Open Sesame! (part 2)

This is the second part of Aujain Eghbali’s walk-through post on the Sesame decision on business methods.

In the first part, Aujain demonstrated that the Paris Cour d’appel confirmed the refusal of Sesame’s application by applying the same general principles as those relied upon by the EPO.

As he is a man of paradox, he will now show us that the French judges did in fact not use an EPO-compliant approach in their ruling.

Here is to him.

First, a few words on the EPO-compliant approach.

The EPO nowadays almost systematically rejects business method software claims on the ground of a lack of inventive step.

Art. 52 EPC provides:

(1) European 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.

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:(…)(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;(…).

(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

The Boards of appeal wanted to clear all debates on the interpretation of the expression “as such” in the Convention. Furthermore, they departed from the so-called “contribution approach”, and came to consider that the exclusion of subject-matter under Art. 52(2) EPC had to be determined without any knowledge of the prior art. As a result, the established case law is now that any tangible element or tangible action in a claim qualifies as a technical feature and allows the claimed subject-matter to pass the hurdle of Art. 52(2) EPC.

Any patentability issues related to the non-technical aspects of a claimed subject-matter are then addressed within the assessment of inventive step.

This is explained in landmark decision T 258/03 (Auction method/HITACHI):

4.6. The Board is aware that its comparatively broad interpretation of the term “invention” in Article 52(1) EPC will include activities which are so familiar that their technical character tends to be overlooked, such as the act of writing using pen and paper. Needless to say, however, this does not imply that all methods involving the use of technical means are patentable. They still have to be new, represent a non-obvious technical solution to a technical problem, and be susceptible of industrial application.

Another landmark decision T 641/00 (Two identities/COMVIK) established the framework for assessing inventive step of a claimed subject-matter consisting of a mixture of technical and non-technical features (“mixed-type claims”): all features which contribute to said technical character should be taken into account, whereas features making no such contribution cannot support the presence of an inventive step.

The reasoning is basically a three-step process:

a. What is the technical character?

b. Which features contribute to the technical character?

c. Do these features (and these features only) form a non-obvious technical solution to a technical problem with respect to the prior art?

When the EPO believes that a claim relates to a mere automation of a business method, as the Cour d’appel considered in Sesame, the answers to these three questions are the following:

a. Automation of human and business activities (in this case related to haulage).

b. A system with hardware and data structuring and communication capabilities.

c. No, because the hardware and the data structuring and communication capabilities are conventional. (This last assertion can possibly be held merely on the basis of common knowledge.)

Thus, the reasoning leads to a finding of lack of inventive step for business method software claims.

It seems that French judges do not want to bother with such theoretical and complex legal reasoning. For instance, as already reported on this blog, the Paris Tribunal de grande instance recently held that a claim directed to a “storage medium storing [a computer program]” fell under the exclusion of computer programs as such – although the EPO would have given weight to the presence of the “storage medium” feature in the claim.

The Cour d’appel de Paris confirmed this stance in Sesame. It was held that, although a computer system is recited in the claims, the subject-matter was excluded from the scope of patentability under Art. L.611-10-2° of the Code de la propriété intellectuelle (that is, the equivalent of Art. 52(2) EPC). Said the Court:

The legislator was not concerned with the phrasing of the claims.

The spirit of the statutes is to exclude patentability of solutions that are not at a technical level but at a business level.

The director of the INPI should thus appreciate the existence of an invention without being bound by the wording used in the claims.

By proceeding in this way, he did not alienate the claims. 

It even seems that the judges did not consider the different invalidity grounds to be exclusive from one another. Indeed, the court additionally found that the claims were manifestly not novel:

It obviously results from [the fact that the invention is directed to a mere automation of a business method] that the claims do not call for any search as they manifestly lack novelty.

Sesame is also the name of a famous street.

Sesame is also the name of a famous street.

But there is certainly another (procedural) reason for the Court’s approach in the present case.

Under French law, the INPI does not assess inventive step in examination proceedings. The grounds under which the director of the INPI may refuse a patent application are listed in Art. L. 612-12 and lack of inventive step is not one of them. Lack of inventive step is only a ground for patent invalidation in an inter partes trial.

