EPO: please stop asking questions

The IPKat thanks James Heald for pointing out a recent important decision by the EPO board of appeal (T 154/04, recently commented on in German patentanwalt Axel Horns' blog), which has comprehensively rejected any possibility of referring the questions Lord Justice Jacob wanted to ask the enlarged board of appeal in his Aerotel/Macrossan judgment. The questions from the judgment were as follows (from paragraph 76):
(1) What is the correct approach to adopt in determining whether an invention relates to subject matter that is excluded under Article 52?

(2) How should those elements of a claim that relate to excluded subject matter be treated when assessing whether an invention is novel and inventive under Articles 54 and 56?

(3) And specifically:

(a) Is an operative computer program loaded onto a medium such as a chip or hard drive of a computer excluded by Art.52(2) unless it produces a technical effect, if so what is meant by 'technical effect'?

(b) What are the key characteristics of the method of doing business exclusion?
Attentive readers will remember that the President of the EPO had previously rejected these questions (as commented by the IPKat here), because he considered the EPO case law not to be so contradictory as to require the questions to be asked. Pretty much the same reasoning appears to apply in this case too (which makes the naturally sceptical IPKat wonder whether Alain Pompidou's words were in fact all his own).

In the decision, the board dismissed an appeal by the applicant, who was seeking patent protection for a new computerised method of handling market data. The applicant, who must presumably have guessed that such an outcome was likely, proposed Jacob LJ's questions to the board together with additional ones of their own, listed as questions 4, 5(a) and 5(b):

(4) Is a system for estimating product distribution for non-reporting outlets based on weighing factors that are a function of the distance between the nonreporting outlets and sample reporting outlets and the characterization, e.g. size, of the non-reporting and reporting outlets of a technical nature?

5(a) Are the exclusions of Article 52 to be treated differently from each other in the way that obviousness is assessed?

5(b) Are inventions alleged to be within Article 52 to have a different test for obviousness than other inventions not alleged to be within Article 52?
The board considered that, under their rules of procedure, questions would be referred if they considered it necessary to deviate from an interpretation or explanation of the Convention contained in an earlier opinion or decision of the enlarged board. In particular (at point 2 of the reasons),
"A decision deviating from an opinion given in another decision of a board of appeal, a diverging opinion expressed in decisions of different boards, or a deviation from some national jurisprudence -- for example, from the UK case law of the Court of Appeal to which the appellant referred in support of its case -- are not per se valid reasons for referral (see also Article 15 RBPA). Hence, the legal system of the European Patent Convention gives room for evolution of the jurisprudence (which is thus not "case law" in the strict Anglo-Saxon meaning of the term) and leaves it to the discretion of the boards whether to give reasons in any decision deviating from other decisions or to refer a point of law to the Enlarged Board. The President of the European Patent Office may intervene under Article 112(1)(b) EPC, in particular if the legal situation becomes unclear for first instance proceedings.

In the interest of the harmonisation of national and international rules of law, the boards of appeal will take into consideration decisions and opinions given by national courts in interpreting the law (see G 5/83 - Second medical indication/EISAI (OJ EPO 1985, 64), Reasons No. 6). Nevertheless, in the proceedings before the European Patent Office, such considerations do not exonerate a board of appeal from its duty as an independent judicial body to interpret and apply the European Patent Convention and to decide in last instance in patent granting matters. In addition, despite harmonised legal regulations it is not self-evident that their interpretation is also harmonised among different national courts, let alone courts of different contracting states, so that the boards of appeal would be at a loss as to which interpretation to follow if they did not exercise their own independent judgement.
For these reasons, the board then refused the request for referral, dismissing each question as follows:
"Question 3(a) concerns the patentability of computer programs loaded onto a medium, which is not the subject matter of any one of the claims requested. Hence, although possibly of general interest, this question is plainly irrelevant in deciding the present appeal on its merits.

Question 4 relates to a very specific subject matter, namely the patentability of a system for estimating product distribution for non-reporting outlets. This issue neither addresses an important point of law nor requires any answer from the Enlarged Board of Appeal to ensure the uniform application of law.

