For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Saturday, 15 December 2007

UK-IPO/EPO patentability rift widens

The rift between UK-IPO practice under English law, and EPO practice under the case law of the Technical (remember that word) Boards of Appeal has widened further. Decision T 1227/05, until recently only available in the original German, has been published in the EPO Official Journal (OJ EPO 11/2007). This decision marks a significant development in the EPO’s interpretation of Article 52 EPC, further narrowing the scope of ‘excluded’ subject matter, in particular relating to computer programs and mathematical methods.

The decision concerned an application by Infineon Technologies for a computer-implemented method for numerical simulation of a circuit, in which a particular type of electrical noise (termed ‘1/f noise’) was simulated through the use of a mathematically-defined random number generator. The simulation allowed the circuit to be modelled more accurately, and therefore better optimised before a real circuit needed to be made.

Initially, the examining division had refused the application for constituting a ‘mental act’ or a mathematical method as such, because it did not specify any means for implementing the invention. Adding to the claim that the method was ‘computer-implemented’ overcame that particular objection (after T 258/03), but the board was left with the problem of whether the mathematical formulae in the claimed invention could contribute to the required “technical character” (after T 641/00). The invention, the applicant argued, was an improvement over the prior art because the claimed mathematical method of generating random noise made it possible to simulate noisy circuits on small computer systems not previously powerful enough for the purpose, or to simulate larger circuits with the same computer power. This, the applicant argued, constituted “a technical effect that went beyond the normal physical interaction between a computer program and a data processing system”.

The board, headed by the familiar figure of Stefan Steinbrener, was persuaded by this argument and considered that the simulation method constituted an “adequately defined technical purpose for a computer-implemented method, provided that the method is functionally limited to that technical purpose”, and that all steps relevant to circuit simulation, including the mathematically expressed features, contributed to the technical character of the method. Simulation could therefore be a technical feature, and this constituted neither a mathematical method as such nor a computer program as such, even if mathematical formulae and computer instructions were used to perform the simulation.

The board acknowledged that this finding departed from the previous decision of T 453/91, in which a design method for a semiconductor chip was not deemed to be patentable unless a manufacturing step was included as part of the claimed method. In the board’s view, the importance and assessment of industrial simulation methods were changing, and numerical simulations were becoming a cost-effective alternative to real experiments, evolving into a key technology. Specific technical applications of computer-implemented simulation methods were themselves therefore to be regarded as modern technical methods which formed an essential part of the fabrication process, preceding actual production. Such simulation methods could not be denied a technical effect merely on the ground that they did not yet incorporate the physical end product. In summary, the board considered patent protection to be appropriate for numerical development tools designed for a technical purpose, which could not be denied a technical effect merely on the ground that they did not yet incorporate the physical end product.

The board remitted the application back to the examining division to have a search carried out so that a proper assessment of novelty and inventive step could be made, taking into account all those features making a contribution to technical character.

The IPKat finds it interesting to consider how the same claimed invention might be viewed at the UK-IPO, when applying the Aerotel/Macrossan test rather than the EPO ‘technical character’ test. Construing the claim would not be particularly difficult: the method is one of computer simulation of an electronic circuit using a specified mathematical noise model. The contribution in this case would need to be the alleged contribution, in the absence of a search of the prior art having been carried out. Although this might not be the same as the actual contribution, which could only be determined once the prior art was taken into consideration, it could not, unless the applicant failed to identify what in his view the invention was, be any narrower than the actual contribution. The contribution would therefore be viewed as being the application of the specified mathematical noise model in a computerised simulation method, this having certain efficiency advantages. Since this contribution is limited to that of a mathematical model as implemented by a computer program, the contribution could be no more than a mathematical model or computer program as such, and would therefore be excluded from being considered to be ‘an invention’ under section 1(2)(a) and (c) (or Article 52(2), if you prefer). Having failed the third step, any reference to a ‘technical effect’ could not save the method from being excluded, so (as usual) the fourth step would be essentially ignored.

This is the point where patent attorneys, even those who have repeatedly argued and lost hearings at the UK-IPO, will start to complain that the advantages of the invention have not been taken into account. However, the IPKat has not yet seen a UK-IPO decision following Aerotel/Macrossan that has taken into account any actual or alleged advantages to support a contribution being not excluded when it would otherwise be excluded. It is probably always worth a shot, but one should not expect a different result when using an argument that has tried and failed numerous times before.

This is not, however, a mere theoretical musing on how the different approaches might reach different results. Two recent decisions at the UK-IPO (O/342/07 and O/343/07) have resulted in refusals of applications for computer-implemented mathematical simulations. Both of these related to simulations of oil reservoirs, and the IPKat cannot see why these would not now be considered to be sufficiently ‘technical’ to pass the test the EPO board has approved.