As a direct consequence, the INPI cannot, from a legal standpoint, follow the Comvik approach to refuse an application directed to a business method, when the claims incorporate tangible features. Such an application can only be refused under Art. L. 612-12 if:

  • it relates to subject-matter which can manifestly not be considered as an invention (exclusion from the scope of patentability), or
  • it has not been amended, after an invitation to do so, although the lack of novelty manifestly results from the search report.

In the Sesame case, the INPI retained the first solution and did not even conduct a prior art search, declaring that no relevant comparison with the prior art could be performed, as no technical features were claimed except for a very conventional computing system.

The Court not only approved but also considered that the explanations of the director of the INPI regarding the impossibility to establish a search report were “unnecessary”, as the actual ground for refusing the application was not the lack of novelty but the exclusion from the scope of patentability.

So, it is true that the INPI reached the same conclusion that the EPO probably would have reached, i.e. the invalidity of the haulage platform claims. But by relying on the ground of ineligibility, the INPI totally discarded the raison d’être of the Comvik approach.

In fact, the patentability assessment of mixed-type claims is often a complex question. This is probably why the EPO established the sophisticated Comvik approach.

This Comvik approach starts by determining the claim’s technical character and those features that contribute to said technical character. But the EPO is well-aware that these first steps of the reasoning are not always easy to conduct (see T 1749/06).

Therefore, one often has to perform the first steps with some knowledge of the prior art. The Comvik approach provides exactly for that, because non-technical aspects are assessed within the inventive step analysis.

This is explained in the EPO Guidelines for examination (G-VII, 5.1):

Determination of the features contributing to the technical character of the invention should be performed for all claim features in step (i) (T172/03, T154/04). However, in practice, due to the complexity of this task, the examiner can normally perform the determination in step (i) on a prima facie basis only and perform the analysis at the beginning of step (iii) in a more detailed manner. In step (iii), the technical effects achieved by the differences over the selected closest prior art are determined. The extent to which the differences contribute to the technical character of the invention is analysed in relation to these technical effects. This analysis, limited to the differences, can be performed in a more detailed manner and on a more concrete basis than the one performed at step (i). It may therefore reveal that some features considered in step (i) prima facie as not contributing to the technical character of the invention do, on closer inspection, make such a contribution. The reverse situation is also possible. In such cases, the selection of the closest prior art in step (ii) might need to be revised.

When performing the analysis in steps (i) and (iii) above, care should be taken to avoid missing any features that might contribute to the technical character of the claimed subject-matter, in particular if the examiner reproduces his understanding of the subject-matter of the claim in his own words during the analysis (T 756/06).

For that reason, EPO examiners nowadays often conduct a prior art search anyway, even when they are to refuse the application for a lack of any other technical contribution than a mere automation of a non-technical method. This is however not how the EPO examiner who was in charge of conducting the search on behalf of the INPI behaved in Sesame. Indeed, the EPO examiner did not issue a search report but rather declared that no meaningful search could be performed.

By allowing the INPI not to conduct any prior art search in such a case, the Sesame decision could be broadly construed as authorizing examiners to directly refuse applications when they are faced with mixed-type claims, based on their sole interpretation of the application.

Examiners could do so even in cases in which it is not so clear which features contribute to a technical character and which ones do not.

In the present case, the Cour d’appel held that both the absence of an invention and the lack of novelty were clear. However, looking at the decision in detail, it seems that a significant reasoning actually had to be conducted in order to reach such a conclusion.

Why is the INPI not entitled to refuse an application on the ground of lack of inventive step but only on the ground of the manifest absence of an invention or a manifest lack of novelty? One explanation is that the INPI is not supposed to rely on a subjective analysis to refuse an application. The law reserves the exercice of such subjectivity to litigation.

But the question of whether a business method software invention only relates to mere automation or implies further technical considerations is usually not an easy one which can be answered without any subjectivity. Even experts in that field cannot give an answer in a straightforward manner.

It is thus questionable that the INPI should suddenly be entitled to do so. The only explanation would be that granting a patent which is invalid because it merely relates to a business method is somehow worse than granting a patent which is invalid because it relates to a solution made obvious by a combination of two prior art teachings – for example from the standpoint of legal certainty. But the decision does not provide any hint in this respect.