Questions 1, 2, 3(b), and 5(a) and (b), although concerning important points of law relevant to the present appeal, do not warrant a referral to the Enlarged Board of Appeal either since the Board has no doubts how to answer the questions on the basis of the Convention, following the established case law on patentability of inventions.
The board then reiterated the present position of the case law regarding the patentability of inventions having a mix of technical and non-technical features in a claim. They also discussed the reasons for arriving at the current position, with reference to the travaux preparatoires for the EPC and the revised form of Article 52(1) in the EPC 2000 (yet to come into force). Their unsurprising (and, in the IPKat's view, still very unhelpful) conclusion was that "an invention meeting all criteria of patentability, must provide a novel and inventive technical contribution to the prior art" (point 9 of the reasons).

With reference to Aerotel, the board considered the current UK approach to be inconsistent with the EPC, and further pointed out in no uncertain terms that Jacob LJ had got it completely wrong:
"The 'technical effect approach (with the rider)' applied in the Aerotel/Macrossan judgement is irreconcilable with the European Patent Convention also for the further reason that it presupposes that "novel and inventive purely excluded matter does not count as a 'technical contribution'" (Aerotel/Macrossan, e.g. paragraph No. 26(2)). This has no basis in the Convention and contravenes conventional patentability criteria; referring e.g. to mathematical methods and to discoveries, the Enlarged Board of Appeal said in decision G 2/88 (supra), Reasons No. 8:

"[...], as was recognised in Decision T 208/84 [...] (dealing there with a mathematical method rather than a discovery, but the same principle applies), the fact that the idea or concept underlying the claimed subject-matter resides in a discovery does not necessarily mean that the claimed subject-matter is a discovery 'as such'".

In fact, a non-technical feature may interact with technical elements so as to produce a technical effect, e.g. by its application for the technical solution of a technical problem (see for example Opinion G 1/04 (supra), Reasons Nos. 5.2 ff.). If this is true for some purely excluded matter, for example the intellectual exercise cited in the Opinion, then -- to the extent it contributes to the technical effect -- it must count as a contribution to the technical character.
The board also considered that Jacob LJ had "missed the point" of the approach taken by the boards of appeal in determining the technical features of a mixed type of claim, in making the comment (at para 27) that to deem new music or story part of the prior art was not intellectually honest.

In summary, it appears to the IPKat that the board, at least in the shape of Herr Steinbrener (the chairman of board 3.5.01), has established a firm stance against the persistent questioning of their approach, which has been arriving with increased frequency from across the Channel over the past few months. The IPKat wonders what can possibly happen now for the UK and EPO approaches to come back into line. Can Robin and Stefan ever agree?
EPO: please stop asking questions EPO: please stop asking questions Reviewed by David Pearce on Wednesday, June 20, 2007 Rating: 5


  1. Of course Robin and Stefan will agree in the end, as a result of two factors 1) UK respect for binding precedent (EBA) and 2) evolutionary tendency of decisions of 22 TBA to consolidate and settle on one line defined in the end by the EBA. I prdict 1) UK will come around to problem and solution 2) Germany will toe the Euro line on novelty 3) EPO will eventually find out that "technical" is no good as a bright line test of patentability, and 4) Doctrine of Equivalence will fade away. But it will all take another 10 years.

  2. Not easy to see how they would be done since the problem solution approach relies on the "technical" contribution requirement.

  3. With the correct question, and the right case, I think there's a chance of something going to the Enlarged Board. However, Jacob's questions were never going to get anywhere - I was at an oral proceedings a week after Aerotel/Macrossan came out and there were already plenty of people saying that the questions were just too broadly phrased to be useful. On the other hand, the BoA was dead right to reject the additional extremely narrow questions given by the applicant on this case.

    Perhaps the best hope for a reference might be to highlight the disparity between Sohei and most of the other BoA case law. As I heard one BoA member say once, Sohei could be interpreted to mean that ANYTHING is patentable.

  4. Granted, that PSA looks at the "technical" effect. But just as Robin Jacob's logic renders "technical" redundant for Art 52, so his logic renders it redundant for Art 56. My thesis would be that anything that not only exhibits an "effect" but also makes it through the Jacob Art 52 filter, to the step of examination of inventive step under Art 56, can be accepted to have an effect that is "technical".