The remaining question is: wherefore the different approaches and different results? There appears to be little hope at the moment for a resolution, particularly since (in T 154/04) the board of appeal (Steinbrener again, of course) comprehensively rejected any reference to the enlarged board of appeal to resolve allegedly conflicting EPO decisions, which the Court of Appeal has now effectively directed the UK-IPO and lower courts to ignore. There is also the prospect of a further hardening of the differences when the Astron Clinica judgment in the High Court is issued (see earlier IPKat posts here and here). The IPKat thinks that the real reason lies in the entirely different legal approach the English courts and UK Patent Office have been taking compared with the approach by the EPO boards of appeal. Whereas the EPO, at least in the form of Steinbrener, clearly takes the view that interpretation of the law should evolve as technical progress evolves, the English approach is now trying to go back to basics and interpret the law as it is written, without regard to how technology has developed since the law was first put in place. The former approach depends on the ever-changing definition of what is "technical" (which the IPKat challenges anyone to provide a stable definition of), and departs substantially from the wording of the EPC, whereas the latter tries to assess what the claimed invention actually is, in terms of what it contributes to public knowledge, and whether it is excluded. While the different approaches continue, there seems to be little hope of reconciling English patent law with that of the EPO.

12 comments:

Anonymous said...

David, in savaging Mr Steinbrener you are clawing the wrong target, aren't you? He's only the Chairman. What about the Rapporteur, who manages the case, then writes the Decision. See reasons 3.4.2 "The Board, in its present composition...." from which I infer that Rapporteur Bumes disagrees with the majority in the earlier T453/91. As to "technical" one can only presume that a consensus exists within DG3, that it is indeed a term with a meaning clear enough to serve its decisive purpose. If such a consensus exists, then DG3 is not going to be impressed much, by whingeing from outside the ivory tower, that no inventor can know whether his creativity is patentably "technical" or not. Operating in a civil law (no such thing as "Binding Precedent") landscape, for the EPO it is normal for later Decisions to contradict earlier ones. All part of the rich tapestry of quasi-Darwinian evolution of the law. In the end, lots of legal certainty, but not much while the "fittest" legal line is evolving.

In this point, the EPO has unbounded self-confidence. Far less so, when it comes to the assessment whether a text change to the as-filed app has had the effect of adding matter. Only 9% of the folk inside the ivory tower have English as their first language. For the rest, just about any departure from the verbatim text as first filed in English looks like it's adding matter.

David said...

Very strange. I wasn't trying to savage anybody, I just want to try to understand how and why the EPO approach is different from the UK approach.

Anonymous said...

The Kat considers the EPO approach as 'departing substantially from the wording of the EPC', but fails to make the same observation re the uk approach.

Yet the uk approach clearly contravenes the explicit wording of the epc:

Art 52(1) states that EP patents 'shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.'

Art 52(2),(3) states that certain things - as such - 'shall not be regarded as inventions within the meaning of paragraph 1'.

Arts 54, 56 then set out the tests for novelty, inventive step - 'an invention shall be considered to be new if...'

If the things listed 'as such' in art 52(2) are not 'inventions' within the meaning of article 52(1) then they cannot be tested for novelty or inventive step under art 54 or 56, because those tests only apply to 'inventions'.

The EPC provides no test for determining whether a 'non-invention' is novel or inventive. Hence, ukpo practice of saying claimed subject-matter is novel, inventive, but nevertheless excluded, is complete nonsense.

Similarly, using the novelty and inventive step tests of arts 54/56 to determine whether a claim is excluded under art 52 is also wrong - because the tests of articles 54/56 only apply to something which is 'an invention'.

Thus, in this writer's opinion, whilst the epo approach may not find verbatim support in the epc, it is preferable to the uk approach which contradicts the clear wording of the epc.

Anonymous said...

David, I'm glad you weren't trying to savage Mr Steinbrener, and I'm glad you are trying to understand the EPO approach. But may I now ask you, which one of the following is for you "strange": my bizarre use of the word "savage", or my bizarre thoughts on the evolution of TBA jurisprudence. If the latter, maybe you would like to expound further, on what troubles you. Then maybe, in the further dialogue, common law readers will better understand a civil law jurisdiction, and vice versa.

