The IPKat (right: in inscrutable mode) would like to ask his readers a couple of little questions. Here is a headnote from a recent EPO Board of Appeal decision:
"The mere fact that subject-matter, which is excluded per se under Article 52(2) (c) EPC, is technically implemented cannot form the basis for inventive step. Inventive step can be based only on the particular manner of implementation of such subject-matter. To this end it is therefore necessary to ask how the per se excluded subject-matter is implemented."Now, the questions are:
1. What particular A52(2) exclusion is this decision about?
2. Given your answer to 1, would the same reasoning apply for the other exclusions?
Presumably someone will be able to name the decision itself, but the IPKat thought that it would be better to let his readers think about it first, before checking the web comments to find out.
Patent pop quiz
Reviewed by David Pearce
on
Wednesday, March 26, 2008
Rating:
Reviewed by David Pearce
on
Wednesday, March 26, 2008
Rating:
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discoveries: because you have discoveries and discoveries as such.
ReplyDeleteEspecially when discoveries runs on a computer.
The EPO call them discoveries-implemented inventions.
1. What particular A52(2) exclusion is this decision about?
ReplyDeleteA1. Well, the headnote itself refers to Article 52(2)(c) EPC, so there’s a clue. Could be any one of the 52(2)(c) exclusions: schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers
2. Given your answer to 1, would the same reasoning apply for the other exclusions?
A2. Yes, why wouldn’t it?
Is it really necessary to illustrate this post with an image and a caption that employs an antiquated stereotype of Orientals, complete with their supposedly slitty eyes?
ReplyDeleteWould you consider ever using a Gollywog? Or a Black and White Minstrel?
It's a cheap shot, shows immaturity and is potentially racist. Please desist.
The boards read the "in particular" in Art. 52(2) EPC as indicating that the categories (a) to (c) are merely meant as examples of the "non-technical" domain of subject matter which is not patentable under Art. 52(2) and (3) EPC. It therefore doesn't make any sense to distinguish between the categories when interpreting board of appeal decisions.
ReplyDeleteI won't ruin the surprise that the Kat is undoubtedly wanting to spring on everyone, but I will make one comment: this case represents an area where I think the EPO have got it wrong and the UK Courts have got it right.
ReplyDeleteIf you are doing something that's excluded (performing business, playing a game, whatever) and you do it with a computer program, the implied technical nature of the computer program can't help you, so you're invention is still excluded. That's what Merrill Lynch and Macrossan say. The EPO say that the technical nature of the computer DOES help avoid the exclusion, but you're not doing anything inventive. I believe that to be a flaw in the technical subject matter approach, at least if you view a computer program as inherently technical.
Where I think the EPO are right and the UK Courts wrong is in a situation where what you are doing with the computer is not itself excluded. Then there is at least a part of the claimed invention which is not excluded so it is not excluded subject matter as such. The EPO would look at such an invention from a novelty/inventive step point of view, whereas the UK Courts would look to see if what you were doing with the computer was itself known, as in Fujitsu. If so, the whole thing is excluded. That, to me, is a flaw in the contribution approach, and a pretty significant one since it leads to the illogical conclusion that any invention which lacks novelty stops being an invention rather than just being an invention for which a patent shall not be granted. The flaw in the technical subject matter approach is comparatively easily rectified.
Gerontius
Ummm - is no-one else capable of giving straightforward answers to two simpe questions?
ReplyDeleteThe Kat doesn't ask for much: be nice!
Gerontius
ReplyDeleteI can rewrite any claim to a business method using a computer as
1. A computer.
2. A computer as in claim 1 programmed to perform some business method.
Does it really make sense to say that claim 1 is not excluded but claim 2 which is narrower in scope is excluded?
What if instead of a computer claim 1 recites obscure hardware which is intially though to be patentable but in litigation found to be not novel or trivial?