We thus have to wait and see how INPI examiners will behave. It will notably be interesting to monitor if they rely on Sesame to refuse mixed-type claims on a regular basis. Also, it will be interesting to see how they behave in case the EPO conducts the search (instead of declaring it meaningless) and accompanies the search report with a written opinion where the ground of invalidity is… a lack of inventive step. Will the INPI bypass the reasoning of the EPO examiner and merely refer to Sesame?

Many thanks, Aujain. So, we are left with the question of whether Sesame has planted a seed at the INPI. If readers have any intel on this, comments are welcome as usual.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, February 26, 2016, Sesame Active System v. Directeur général de l’INPI, RG No. 15/01962.

Open Sesame! (part 1)

I have always thought of case law decisions as well as experts’ commentaries on the patentability (or rather the unpatentability) of business methods as a tough read.

Fortunately for many bloggers and authors around the world, the name of one of the most significant recent U.S. decisions in this respect, namely Alice Corp. v. CLS Bank International, has elicited a mass of enjoyable headings and extended metaphors (most of them involving Wonderland one way or another) making the read somewhat more fun.

We in France did have a relatively significant recent decision on this topic as well.

And fortunately for us French bloggers and authors, the decision’s designation, Sesame Active System v. Directeur général de l’INPI, also makes a number of (bad) puns possible.

Even more fortunately for me, my partner and friend Aujain Eghbali agreed to comment on the case, in a two-part post. He does the hard work, I make the bad puns, teamwork at its best.

So thanks to Aujain, the Sesame ruling will now open up for us.

In the case at hand, Sesame Active System filed a patent application before the INPI (French patent and trademark office) in 2012 to protect a communication platform dedicated to light commercial vehicle goods transportation or haulage. The platform receives and compares information related to charterers’ offers and carriers’ capacities and constraints, so as to send most relevant offers to carriers who can thereby optimize their load. The platform has a specific architecture and specific software, and it processes data concrete and specific to vehicle loading. The platform optimizes such vehicle loading and thereby offers many advantages including global traffic reduction.

In 2013, the INPI sent a communication declaring that no search report could be established and that a rejection was to be expected, as the application related to subject-matter excluded from the scope of patentability. As far as we can tell based on the facts set forth in the judgment, it seems that this communication was sent to the applicant after the INPI itself received a similar declaration from the EPO. Indeed, French patent applications which do not claim a foreign priority are sent to the EPO which is in charge of establishing the search report, owing to an agreement between the two offices.

A few letters were exchanged between the patent office and Sesame’s representative, who attempted to resolve the situation with claim amendments and arguments.

But finally, the director of the INPI refused the application on the ground that it was directed to subject-matter excluded from the scope of patentability (in other words, to ineligible subject-matter), as it related to a method for performing mental acts or doing business as such, and the mere fact that it was automated owing to generic computing means was not sufficient to change its nature.

In addition, the director of the INPI considered that no search report could be issued: the only technical elements of the claim were those of a very generic and well-known computing system which was manifestly not novel, without a need to perform any prior art search; and no relevant comparison with the state of the art could be made as there were no technical features.

In 2015, the applicant lodged an appeal before the Cour d’appel de Paris, which led to the decision at stake.

Unsurprisingly for European practitioners familiar with this field of innovation, the Cour d’appel de Paris confirmed that the claimed system may not be patented. The court relied on general principles similar to those usually relied on by the EPO in similar cases; but on the other hand, the court also departed from the EPO’s well-established methodology set in particular by the famous Comvik decision T 641/00.

The key to the Sesame ruling.
The key to the Sesame ruling.

It should first be noted that the grounds on which the INPI can refuse a patent application are listed in Art. L. 612-12 of the Code de la propriété intellectuelle, which notably provides:

Any patent application will, wholly or partly, be refused: (…) 5° If its subject-matter can manifestly not be considered as an invention in the meaning of Article L.611-10, second paragraph;

Art. L. 611-10 which is referred to recites almost exactly the same provisions as Art. 52 EPC, and its second paragraph thus excludes from the scope of patentability methods for performing mental acts or doing business, and programs for computers.

