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Symbian Appeal [2008] EWCA Civ 1066

Case Summary  |  Judgment  |   8 October 2008


In July 2008, Peter Prescott QC and Charlotte May acted for the Comptroller in the Symbian patent appeal relating to computer implemented inventions.

This is the first case to reach the Court of Appeal on this aspect of the law since Aerotel and is intended to provide further guidance as to the applicability of the exceptions to patentability under Article 52 EPC. Daniel Alexander QC appeared as leading counsel for Symbian. The comptroller general of patents refused a patent application made by Symbian Ltd. relating to a computer program which accessed data within a computer in a dynamic link library. The hearing officer found in favour of the Comptroller General on the basis that the invention was excluded from patentability by virtue of relating to a program for a computer under the Patents Act 1977 S.1(2)(c) and that Article 52(2)(c) read together with Article 52(3) of the European Patent Convention excluded any program from patentability unless it had a novel effect outside the computer. Symbian appealed, the appeal was allowed by the high court and the decision was upheld by the court of appeal. The court held that the staged process that was laid out in Aerotel Ltd v Telco Holdings Ltd [2006] EWCA Civ 1371 should be applied when considering whether a patent for a computer program should be excluded from patentability even though since Aerotel there had been cases which had used a more restrictive approach when considering patentability of computer programs. The court said that there could be no clear rule as to whether or not a computer program should be excluded under Article 52(2)(c) and each had to be decided on the particular facts of the case. The computer program in this appeal was deemed to be patentable because it did make a technical contribution as it improved the computer containing the program in that it made it faster and more efficient. The fact that the improvement was to software rather than to hardware did not make a difference.