Recently I was asked to comment on the decision Symbian Ltd. vs Comptroller General of Patents by the UK Court of Appeal from last year. Seemingly the request was made assuming that Symbian Foundation was party in the dispute. It was not. The applicant for the patent was Symbian Software Limited, the company that was acquired by Nokia.

While this transaction between Nokia and Symbian Software Limited triggered our very existence, we are a different animal. Our name, to start with, is Symbian Foundation Limited and we are a non-profit organization, steered by a Board of our members. And we do not own the invention that was the reason for the dispute.

But when reading the decision I found a pearl there, which might be worth sharing. The part of the decision that caught my eye I was:

On behalf of the Comptroller it is also said that it would be difficult for a third party to search for prior art programs. This is for two reasons. Firstly there is simply not a body of suitable literature about computer programs which can be searched. Secondly much of the prior art will consist of actual computer programs and the outsider will generally find it impossible to understand how these work without the source code – which is normally kept confidential. (The second of these points also means that it may often be impossible for a patentee to discover infringement). We accept that point, but its force is considerably blunted by the fact that it is common ground that a computer program can, in some circumstances, be patentable. Further, a filed patent must, as in this case, contain a comprehensible and implementable description of the invention concerned and one of the purposes of the patent system is to encourage publication of inventions.

So, what was happening here and expressed in dolphinian language? As background: this was part of an argument between the court and the UKIP (lead by the Comptroller General of Patents, this is the UK patent authority that grants or denies patents). Let us decipher this by imagining the following (of course entirely fictional) conversation (at, of course, an entirely fictional court on an entirely fictional planet):

Comptroller: “Your Honor, isn’t it true that something patentable should be new and not invented before?”

Judge: “Yes, well observed. That is what the law requires.”

Comptroller: “And isn’t it for this reason, that we search for earlier inventions as part of the patent application process?”

Judge: “Are you asking me rhetorical questions about your own procedures? Yes, of course that is the purpose of the search and please get to your point now.”

Comptroller: “My apologies for testing your patience, Your Honor, but am I mistaken in that we should prevent old stuff to be patented in a new patent, because that new patent would be invalid. And until it would be formally invalidated it would confuse everyone into thinking it was actually protecting a real invention?”

Judge: “You are mistaken if you believe me to be an information bureau of yours, but your statement, while sloppily formulated, is approximately correct.”

(Judge leans to the side and murmurs to his clerk: “I wonder about the hiring practices at the patent office nowadays”.)

Comptroller: “The problem, Your Honor, is that we cannot do a proper search for software.”

(Judge silently to his clerk: “I am sure he can’t. Can someone carry this guy out now, please?”)

Judge (with slight edge to the voice): “Comptroller, this has not prevented us from granting patents on software so far, has it?”

Comptroller: “Unfortunately yes – or no, Your Honor. But wouldn’t it be about time we stop issuing patents that have a good chance of being invalid?”
(Judge to his clerk: “This guy is unbearable. Go and get me something to drink to my chambers, I will end this now.”)

Judge: “Comptroller, I will adjourn this session to give you proper time to read your law books. There, with time, you might find that one of the purposes of the patent system is to make innovations public, so that everyone can learn from them. Old, new – who cares? The more of them you have in your database the more you can search them. Shouldn’t that make you happy?” (Judge hammers on his desk) “Case adjourned”.

Comptroller: “But Your Honor, we are granting monopolies…”

Judge (loudly): “ADJOURNED!!”

The issue at hand, namely that doing proper search for prior art regarding software is almost impossible, is not new and has been used as an argument against patent protection for software. But it has rarely occurred (at least as far as I am aware) that a patent office the caliber of the UKIP has used this as an argument in court. One should not forget that, although the Comptroller General made the argument that searching might be difficult for “third parties”, the same is true for the patent office itself – for the very reasons explained by the Comptroller General.

This fuels worries about the quality of patents currently granted. While the court did not help in the Symbian decision, the admission of the problem by the patent office is already an encouraging step. So let us cherish the moment and – stay tuned.

/Dietmar