Now, relying on these statutory provisions, the Cour d’appel de Paris held the following:

Even though this exclusion relates to “methods”, it does not follow that the mere definition of the claims with the terms “system” and “process” necessarily leads to patentability […].

The legislator was not concerned with the phrasing of the claims.

The spirit of the statute is to exclude patentability of solutions that are not at a technical level but at a business level.

The Court thus followed the general principle that, in order to get a valid patent, there needs to be a solution of a technical nature (rather than of a business nature) to a technical problem. As such, this is in line with well-established EPO case law: refusal of applications directed to business schemes is regularly approved by the boards of appeal, regardless of the incorporation of the schemes into claims involving computer hardware – such as a computer system claim or a computer-implemented method claim.

After having recalled this general principle, the Cour d’appel de Paris then held that it was not met by the invention at stake:

The claimed “system” is thus characterized by the fact that it comprises sets and subsets of data of a business nature related to deliveries to be performed for charterers (type, delivery place and date) and to haulage offers (capacity and positioning of the vehicle) as well as a CPU which compares this data.

The data “registers” are not characterized on a technical level (format, compression, etc) but only by the type (business-related) of data they contain.

The mere fact that this data is grouped into three sets (type of loading/time/space) of two subsets (charterers/carriers) relates to a mere information organization which does not bring about any technical character as such.

No technical indication is provided on the CPU, which is only characterized by the fact that it performs comparisons, that is, operations of an intellectual nature that consist in putting data in relation one with another.

Therefore, similarly to the EPO in T 172/03 (Order management/RICOH) and T 696/06 (Freight exchange/ELGRABLY), the French judges did not see any technical considerations in the data structures and data processes involved in the method of claim 1, as they were of a business and intellectual nature.

By way of comparison, T 172/03 was concerned with “an improved office system suitable to select, out of a plurality of suppliers, a supplier of expendable supplies of items needed by a section of the office“, while T 696/06 was directed to “a data processing system (x) adapted to confront an offer (o) and a demand (d) in the field of transporting travelers or goods“.

The Court further established that the automation of such data processing of a non-technical nature did not remedy the above deficiencies:

The solution thus relies on a computer system that allows its automation.

Such a system is commonly used in human activities and notably business and thus does not bring about any specific configuration.

It is not characterized at a technical level and is only defined by reference to data gathering and comparison operations that it allows to perform.

This is also in line with EPO case law which consistently holds that the mere automation of a non-technical process cannot be awarded a patent, when conventional systems are at use. See the above-cited decision T 172/03 (Order management/RICOH) and also landmark decision T 258/03 (Auction method/Hitachi).

More surprisingly, although the reasoning would have appeared sufficient with the above considerations, the French judges went a step further by adding the following subsidiary statement:

In addition, the problem raised is not solved by this data processing since the carrier is then only put in front of possible choices that could optimize his profitability.

Although very succinct and arguably not necessary for the court’s demonstration, this consideration is quite something of its own.

It clearly reminds us of the so-called “broken technical chain fallacy” concept laid out by the boards of appeal in T 1741/08 (GUI layout/SAP) and T 1670/07 (Shopping with mobile device/NOKIA). According to this concept, the need for the intervention of a user to solve an alleged technical problem breaks the technical chain and makes the whole chain non-technical.

In summary, the Sesame decision shows that, when the EPO does not grant patents for software for implementing business or administrative methods, applicants probably do not have much more to expect from French courts.

Actually, the accuracy with which the Cour d’appel applied principles also in use at the EPO in this field is remarkable. It is sometimes believed that courts in France tend to set out a “loose” reasoning. But the decision at hand shows that, even in the complex field of business method software patentability, the Cour d’appel de Paris can reach the same general conclusion as the EPO in a precise and well-reasoned manner.

That said, the Cour d’appel de Paris did not follow the exact same approach as the EPO.

Specifically, under European case law, the application should probably have been refused on the ground of lack of inventive step; whereas the Cour d’appel approved the director of the INPI for refusing the application on the ground that it was directed to subject-matter excluded from patentability. Discrepancies of this kind are not a surprise for French practitioners. Usually, such discrepancies between French practice and European practice are apparent at the litigation stage only. But in the present case, there could be consequences on prosecution before the INPI as well.

