[GSDI Legal Econ] UK Software Patents update

[Roger Longhorn]

FYI on software patents in the UK - although still not reflective of an 
'even playing field' across the EU.
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Roger

*Chartered Institute of Patent Attorneys*

*Press release *

*9 October 2008*

*Court of AppealÂ’s decision to uphold earlier High Court ruling on 
software-related patents ends uncertainty for inventors, say patent 
attorneys.*

UK patent attorneys have welcomed the ending of uncertainty about 
software-related patents which will result from a Court of Appeal 
decision announced yesterday (Wednesday 8 October 2008). The decision, 
on the long-running Symbian case, clarifies the scope of what type of 
software-related inventions are patentable in the UK. Lord Justice 
Jacob, Lord Justice Maurice Kay and Lord Neuberger of Abbotsbury upheld 
an earlier High Court decision overturning the UK Intellectual 
Property OfficeÂ’s (IPOÂ’s) refusal to grant Symbian a patent for its 
‘novel and inventive computer operating system’.

According to the Chartered Institute of Patent Attorneys (CIPA), the 
decision means that applications to patent software should now be 
examined by the UK-IPO and the courts in the UK on the same basis as 
they are at the European Patent Office (EPO). “The clear and 
authoritative guidance from the Court of Appeal will end a difficult 
period of uncertainty and confusion for UK inventors,” said Dr John 
Collins, a member of CIPA’s Computer Technology Committee. “The decision 
is particularly beneficial for SMEs, who can now pursue computer-related 
inventions at the UK-IPO rather than at the more expensive EPO.”

Symbian were represented at the appeal by patent attorney litigators 
Withers and Rogers instructing Richard Davis (a barrister and also a 
Chartered Patent Attorney) and Daniel Alexander QC.

The Court of AppealÂ’s decision upheld an earlier decision by the High 
Court. The UK-IPO had previously rejected SymbianÂ’s patent application 
because it related to ‘nothing more than a computer program’. The High 
Court Judge, Mr Justice Patten, had observed that the UK-IPO's decision 
in the case illustrated the divide which existed between the UK-IPO and 
the EPO about how the patentability of inventions involving computer 
programs should be assessed. This was because although the UK-IPO had 
refused SymbianÂ’s patent application, the EPO had granted Symbian a 
patent for the same invention – despite the UK-IPO and EPO operating 
according to a shared legal framework.

In the period between the High Court hearing in March 2008 and the 
Appeal Court hearing, the UK-IPO had said that it would continue to 
follow the practice, set out in its *Practice Notices 
<http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-notice.htm>* 
issued in *November 2006 
<http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice-subjectmatter.htm>* 
and* February 2008 
<http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice-subjectmatter-20080207.htm>*, 
which are founded on the established /Aerotel /Macrossan /test. When 
applying this/ /test, the UK-IPO would ‘take account of the /Symbian// 
/judgment in appropriate casesÂ’.

The Court of Appeal refused permission to take the case to the House of 
Lords.

- ends -

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