David said...

i) The argument is very little to do with common law/civil law differences, both of which have to cope with interpreting the written statute, which is the real issue. Whether the EPO's interpretation is 'evolving' or not is beside the point. The statute has not changed (despite EPC2000, which left the exclusions intact).
ii) There is nothing to stop a valid interpretation of the EPC being to take the legal fiction of A52(2)&(3) last, after deciding what the invention actually is (aka the 'contribution'), possibly after assessing novelty and inventive step to be sure. If anyone really thinks that the articles must only be taken in strict literal order, they are being quite deluded, and probably think that T 258/03 was a sensible decision.
iii) A Caliph Omar-type argument goes like this: If the requirement of 'technical character' means something different from what Article 52(2)&(3) does not exclude, then it is a heresy. If it means the same thing, then it is superfluous. The same sort of reasoning typically applies to added subject matter under Article 123(2) at the EPC.

Ian L said...

I have enjoyed reading the slightly testy exchanges between David and the anons over the past few weeks. It's good to see that people are prepared to be a little passionate about IP.

Anyway, I'll be avoiding UKIPO CII prosecution for some time to come I imagine.

Keep up the interesting posts but remember the IPKat blog is suppose to be fun too!

Anonymous said...

When the new UK contribution test came out I wasn't at all convinced by it. However, as more new BoA decisions arrive I find myself seeing the UK approach as "the sensible one".

To me this latest BoA decision seems to be based almost entirely on the fact that the applicants managed to leave the Examining Board with a 'warm and fuzzy feeling' that their invention was technical (“In the board’s view, the importance and assessment of industrial simulation methods were changing…”). Where is the legal certainty in this?

Does this mean that excluded subject matter will now be decided upon how well you can argue that the technology claimed will be important to a company that has a technical background? For example, the board found that “Specific technical applications of computer-implemented simulation methods were themselves therefore to be regarded as modern technical methods which formed an essential part of the fabrication process...” (despite the fact that there is no mention whatsoever of a “fabrication process” in the claims). On this basis it appears that that an entirely non-technical method (e.g. a Computer-implemented mathematical method) that could be used as an essential part of a manufacturing process may be patentable. In contrast an almost identical non-technical method that could be used as an essential part of business process would not be patentable. This doesn't make sense - it's relying on a possible use of the invention to define its patentability.

I can't agree at all with the third posters argument that the UK approach contradicts the EPC. The posters argument is mainly based upon the fact that "The EPC provides no test for determining whether a 'non-invention' is novel or inventive." but isn’t this equivalent to saying that only a patentable invention can be new and non-obvious (which clearly isn’t the case - e.g. consider an ornamental design).

I do not see any difficulty in identifying the “contribution” – it is simply what is new about the idea. To my mind this is not a difficult task and it does not significantly depart from the EPC.

In my opinion (and to me this is the key advantage of the UK approach) starting from the contribution makes the test closer to the real world – when an inventor/applicant/patent attorney decides that they will file a patent application for an invention they do not first consider whether it is technical. What generally happens is that the inventor(s) come up with an idea that they think is clever/useful and then they think it might be good to protect it with a patent application. Then (and only then) do they (or more likely their patent attorney) consider whether they think the invention will pass the patentability criteria and decide to file an application. Surely there’s a reasonable justification for legal tests to reflecting the reality of the process?

Regards,
A UK based EPA

Anonymous said...

This is the third poster again.

In reply to 'A UK based EPA', who wrote

"The [third] posters argument is mainly based upon the fact that "The EPC provides no test for determining whether a 'non-invention' is novel or inventive." but isn’t this equivalent to saying that only a patentable invention can be new and non-obvious (which clearly isn’t the case - e.g. consider an ornamental design)."

I have to disagree with the thrust of your argument. This appears to me to be a classic case of muddling up a layman's notion of 'invention' and 'non-obvious' with the terms as used in the EPC.

For sure, an ornamental design can be 'non-obvious' in a layman's sense of being 'creative'. It cannot, however, (if it is not an invention under art 52) be determined whether it involves an inventive step under art 56 epc, because art 56 does not apply to things which are not inventions within the meaning of art 52.

In other words, Art 56 lays down a legal test for determining whether an 'invention' is non-obvious. The test therefore only applies to an 'invention', not to things which by virtue of art 52(2)(3) are not inventions within the meaning of article 52(1).

Hence, the EPC provides no way of assessing whether excluded subject-matter, e.g. an abstract business method, is obvious or not.

Regards,

a mainland europe based cpa/epa

Anonymous said...

Being mainland myself, I fully agree with "mainland europe based cpa/epa".

However, I do also agree with "UK based EPA"'s criticism in his 2nd and 3rd paragraph. But imho it is very well possible to criticise the BoA's finding of technicality while accepting the BoA's concept of "invention".

Regarding what is an "invention", see T 154/04, par. 12. Clearly the BoA's and LJ Jacob's entirely different concepts of "invention" account for the difference in their approaches. For what it's worth, the BoA's approach does have a basis in the text of Art.52(3): excluded _to the extent_. Only the parts that (as such) do not belong in the list of Art.52(2) make up the invention. If you accept this, it is automatic that novelty and inventive step only have meaning for the non-excluded parts, as they are only defined by Art. 54 and 56 for an "invention". However, this does not answer what is excluded (non-technical) and what is not.

