applied by the various players, and reached a conclusion compatible with a very liberal interpretation of the Vicom approach – but not so liberal as to accept “any hardware” reasoning.
The invention in issue was a method of improving reliability of a computer operating executable programs in the face of changes in functionality implemented by elements of code which do not form part of the program itself but are stored for access by any program running on the computer in a DLL. There are two established means for accessing such program elements: by name, or by numerical identifier (“ordinal”). The latter is more efficient in terms of computer resource usage since the calling program goes direct to the location in the DLL where the required ordinal is found, but the former uses an interface and lookup table which is easily updated, and so avoids errors which may occur if the elements are updated or the library expanded by incorporation of additional functionality. If this happens, the function names are unlikely to change, but the location of any given element in the library may be modified. The invention is to divide the DLL into two parts, one of which comprises functions with ordinal access whose locations cannot be changed, the other of functions which may be subject to third party modification or relocation. These are then accessed by a mapping interface. The result is increased efficiency without the increased risk of errors.
The judge considered the issue of patentable subject matter on the hypothesis that it was both new and inventive. He then reviewed the UKIPO’s application of the Aerotel/Macrossan four step test, which consists of:
construing the claim to identify the alleged invention;
identifying the contribution to the relevant technical field which is said to be made by the alleged invention;
considering whether the contribution falls solely within the excluded categories of subject matter; and
checking that the contribution is actually technical in nature.
The UKIPO explained that their approach was to focus on the answering of the second question, since in their view the answers to the remaining questions would fall out naturally once this issue had been resolved. However, the judge was not satisfied that this is a safe assumption to make. In particular, a narrow focus on identifying a particular contribution risks failing to ask the question as to whether the invention makes a relevant, technical contribution to the art. In Patten J’s view, it was relatively unimportant whether this question is considered at stage 2, 3 or 4 of the four step test – but it is critical that it be expressly addressed at some point in the process. This, the UKIPO appeared not to have done in the case in question. Rather, their conclusion had been reached essentially upon the basis that the invention was not one which changed the role of the DLL in the operation of the computer but only in the manner in which it is accessed. The question of technical contribution was nowhere explicitly considered.
In the judge’s view, a contribution such as that of the invention to make the overall operation of the computer more robust was sufficient to amount to a technical contribution so that the means of achieving it, through software, was not excluded from patentability. In reaching this conclusion, the judge considered briefly his colleague Lewison J’s analysis in a case decided only very recently, Autonomy Corp’s Application ( EWHC 146 (Pat)), where Lewison J declined to find patentable an improved computer-user interface on the basis it did not require “any new hardware or arrangement of hardware, did not fix any perceived technical shortcoming in the computer itself, and was purely concerned with the processing of data… done and done only by a computer program.” This, the judge felt, encapsulated the issue: the existing mechanisms for updating the DLL did suffer from perceived technical shortcomings, and Symbian’s invention alleviated these. Accordingly, although it consisted of a software fix for a software problem, Symbian’s invention was patentable where Autonomy’s was not.
For practitioners, then, there is some hope of consistency between Patten J and Lewison J’s approaches, and even that of Floyd J, on the one hand, and the Court of Appeal on the other. It is not the end of the story however. In January, the senior patents judge Kitchin J decided the case of Astron Clinica concerning the ultimate issue of whether software on a carrier (as opposed to operating in a computer) can be patented in the UK – and concluded that it could, arguing that the Aerotel/Macrossan decision did not address this question and certainly did not exclude it. The UKIPO has appealed, preferring its interpretation of Aerotel/Macrossan, and it is entirely possible that Kitchin J will be overturned.