West Law Report

Patenting dynamic links

Posted in Times Law Report by mrkooenglish on November 16, 2008

From The Times
October 28, 2008
Patenting dynamic links

Court of Appeal

Published October 28, 2008

Symbian Ltd v Comptroller-General of Patents, Designs and Trademarks

Before Lord Justice Jacob, Lord Justice Maurice Kay and Lord Neuberger of Abbotsbury

Judgment October 8, 2008

A method of accessing data in a dynamic link library in a computing device was not excluded by reason of being a computer program from registration as a patent as it imvolved a technical contribution which would enable computers to work faster and more reliably.

The Court of Appeal so stated dismissing an appeal by the Comptroller-General of Patents, Designs and Trademarks against Mr Justice Patten ([2008] EWHC 518 (Pat)) who had allowed an appeal by Symbian Ltd against the Comptroller’s refusal to register UK Patent Application No GB 0325145.1 entitled “Mapping dynamic link libraries in a computing device”, on the ground that it was a computer program and thus excluded by section 1(2) of the Patents Act 1977, giving effect to article 52 of the Convention on the Grant of European Patents (1978) (Cmnd 7090).

The program concerned dynamic link libraries, a means of storing functions common to a number of different applications, so that they were required to be stored only once.

Mr Peter Prescott, QC and Ms Charlotte May for the Comptroller-General; Mr Daniel Alexander, QC and Mr Richard Davis for Symbian.

LORD NEUBERGER, giving the judgment of the court, said that the mere fact that what was sought to be registered was a computer program was plainly not determinative. The issue had to be resolved by answering whether it revealed a technical contribution to the state of the art.

Despite the Comptroller-General’s sustained and elegant, and not unjustified, attack on the vagueness and arbitrariness of the term “technical”, that question embodied the consistent jurisprudence of the European Patent Office Board, even though the precise meaning given to the term had not been consistent, and it had been applied by the Court of Appeal: see, for example, Aerotel Ltd v Telco Holdings Ltd ([2007] Bus LR 634).

Bearing in mind the multifarious features of computer programs and the unpredictable developments which would no doubt occur in the information technology field, it would be dangerous to suggest that there was a clear rule available to determine whether or not a program was excluded by article 52(2)(c) of the European Patent Convention. Each case had to be determined on its particular facts and features.

Mr Justice Patten was right; the claimed invention did make a technical contribution and was not therefore precluded from registration by article 52(2)(c). It passed the four-step text expounded in Aerotel at paragraph 40.

Solicitors: Treasury Solicitor; Withers & Rogers LLP, Southwark.

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