The ruling overturns an initial decision that the invention is
unpatentable because it consists of nothing more than a computer
program.
The Patents Act says that something cannot be patented if it
consists only of a program for a computer. The IPO has historically
been stricter in denying software patents than European patent
authorities, despite UK law being based on the European Patent
Convention, on which the European Patent Office bases its
decisions. The US allows software to be patented.
The patent for programming mobile phones was first registered by
Intuwave, then passed to Symbian and finally to Nokia, which
appealed an initial IPO decision to refuse it.
The invention allowed a computer to control a mobile phone while
software was being developed, which Nokia said was an improvement
over using the mobile phone's controls to develop software and
using a computer emulator of the phone, which were the methods used
until now for development.
IPO hearing officer Andrew Bartlett, deputy director of the IPO,
upheld the appeal and allowed the patent to be registered because
the invention made a 'technical contribution' when compared with
previous inventions in the field, or 'prior art'.
The hearing officer judged the patent application in the light
of two recent landmark court rulings on software patentability. The
Court of Appeal ruling in a case involving Aerotel and Macrossan
set out a four-step test to judge whether something fell outside
the scope of patentability.
Then it also applied the rule laid out in a subsequent Court of
Appeal ruling concerning mobile phone software company Symbian. In
that ruling Lord Neuberger overturned the IPO's refusal of a patent
because the technology was found to have made a technical
contribution.
"Moving on to steps 3 and 4 [of the four-step Aerotel/Macrossan
test], what I must now do is decide whether that contribution falls
solely in excluded matter," said Bartlett in his ruling. "In doing
that I will specifically address the question “is the contribution
technical?” as [the] Symbian [ruling] dictates I must."
In the Symbian case Lord Neuberger found that the invention was
not just a better computer program but turned the machine it ran on
into "a better and faster computer". It therefore made a technical
contribution.
"In my view, the particular way that the present invention
overcomes the technical problems inherent in the prior art provides
a technical contribution," ruled Bartlett. "Thus whilst the
invention may be implemented in software it provides a technical
contribution such that it is more than a program for a computer as
such."
"I have found that the invention defined in the claims of the
present invention makes a technical contribution and is not
excluded [from being patented]," said Bartlett.
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