  5. What about a second appeal by me to the House of Lords following the precedent set by Buttes Gas v. Hammer [1982] A.C. 888 (see http://www.ukcorporator.co.uk/second_petition.php), with the House of Lords granting me leave to appeal and then choosing to follow the EPO approach (particularly now that the TBA in T 154/04 have asserted, in robust terms, their view that Jacob LJ was quite wrong, and given detail as to how they think he got it so wrong)?

  6. Neal, considering that the EPO also rejected your application, I can't see the House of Lords being too persuaded by a restatement of EPO doctrine that you've any reasonable prospect of a different outcome.

    @Anon(4): Is "technical" redundant in Sir Robin's 4-stage test? No more so than inserting the requirement into the EPC 2000, which the Diplomatic Conference still thought it sensible to do. It's a backstop against matter which may not be explicitly spelled out as unpatentable in the exclusions, but nevertheless still is.

    Incidentally, with the reference to MR/2/00e page 45, it seems to me Mr Steinbrener is on rather thin ice. The Diplomatic Conference accepted the notion that "belonging to a field of technology" was a necessary requirement for a patentable invention, but it appears to have expressly rejected the idea that this is a sufficient test for Art 52. Most notably the Conference resolved to preserve the explicit language that "programs for computers" ... "shall not be regarded as inventions" -- and so rejected the proposal being canvassed by the EPO in MR/2/00. In their papers, other delegations disputed that the removal would make no difference. This if anything surely supports the UK Courts, rather than the Board of Appeal.

    Beyond that, one can debate whether lack of a technical contribution (or, rather more accurately, lack of a contribution not "solely within the excluded subject matter", in the words of the 4 steps) makes an application bad for not having an inventive step, or for not being an invention. Probably the most real consequence of that is what you can and can't ask the UK IPO for an official opinion on. But either way, both the UK and the EPO agree that an application which does not identify such a contribution will be bad. Sir Robin's 4 steps set out a useful and practical scheme for systematically looking for such a contribution -- but they leave judges quite a lot of leeway (more than the EPO) in how to decide whether or not those contributions are or are not actually excluded.

    -- J. Heald

  7. Thanks J. Heald. Just a correction though ... it is not correct that the EPO has rejected my application - all they have done is issue a Rule 45 declaration. And since then, my patent attorneys have confirmed to the EPO that I wish to proceed. So the ball is now in the EPO’s court and my patent attorneys advise me that the next step is for an examination report to issue.

    Also, unlike the position when seeking to obtain leave to appeal to the Court of Appeal where the proposed appellant must demonstrate a "real prospect of success" (which I apparently did to Lord Justice Jacob's satisfaction), there is no such requirement for obtaining leave to appeal to the House of Lords - see para 4.7 of the relevant House of Lords practice direction at http://www.parliament.the-stationery-office.co.uk/pa/ld199697/ldinfo/ld08judg/bluebook/blue.pdf .

  8. There was no hope that the BoA would refer. Board 3.5.1 had previously said in T367/01:

    “According to Article 112(1)(a) EPC, "important points of law" … shall be referred by the Boards of Appeal to the Enlarged Board in order to ensure uniform application of the law. Questions which normally arise during proceedings before the Board and merely relate to the interpretation of the technical content of the patent application, the patent specification or the prior art documents, or are concerned with the assessment of novelty or inventive step, cannot normally be considered to warrant the referral of a question of law to the Enlarged Board of Appeal.”

    This was a prediction I made in the final chapter of a text which is to come out soon on software patents in Europe. My earlier article on the BoA in the IPQ noted that they do not see themselves as subsidiary to the Enlarged Board.

    Another problem for Neal Macrossan and other legal document production systems is the prior art which is available - going back to the 1970s and seemingly outwith the gaze of the EPO examiners. This is also discussed in the forthcoming book.

    Sorry for the self advertising.

    Philip Leith

  9. I confidently predict the eventual death of books on subjects such as these. When everyone can read decisions from the EPO as soon as they come out, and the IPKat and others are on hand to point them out and interpret them, who needs books arriving several years later and already well out of date? Journal articles only barely make it these days before they are also out of date, so they will probably limp on a little while longer.

  10. Ah! The technicians view, methinks.


  11. Absolutely. A technician with less than unlimited means to buy books and journals, I might add.

  12. You should read and study the recent decision of the Technical Board of Appeals. The answers to all these questions are there.

  13. What a very useful comment, Anonymous. I hadn't thought of doing that. Please let me know when the medication wears off.


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