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Symbian ruling by UK Court of Appeal on 8 October 2008

The Symbian v. Comptroller General case in the United Kingdom was ruled on by the High Court in 2007 and the Court of Appeal in 2008. In the latter, a software patent was held as valid.


  • For the High Court case: [2008] EWHC 518 (Pat)
  • For the Court of Appeal case: [2008] EWCA Civ 1066

Weak case law

Unlike the 2006 Aerotel decision, the judges for this case did not look at whether patenting software ideas was good or bad for the UK. Instead, the members of this court ruled that the UK should follow the European Patent Office's Board of Appeals (a board which is accountable to no one).

The decisions

On the 30th of July 2007, the patent application was refused, Comptroller General of Patents.

On the 18th of March 2008, the High Court overturned this refusal.[1]

On the 8th of October 2008, the Court of Appeal confirmed the High Court's decision to allow patentability.[2]



22. It can also be said in favour of Symbian's case that it would be somewhat arbitrary and unfair to discriminate against people who invent programs which improve the performance of computers against those who invent programs which improve the performance of other machines. However, as against that, what goes on inside a computer can be said to be closer to a mathematical method (which is, of course, not patentable by virtue of art 52(2)(a)) than what goes on inside other machines.

See also: Is resource usage technical?

The decision discusses the difficulty in interpreting the European Patent Convention, and then establishes the policy that the court should follow its previous judgements...

36. [...] unless it is inconsistent with clear guidance from the Board, in which case we should follow the latter guidance unless satisfied that it is wrong.

43. In a number of more recent decisions, the Board appears to have adopted an analysis which appears substantially more restrictive of the art 52(2)(c) exclusion of computer programs, most notably in Pension Benefit (2000) T931/95, Hitachi/Auction method (2004) T258/03, and Microsoft/Data transfer (2006) T424/03. The effect of those decisions was summarised by Kitchin J in Astron Clinica, [39] as being that "any program on a carrier has a technical character and so escapes the prohibition in art 52". These decisions were fully discussed in [99] to [117] of Aerotel. The analysis which those three decisions adopted was effectively rejected by the Court of Appeal as being inconsistent with the previous Board decisions already discussed, and with the three earlier decisions of this court.

44. ... We should follow Aerotel in this respect, unless one of the grounds in Young, as extended by Actavis, is present. None of the three grounds identified in Young apply.

50. The fact that "the boundary line between what is and what is not a technical [contribution]" is imprecise (as Nicholls LJ said in Gale, and as was echoed by Aldous LJ in Fujitsu) may be attributable to three causes, which are not mutually exclusive. First, national tribunals and the Board may still be at an intermediate stage of working out and identifying the precise location of that line; secondly, the problem may be inherent and never wholly satisfactorily soluble; thirdly, there are competing views based on different philosophies (the "open source movement represents one extreme, that of companies such as the present applicant, the other). The uncertainty is well demonstrated by the elusiveness of the meaning of "technical", the change of attitude manifested in the more recent decisions of the Board, the contrasting outcomes in Vicom and Fujitsu, and indeed the possible reconsideration of the correct view of computer program patents in the United States (see Professor John Duffy: Death of Google's Patents? Patently-O Patent Law Blog, July 21st, 2008).

51. These considerations reinforce our view that, at least in this court at this stage, we should try to follow previous authority, we should seek to steer a relatively unadventurous and uncontroversial course, and we should be particularly concerned to minimise complexity and uncertainty. These aims are not necessarily mutually consistent, but, on this occasion, we believe they are achievable, namely by following the analysis adopted by the Board in Vicom and the two IBM Corp. cases, and of the Court of Appeal in Merrill Lynch and Gale.

That last sentence means that one of the UK's highest court is adopting the interpretation of the European Patent Office's Board of Appeals. So a board, which is answerable to no one and isn't even part of the European Union, has been able to decide law in the UK because the UK court doesn't want to disrupt settled expectations.

The decision itself

53. Based on these principles, we consider that Patten J was right and that the claimed invention does make a technical contribution, and is not therefore precluded from registration by art 52(2)(c). To start with a defensive point, the program in this case does not embody any of the items specifically excluded by the other categories in art 52; thus, it is not a method of doing business (as in Merrill Lynch), or a mathematical method (as in Gale), or a method for performing mental acts (as was probably the case in Fujitsu).

54. More positively, not only will a computer containing the instructions in question "be a better computer", as in Gale, but, unlike in that case, it can also be said that the instructions "solve a 'technical' problem lying with the computer itself". Indeed, the effect of the instant alleged invention is not merely within the computer programmed with the relevant instructions. The beneficial consequences of those instructions will feed into the cameras and other devices and products, which, as mentioned at [3] above, include such computer systems. Further, the fact that the improvement may be to software programmed into the computer rather than hardware forming part of the computer cannot make a difference – see Vicom; indeed the point was also made by Fox LJ in Merrill Lynch.

56. Putting it another way, a computer with this program operates better than a similar prior art computer. To say "oh but that is only because it is a better program – the computer itself is unchanged" gives no credit to the practical reality of what is achieved by the program. As a matter of such reality there is more than just a "better program", there is a faster and more reliable computer.

The court thus believes that software can make an old machine a new machine.

58. Indeed, it appears to us that upholding the conclusion of the Comptroller in this case, would involve the English courts departing from all the decisions of the Board to which we have referred. ...

60. Finally, there is the fact that the EPO Examining Division has indicated that a European patent is to be granted for the alleged invention: there is no question of an art 52(2) problem so far as the EPO is concerned.

61. It is, of course, inevitable that there will be cases where the EPO will grant patents in this field when UKIPO should not, at least so long as the view in Pension Benefit and Hitachi is applied by the Board and is not applied here. ...

Later cases citing this one

30. [...] An invention which makes a contribution to the art which is technical in nature (to echo Kitchin J’s words in Crawford) is patentable even if it is implemented entirely on a computer and even if the way it works is entirely as a result of a computer program operating on that computer. The outcome of the Symbian case proves that.

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