A new hope

Biotech and IT are complex areas, not only on the technical standpoint, but also in terms of patent law.

Reading about U-turns on plant patents or about the tricky transposition of the EPO’s software concepts into French national practice, one could be tempted to once and for all switch DNA sequences and algorithms for braking mechanisms and meat mincers. But one might be wrong. It turns out that even the most difficult of topics are not hopeless.

Today, Aujain Eghbali tells us about a new hope for patent software applicants. All sci-fi geeks will agree that a new hope can be a great beginning. But in order to find out what today’s hope is really about, you may have to read through the entire post.

Aujain reports.

Decision T 1227/05 (Circuit simulation I/Infineon Technologies) of December 13, 2006 has become a major reference for EPO examiners who need to assess the inventive step of computer-implemented mathematical methods.

The invention in Infineon related to the simulation of a circuit subject to 1/f noise. After establishing the principle that, beyond its implementation, a procedural step may contribute to the technical character of a method only to the extent that it serves a technical purpose of the method, the Board chaired by Mr. Steinbrener considered that:

  • The simulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose for a computer-implemented method, provided that the method is functionally limited to that technical purpose.
  • The metaspecification of an (undefined) technical purpose (simulation of a “technical system” as in original claim 4), on the other hand, could not be considered adequate, as the purpose of a claim in this context is not to quote the technical character requirement, but to identify clear features supported by the description which meet that requirement (Article 84 EPC).
  • A circuit with input channels, noise input channels and output channels the performance of which is described by differential equations does indeed constitute an adequately defined class of technical items, the simulation of which may be a functional technical feature.
  • Specific technical applications of computer-implemented simulation methods are themselves to be regarded as modern technical methods which form an essential part of the fabrication process and precede actual production, mostly as an intermediate step. In that light, such simulation methods cannot be denied a technical effect merely on the ground that they do not yet incorporate the physical end product.

Based upon these considerations, most EPO examiners seem to nowadays apply the following standard:

If claimed mathematical steps form a method functionally limited to an adequately defined technical purpose and related to an adequately defined class of technical items, then these mathematical steps can be taken into account in the assessment of inventive step, otherwise they cannot.

Obviously, this standard is not self-explanatory. Not only because it relies on the notion of “technical” items and purposes, and we know that the Boards of appeal are careful not to provide a generic definition of the term “technical”. But also because the standard refers to the unspecified notions of “functional limitations” of methods and of “adequate definitions” of purposes and classes of items.

A secret method for properly drafting software patent applications.

Probably without any such aim in mind, Board 3.4.01 has now expressed what could be construed as a liberal view on these notions, in decision T 0625/11 of January 19, 2017.

The decision was issued further to an appeal during examination by French nuclear power company AREVA NP. Areva

had filed European patent application No. 03775483.5 broadly relating to the use of a “transitional operation simulation” to calculate a “limit value of at least a first operating parameter of a nuclear reactor” in view of the subsequent safe operation of the nuclear reactor. Areva argued that limit values of operating parameters in the prior art were empirically determined without using a transitional operation simulation and the invention was therefore in total breach of normal practice and involved an inventive step. The application was however refused by the Examining division on the ground that the claims related to method steps without any technical character going beyond their normal interactions with a computer.

Claim 1 of the main request read:

A method for determining by a computer system at least one limit value of at least a first operating parameter of a nuclear reactor comprising a core in which fuel assemblies are charged, the fuel assemblies comprising fuel rods each having nuclear fuel pellets and a sheath surrounding the pellets,

characterized in that it comprises the steps of:

b) simulating at least one transitional operation of the nuclear reactor,

c) calculating the value reached by a physical quantity during the transitional operation in at least one sheath of a fuel rod,

d) determining, as a limit value, the value of the first operating parameter at the time when the value calculated in step c) corresponds to a value of the physical quantity characterizing a rupture of the sheath.

In its refusal decision, the Examining division held that the Infineon decision did not apply since Areva’s claim 1 was not limited to the simulation of a nuclear reactor.

The first instance examiners considered in particular that:

  • In Infineon, the invention related to a numerical simulation procedure to test an already designed circuit subject to noise.
  • Claim 1 did not have a concrete technical application of a computer-aided numerical simulation method.
  • Claim 1 did not relate to the use of a simulation step in a very specific and eminently practical and technical application.
  • Claim 1 did not define simulation steps, but a very general step of simulating a transitional operation in order to subsequently calculate values.
  • Transitional operation simulations were well known at the priority date of the application. And anyway claim 1 did not define specific characteristics of the transitional operation simulation, but a very general step of simulating a transitional operation in order to subsequently calculate values. Thus, there were no steps going beyond what was common practice for the person skilled in the art at the priority date.