SAID: Gerontius
ReplyDeleteI can rewrite any claim to a business method using a computer as
1. A computer.
2. A computer as in claim 1 programmed to perform some business method.
Does it really make sense to say that claim 1 is not excluded but claim 2 which is narrower in scope is excluded?
Yes it does. The logical fallacy in asserting the contrary lies in the fact that claim 1 is inherently invalid for lack of novelty, so it is meaningless to say that claim 2 is narrower. In this example Claim 1 cannot be an invention of any sort by any definition because it belongs entirely to the common general knowledge (CGK). On that basis the subject matter of claim 1 must be eliminated from any assessment of claim 2 as regards excluded matter.
What if instead of a computer claim 1 recites obscure hardware which is intially though to be patentable but in litigation found to be not novel or trivial?
Claim 1 as first stated above would fail in PO examination on the basis of CGK. If claim 1 as now proposed falls in litigation, on the basis of prior art (as distinct from CGK) or expert evidence as to inventive step, why treat claim 2 any differently than it would have been treated if claim 1 had failed on CGK in PO examination?
Note that I was talking about "computer programs", not computers. I honestly don't know whether the UK or EPO are "right" on that one and both sides of the argument make a lot of sense: you shouldn't be able to avoid the exclusions in a trivial way (UK) or you can avoid the exclusions in a trivial way but you still can't have a patent (EP). I happen to prefer the EPO approach.
ReplyDeleteAnd here are my answers to the Kat's questions.
The BoA decision in question was to do with playing games - electronic poker specifically.
The line that it matters how you implement it seems consistent with EPO treatment of most exclusions - business methods and mental acts in particular where you can't get a patent on the basis of the excluded matter, but if you happened to solve a technical problem when implementing it, Bob's your uncle.
The odd one out is probably discoveries. There, the implementation may be relatively trivial once you've made the initial discovery. The UK courts have been struggling with this one for a while, too. That's one thing Peter Prescott got right in my view: the exclusions were not born equal.
Gerontius
"The odd one out is probably discoveries".
ReplyDeleteYes. The exclusion of discoveries is probably the thing that causes most confusion in the mind of the public. Discoveries are of course the basis of many patentable inventions (I've spent most of my working life patenting such). US law specifically says that discoveries are patentable, in direct oppostion to the EPC, which says they aren't. This does not - remarkably - cause any detectable difference in practice between the two jurisdictions (though there are considerable differences from other causes)
I blame Lord Hoffmann, for implying (in Biogen) that knowledge is patentable. It isn't. You can only patent a new process or thing - which a discovery, typically, is not. Only when your discovery leads you (generally by a completely obvious route) to a new process or thing do you have something ('an invention')you can patent.
IPKat, please bin this if it's too far off-piste (we don't want avalanches).
The thing about INDUSTRIALLY APPLICABLE DISCOVERIES is that they are, generally SCIENTIFIC DISCOVERIES and their INDUSTRIAL APPLICATIONS are inherently TECHNICAL.
ReplyDeleteSo an industrial application of a novel scientific discovery is, generally, inherently patentable (not excluded), and non-obvious by virtue of the novelty of the underlying discovery.
QED
One could say the same about novel games, business methods or computer programs, whose application is also inherently 'technical'. The argument is therefore not really very persuasive (regardless of the use of bold, italic or caps).
ReplyDeleteSorry – went a bit mad with the style tags. My point was that there is, it seems to me, a clear qualitative difference between a new scientific discovery that provides the practical basis for a new or improved product or process, and a new game or business method – which generally boil down to sets of rules. The interesting question is: given a novel scientific discovery that is itself excluded from patentability but enables a novel physical product or process of a type that is clearly not excluded from patentability, should the “excluded discovery” be taken into consideration when assessing the inventiveness of the non-excluded product/process? If the implementation is obvious in light of the discovery, should the discoverer still be able to secure patent rights for obvious industrial applications of the discovery? Or should only applications/implementations that are non-obvious given knowledge of the discovery be patentable even when the discovery has not previously been made public?
ReplyDelete