Software Patents: Here we go again

I have not yet had a chance properly to analyse the Court of Appeal's decision in Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066 (8 Oc 2008) but it looks to me as though the Court has rowed back a bit since Macrossan [2007] RPC 7, [2006] Info TLR 215, [2007] Bus LR 634, [2007] 1 All ER 225, [2006] EWCA Civ 1371 and that English jurisprudence is now closer to that of the EPO Technical Board of Appeal.

Referring to the Board's decision in Duns Licensing Associates LP, T 0154/04 - 3.5.01 which discussed Macrossan the CA (which included Lord Neuberger as well as Lord Justice Jacob who also delivered the CA's judgment in Macrossan) observed that at para [11] "at least as a matter of broad principle, it seems to us that the approaches in the two cases and indeed in the great majority of cases in this jurisdiction and in the EPO, are, on a fair analysis, capable of reconciliation." The basis of that reconciliation appears to have been as follows:

"The third stage mandated in Aerotel, which we would have thought normally raises the crucial issue, is whether the alleged contribution is excluded by article 52(2), as limited by art 52(3). So far as we can see, there is no reason, at least in principle, why that test should not amount to the same as that identified in Duns, namely whether the contribution cannot be characterised as "technical". In effect, this can be said to involve conflating the third and fourth stages in Aerotel, a conflation which is easy to accept bearing in mind that it was said in Aerotel that the fourth stage, while required by Merrill Lynch, was unlikely to add anything to the third stage (a view supported by Kitchin J in Astron Clinica Ltd v Comptroller-General [2008] RPC 14, [49] and by Patten J in this case at [44])."

Very clever. Reasoning worthy of Occam. In Gameaccount T 1543/06.the Board said:

"[A]n invention which as a whole falls outside the exclusion zone of [art 52(2)] (i.e. is technical in character) cannot rely on excluded subject matter alone, even if it is novel and non-obvious (in the colloquial sense …), for it to be considered to meet the requirement of inventive step. … [I]t cannot have been the legislator's purpose and intent on the one hand to exclude from patent protection such subject matter, while on the other hand awarding protection to a technical implementation thereof, where the only identifiable contribution of the claimed technical implementation to the state of the art is the excluded subject-matter itself. It is noted that here the term 'contribution' encompasses both means (i.e. tangible features of the implementation) and effects resulting from implementation".

Referring to that decision the CA opined that that approach was consistent with its own decision in Aerotel/Macrossan as well as with that of the Board in Duns. Gameaccount requires one to identify "the contribution" which equates to stage 2 in Macrossan according to the CA) in order to decide whether that contribution is solely "the excluded subject-matter itself" (equating to stage 3 in Macrossan), while emphasizing that the contribution must be "technical" (effectively stage 4 in Macrossan). The only difference, so the CA said, is that 

The order in which the stages are dealt with is different, but that should affect neither the applicable principles nor the outcome in any particular case. Their lordships added that "tribunals not infrequently suggest a specific staged approach to resolve issues in patent cases" and "while such staged approaches are often very valuable, they should not necessarily be followed blindly in every case." 

No doubt true but not very helpful. What do patent offices do when setting out directions to examiners or indeed what do I say when I see one of my little chaps from one of the Yorkshire incubators who has just developed an awesome application and needs to know whether it is worth hoofing down the M1 to Sheffield to have a word with the bloke to whom I usually refer punters who want to have a go at getting such patents? He knows better than any of my other patent agent acquaintances.   He's tried often enough to get one for himself.

The most interesting and perhaps most telling part of this case was the appellation of the Macrossan guidelines as reinterpreted in the light of Duns and Gameaccount to this case (paras [48] to [61]). In case anyone has forgotten them Those guidelines were:

"(1) Properly construe the claim;

(2) Identify the actual contribution;

(3) Ask whether it falls solely within the excluded subject matter;

(4) Check whether the contribution is actually technical in nature."

Stage (1) was not in issue. The "actual contribution" was "a program which makes a computer operate on other programs faster than prior art operating programs enabled it to do by virtue of the claimed features". That did not consist solely of excluded subject matter because it had "the knock-on effect of the computer working better as a matter of practical reality." (Don't all applications do that :-)) And that was £technical" on any view of the meaning of the word. On that basis, On that basis Nick Patten had asked the right questions and the appeal against his jusgment was dismissed.