During the appeal procedure, the Board first followed this reasoning but later changed its mind and admitted the main request. From a procedural point of view, it is worth noting that Areva asked in an auxiliary request introduced during the oral proceedings that two questions be referred to the Enlarged Board of Appeal. The Board actually did not consider this request lightly. They even suggested a rewording of the questions and did not reach a decision during the oral proceedings, such that the procedure was resumed in writing. But after all, the case was resolved without any referral.

The Board compared at length the Infineon liberal approach and the opposite approach which consists in ruling out method claims which do not incorporate the alleged technical goal (such as via a final step of operating a nuclear reactor). And the Board decided to follow Infineon. Furthermore, the Board considered that the fact the claimed method merely recited the calculation of a limit value did not prevent one from applying the Infineon approach to the present case.

The Board notably noted that the calculation of the value and the later use of this value were performed by different economic actors in different geographic locations, such that requiring the integration of said later use in the claim would reduce the efficiency of the patent, given the specificity of contributory infringement rules.

T 0625/11 thus constitutes a confirmation of Infineon’s principles and of its taking industrial evolution into account. But considering how Infineon is widely followed by EPO examiners, it is questionable whether such thoroughly reasoned confirmation was even needed in the first place.

But T 0625/11 is of particular interest for yet another reason.

As readers may have noted, claim 1 of the main request eventually granted by the Board is very broad. I bet drafters used to prosecuting software applications are counting the number of clarity-related objections they could raise.

The Board itself conceded:

The terminology used in claim 1 leads to the recognition of a very broad scope for the claimed process. This observation stems from the fact that a transitional operation of the nuclear reactor is reported without specifying its parameters. Similarly, the reference to the notion of “physical quantity” and “first operational parameter”, without specifying its nature, permits an in-depth interpretation of the claimed process.

But then:

The Board notes that the skilled person would have immediately recognized that the problem posed is in no way limited by the nature of the parameters chosen. Similarly, whatever the degree of sophistication of the transitional mode of operation selected, its modeling will only involve well-known operating principles, which finite element calculation algorithms can account for.

The fact that the principles we are discussing incorporate a complex set of laws relating to nuclear physics, to the resistance of materials, to thermal physics, to thermodynamics does not affect this observation. In this respect, the teaching of the initial application, combined with the general knowledge of a person skilled in the art, justifies the degree of generalization resulting from the formulation adopted for the application.

Regarding sufficiency of disclosure, the Board held:

With regard to the disclosure of the invention, the Board deems that the broad scope of the claims does not in any way impede the achievement of the invention over the entire area claimed. The laws of physics mentioned above are in fact able to account for the evolution of the relevant parameters, in spite of the complexity of the phenomena at hand, since the transitional operation and the operating conditions and parameters are sufficiently defined.

And regarding clarity issues when assessing inventive step:

In this case, the definition of the technical problem adopted by the applicant appears realistic. The invention aims at determining at least one limit value of an operating parameter of a nuclear reactor in order to allow better exploitation of the capacities of the latter.

Similarly, the nature of the parameters involved in the simulation (constraints, temperatures, heat capacity, pressures, dimensions, etc.) also confers a technical character to the claimed invention.

The bar on clarity at the EPO has always been high for software inventions in general and computer-implemented mathematical methods in particular, leading to a number of issues. It can of course be very costly for applicants in this field to ensure that all implementation details are included in the application in case there is a clarity objection. But there is also a specific issue related to the way Infineon is applied by examiners in practice: if a method claim is broad or unclear, it is easy for them to hold that the method is not “functionally limited” to a technical purpose or that said purpose is not “adequately defined”.

The generosity of Board 3.4.01 in decision T 0625/11 might constitute a source of hope for applicants who had become desperate because of this difficulty.

CASE REFERENCE: T 0625/11, Board 3.4.01, January 19, 2017, AREVA NP.

One thought on “A new hope”

  1. Indeed a new hope on patentability of so-called abstract ideas. Europe seems to be surpassing USPTO in legal analysis of fundamental science. .

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