Symbian Ltd v Comptroller General of Patents

JurisdictionEngland & Wales
JudgeLord Neuberger of Abbotsbury
Judgment Date08 October 2008
Neutral Citation[2008] EWCA Civ 1066
Docket NumberCase No: A3/2008/0950
CourtCourt of Appeal (Civil Division)
Date08 October 2008
Symbian Limited
Comptroller General Of Patents

[2008] EWCA Civ 1066


Lord Justice Jacob

Lord Justice Maurice Kay and

Lord Neuberger Of Abbotsbury

Case No: A3/2008/0950

CH 2007 APP 0549





The Hon Mr Justice Patten

Royal Courts of Justice

Strand, London, WC2A 2LL

Peter Prescott QC and Ms Charlotte May (instructed by The Treasury Solicitor) for the Appellant

Daniel Alexander QC and Richard Davis (instructed by Withers and Rogers LLP) for the Respondent


Hearing date: 16 July 2008


Lord Neuberger of Abbotsbury (giving the judgment of the court):


1. This is the judgment of the court to which all members have contributed. It is on an appeal brought, with the permission of the Judge, by the Comptroller General of Patents against a decision of Mr Justice Patten. He allowed an appeal by Symbian Ltd against the Comptroller's decision refusing UK Patent Application No GB 0325145.1 (“the Application”), on the ground that the alleged invention was excluded from patentability by section 1(2) of the Patents Act 1977. The issue raised on this appeal requires us to consider the reach of the exclusion of “programs for computers” from patentable inventions, a topic which is inherently difficult and on which there is apparently inconsistent authority domestically and in the European Patent Office (“EPO”).


The Application


2. The Application is entitled “Mapping dynamic link libraries in a computing device”. It concerns a method of accessing data in a dynamic link library in a computing device. The alleged invention is pithily explained by Mr Peter Prescott QC and Ms Charlotte May, in their skeleton argument on behalf of the Comptroller, in the following terms:

“Dynamic link libraries (or DLLs) were already known as a means of storing functions common to a number of different applications, so that they were only required to be stored once. The particular function is selected and linked to the application program when it is loaded and run. A function can be selected by its name (‘linking by name’) or by the numbered address at which it is located (‘linking by ordinal’). Linking by name requires a look up table, which links the name of the function to its location in the DLL. It requires more access to memory than linking by ordinal, which is achieved directly. Linking by ordinal is, therefore, the more rapid method of accessing data from a DLL.

Any additional functionality can be added to the DLL. Each new functional module or program is given a numbered address. Allocation is sequential, so that the first ‘free’ number is taken. However, difficulties can arise when parties add further functionality to the DLL (for example by an upgrade of the operating system and by an additional piece of hardware) independently of each other. Because the functions are added sequentially at the end of the ordinal number range, they are independently both given the same ordinal number and location. This can cause incompatibility in the operation of these new functions.

The purpose of the Application is to overcome this problem. It claims to achieve this by splitting the DLL into two parts. The first part is effectively ‘fixed’, and contains one or more functions at one or more locations that are linked directly to the program applications. The second part – called the extension part – enables the addition of further functions at further locations. The functions are not linked directly to the program applications, but are only accessed via a further library or interface that holds the ordinal address of the additional functions as located in the extension part of the DLL. The library or interface is a computer program. The effect of the interface is to enable the location of the functions in the extension part of the DLL to change without altering the location in the interface via which they can be selected or ‘called’.”


3. Thus, the Application claims that the alleged invention will avoid the difficulties and potential unreliability, and therefore the malfunctioning, of the prior art link-by-ordinal system, (which in principle is faster, and requires less processing power and memory, than the link-by-name system) and yet retain its advantages or most of them. As the Judge said at [7], the claimed invention has “an application to a wide range of electrical devices including any form of computer, various forms of cameras and communication devices such as mobile phones… and other products which combine communications, image recording and computer functionality within a single device.” The invention enables such devices to work faster and more reliably.


The Legislation


4. The Hearing Officer considered that the application related to “a program for a computer … as such” within the meaning of section 1(2)(c) of the 1977 Act, and that accordingly it was excluded from patentability. Sub-sections (1) and (2) of section 1 of the 1977 Act provide as follows:

“1.—(1) A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say—

(a) the invention is new;

(b) it involves an inventive step;

(c) it is capable of industrial application;

(d) the grant of a patent for it is not excluded by subsections (2) and (3) or section 4A below;

and references in this Act to a patentable invention shall be construed accordingly.

(2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of—

(a) a discovery, scientific theory or mathematical method;

(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;

(c) a scheme, rule or method for performing a mental act, playing a game, or doing business, or a program for a computer;

(d) the presentation of information;

but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.”

5. These two sub-sections are among the statutory provisions that are specifically mentioned in s.130(7) of the 1977 Act as having been “so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention…have in the territories to which [that] Convention…appl[ies]”. The relevant provision of the European Patent Convention (“EPC”) for present purposes is article 52, which provides as follows:

“(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(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;

(d) presentations of information.

(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.”

6. It is clear that, when deciding whether a computer program is patentable or not, precisely the same principles must apply under section 1(2) of the 1977 Act as apply under art 52 of the EPC. Quite apart from what is said in section 130(7) of the 1977 Act, and the “absurdity” (to quote Nicholls LJ in Gale's Application [1991] RPC 305, 323) of a different approach in the United Kingdom Intellectual Property Office (“UKIPO”) from that in the EPO, the distinction between “a program for a computer” as against “programs for computers” is insignificant, and both provisions contain the “as such” limitation.

Article 52: the general approach

7. Where it is contended that a patent application should be rejected on one or more of the grounds contained in art 52(2), the correct approach has been considered in a number of cases by this court and by the EPO Technical Board of Appeal (“the Board”). In the most recent decision of this court, Aerotel Limited v Telco Limited; Macrossan's Application [2007] RPC 7, [40], Jacob LJ, giving the judgment of the court, said that, in such a case, the court should adopt a four stage approach, namely:

“(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.”

8. Nothing further need be said about the first stage. So far as the second stage is concerned, Jacob LJ explained at [43] that this raised the question: “what has the inventor really added to human knowledge”? As to the third stage, this involves asking whether the contribution, identified at the second stage, is one wholly within art 52(2) bearing in mind the qualification in art 52(3) – see [45]. At [46], Jacob LJ explained that the fourth stage would normally be unnecessary, but that it was effectively mandated by the earlier decision of this court in Merrill Lynch's Application [1989] RPC 561. This underscores an important point, namely that the decision in Aerotel did not purport to represent a new departure in domestic law, not least because this court was, at least prima facie, bound, and indeed it regarded itself as bound, by the approach adopted in three...

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