This case concerns the Comptroller=s appeal against the High Court decision allowing Symbian=s UK patent application, following its refusal by the UKIPO.

The application relates to a computer program which embodies a method of accessing data in a DLL, and thereby improves the operation of the computer.

The Court considered the decision in Aerotel, in which it was suggested that the English courts might be adopting a different approach from that taken by the EPO.  Here, the Court supported the approach in Aerotel, but emphasised that this did not represent a departure from the law established in Merrill Lynch, Gale and Fujitsu, and noted that Aerotel does not identify the ambit of the computer program exclusion.  The Court went on to characterize the EPO approach as requiring a contribution to be Atechnical@ in order to be patentable.  This, the Court considered to be capable of reconciliation with the approach in Aerotel.

The decision required the ambit of the computer program exclusion to be determined. The Comptroller argued that a program which contains a method for carrying out a new procedure, or representing a better way of carrying out an existing procedure, would be patentable in principle, unless the effect of the procedure is solely within the computer itself.  Symbian argued that the exclusion only applies to programs which do not provide a technical solution to a technical problem.  Thus, a program which improves the performance of a computer should not be excluded any more than a program which improves the performance of any other machine.  However, a program which embodies a theory would be excluded because it would not make a technical contribution, whilst a program embodying a mathematical method or a method of doing business would be excluded because its only contribution would be excluded matter.

The issue of patentability in the present case had to be resolved by determining whether the invention reveals a Atechnical contribution@.  It was considered that the most reliable guidance on this point was to be found in Vicom, the two IBM cases, Merrill Lynch and Gale, which involve a consistent analysis which should therefore be followed unless there is a very strong reason not to do so.

It was concluded that the claimed invention does make a technical contribution.

$     The program does not embody items excluded by the other categories in A52.

$     Not only will a computer containing the instructions be a better computer, but the instructions solve a technical problem lying with the computer itself.

$     The effect of the invention is not merely within the computer - the beneficial consequences will feed into other devices such as cameras and mobile phones.

$     That the improvement is to software rather than hardware can not make a difference.

$     As a matter of practical reality, there is more than just a Abetter program@, there is a faster and more reliable computer.

$     The contribution should be treated as technical, given that the contribution in each of the IBM cases was held to be technical.

$     Upholding the refusal of the application would involve the English courts departing from all decisions of the Board.