Anyway, to come back to T 1227/05, the BoA seems to find technicality in the potential use of the method as part of a fabrication process which is not part of the claim (as "UK based EPA" wrote). Potential effects have been used more often, e.g. in T 1173/97 deciding that a program on a disk can (sometimes) be patentable (see par 9.4). Other decisions state that a potential effect is not enough.

Anonymous said...

The mistake, in my view, in the European approach is in equating "the invention" as used in article 52 with the claims. The claims define the scope of protection, there is no reason to treat them as the invention. The UK approach asks first what is the invention (or in the words of the Aerotel/Macrossan test what is the contribution) and then asks is that excluded. This seems totally in keeping with the wording of the EPC.

Anonymous said...

My instant reaction to the last comment was that the EPC states that the claims shall perform the function of "defining" the "invention". But they don't do they. Instead, the claims define "the matter for which protection is sought" which complements "scope of protection" and leaves room for "the invention" to be something else.

Having said that, Art 54 and 56 EPC both begin with the words "An invention..." rather than "The subject matter of a claim...", which to my mind makes it tricky to prevail on the argument that "the invention" is not synonymous with "The subject matter of the claim".

Gobhicks said...

An interesting debate to be sure…

First the basics:

Art 52(1): European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.

Say an “invention” is “an original contrivance” – “a mousetrap of my own invention”. Something that is an “invention” in this sense isn’t necessarily “new” or “inventive”, but a “patentable” invention must be new and inventive.

52(2) excludes certain kinds of things from being “inventions” for the purposes of 52(1).

The question of novelty isn’t so much of an issue (or is it?) but obviousness to a person skilled in the art (Art 56) can only be judged in relation to an “invention” not excluded by 52(2).

These excluded things can’t be judged as “new” or “inventive” within the meaning of 52(1) because they aren’t “inventions” at all within the meaning of 52(1).

52(3) limits the exclusion from patentability of the subject-matter or activities referred to in 52(2) only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such. We’ll come back to this.

Art 84 requires that the claims shall define the matter for which protection is sought. It doesn’t mention “inventions”, but the subject matter defined by a valid claim must necessarily be, OR AT LEAST INCLUDE, a patentable invention.

Then there’s Rule 29(1): The claims shall define the matter for which protection is sought in terms of the technical features of the invention.

This, firstly, brings in “technical”, and also relates (somehow) the claims to the invention.

Say you have claim 1 and a bunch of dependent claims. The “claims” (plural) relate to the “invention” (singular). So does claim 1 = “the invention”? Clearly not.

Article 82: Unity of Invention. The European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.

So does the “inventive concept” = “the invention”? Well, multiple “inventions” can share an “inventive concept” and so have “unity of invention”. But their shared “inventive concept” is what gives them “unity of invention, so: maybe.

Looking at the EPO approach to 52(2)/(3), we can see two problems:

1. The approach presupposes that the entire subject matter of a claim = “the invention”. This does not seem to be a safe starting point – see above. On this basis, if a claim has “technical” features it escapes exclusion under 52(3) – it’s not an excluded thing “as such”.

2. Following from 1, the approach equates excluded subject matter with non-technical subject matter. I have never seen a persuasive basis for this.

3. Excluding non-technical matter from the assessment of inventive step relies on equating 52(2) excluded matter with non-technical matter.

The EPO approach has the advantage of simplicity in applying the 52(2)/(3) exclusion (doesn’t need any reference to the prior art), but after that it’s a quagmire made of fudge: non-technical matter deemed not to be novel, what is “technical” anyway, etc.

If the 52(2)/(3) exclusions are to have any teeth at all, they must relate to the substance of a claim, rather than its form. This is what the UK approach tries to do, with the “actual contribution” test. I think there’s a better logical basis for equating the “invention”/”as such” with what differentiates a claim from at least the common general knowledge, if not the prior art as a whole, than with the entire subject matter of the claim (see basics above, again).

You’re then left with the issue that a claim that is differentiated only by, e.g., computer program features, might still make a contribution that is “technical” in substance and ought to be patentable. The Aerotel test, at least as it seems to be getting applied by the UK-IPO to date in a number of cases that are really about “computer technology” as such, rather than “applications of computer technology”, is in danger of excluding too much.

It also seems to me that it is legitimate to draw a distinction between applications of computer technology that are inherently technical (e.g. simulations/modelling of physical systems) and applications that are inherently business-oriented (gaming, financial analysis).

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