NIPC Law

It is some years since I last discussed software patents ( "Software Patents: January Patents Ltd.'s Application" , 16 Jan 2009, "Software Patents: New Guidance from the IPO" , 29 Dec 2008 and "Patents: Software Protection after Symbian and Bilski " 11 Nov 2008) and Judge Birss QC's decision in Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) (5 Oct 2011) and Mr. Justice Floyd's in Re Protecting Kids the World Over (PKTWO) Ltd [2011] EWHC 2720 (Pat) (26 Oct 2011) justify a return to the topic. The Statutory Exclusion Most people in intellectual property and many in information technology know that a rt 52 (2) of the European Patent Convention and s.1 (2) of the Patents Act 1977 exclude from patentability: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; ...

On 8 Dec 2008 Sean Dennehey signed a new practice note on the patenmtability of computer programs to take account of the CA's decision in Symbian . T he main changes relate to: what constitutes a technical contribution for the purpose of determing whether a program is patentable; and clarificaiton of the exclusions in s.1 of the Patents Act 1977. Technical Contribution The Intellectual Property Office had previously recognized inventions that either solve technical problems external to a computer or solve "a technical problem within the computer" as potentially patentable inventions. The sea change of Symbian  is that  "improving the operation of a computer by solving a problem arising from the way the computer was programmed - for example, a tendency to crash due to conflicting library program calls - can also be regarded as solving "a technical problem within the computer" if it leads to a more reliable computer. Thus, a program that results in a computer...

Possibly the most important intellectual property decision of this year from the point of view of British business will be the Court of Appeal's decision in Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066 (8 Oct 2008). In that judgment the CA affirmed Mr. Justice  Patten's decision to allow an appeal from the hearing officer, Mrs. Chalmers, who had upheld the examiner's objection that an application for a patent for  "a method of accessing data in a computing device and, in particular to a method of accessing data held in a dynamic link library in the computing device. The present invention also relates to a computing device controlled by the method" was excluded from patentability by s.1 (2) of the Patents Act 1977 on the ground that it related to a computer program "as such" (see Symbian Ltd . 30 July 2007).  Why Symbian is important The commercial significance of the CA's decision is that it opens the way for patents for at lea...