Thank you Aujain for the detailed account as well as the final cliffhanger. I am looking forward for the second part.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, February 26, 2016, Sesame Active System v. Directeur général de l’INPI, RG No. 15/01962.

Request not found

It is always much more difficult to get what you want from the patent office when you do not know exactly what you want. Or even worse, when the patent office does not know exactly what you want.

Looking at a recent batch of EPO case law decisions issued in French, I came across one example which illustrates this harsh principle. I realized a little bit late that the decision had already been discussed on the Blog européen des brevets, but here it goes anyway.

European patent No. EP 1265983 assigned to the Swiss company Danstar Ferment AG was opposed by Lesaffre International. Back in 2011, the patent was revoked by the opposition division. The patent proprietor appealed, and sadly for all users of the patent system, it is only five years later that the Board of appeal issued its decision, which is… that the appeal was inadmissible! Unfortunate that a case such as this one could not be disposed of earlier.

The reason for the inadmissibility of the appeal was that “the request which defines the object of the appeal is unclear (article 108 EPC in combination with Rules 99(1) and 99(2) EPC) (reasons, 6).

The board summarized the legal framework leading them to this conclusion in section 2 of the reasons for the decision:

According to established case law of the Boards of appeal, the appellant’s case must be presented in a consistent, clear and substantiated manner in the statement of the grounds of appeal, not only in relation with the appellant’s arguments, but also in relation with its requests (see, inter alia, decisions T 760/08 of January 19, 2010, reasons 5, and T 446/00 of July 3, 2003, reasons 2.1.1). Indeed, the purpose of the statement of the grounds of appeal as well as of the notice of appeal is to define the extent of the appeal. This definition is solely and exclusively made by the appellant (see, inter alia decision T 2532/11 of October 14, 2013, reasons 2.5.1). It is important to emphasize that, according to established case law, it is also the parties’ duty to state their requests and decide on the order of these requests (see, inter alia, decision T 148/06 of January 8, 2008, reasons 2). 

Point well taken. So, what happened in this case? First, the notice of appeal itself did not expressly state any request except that the decision under appeal should be set aside. Second, the statement of the grounds of appeal contained a discussion on claim 1 as granted and then on four auxiliary requests (referred to as “propositions of auxiliary requests” at some point in the brief).

The problem is that Danstar’s main request in first instance was not the maintenance of the patent as granted (rejection of the opposition), but rather the maintenance of the patent in an amended form.

The Board stated that it was thus unclear whether the appellant’s intention was to replace the main request filed in first instance with a new main request according to which the opposition should be rejected.

Also, the Board claimed that the so-called “propositions of auxiliary requests” could be meant to replace the previously filed auxiliary requests but could also be additional auxiliary requests.

Therefore, said the Board,

The appellant did not refer one or more clear, precise and converging requests to the Board, which would make it possible to unambiguously define the object of the appeal. 

As a side note, I wonder why the Board mentioned “converging” requests in this sentence. Surely, the converging nature of the requests is only of relevance for the admissibility of the requests themselves, and not for the admissibility of the appeal as a whole. Or is it not?

The Board made reference to some decisions, in particular T 1554/12 and T 1538/09, in which the appeal was held admissible although the appellant’s requests were contradictory or imprecise. The difference between the present case and these earlier ones was, according to the Board, that in the earlier cases the intent of the appellant was clear (despite the imprecise wording), whereas it the present case it was not.

I wanted to see for myself and thus had a look at Danstar’s statement of grounds of appeal. One can only concur with the Board that no main request was set forth in the brief. Since claim 1 of the patent as granted was discussed, it could be argued that the appellant’s intent was to go back to this original version (as opposed to the main request cited in the first instance decision, which is not cited in the brief).

On the other hand, no corresponding set of claims was attached, and the brief was silent on the dependent claims. Therefore, the Board could also have noted that the appellant’s intent with respect to the dependent claims was not clear – although, again, it may be logical to surmise that the dependent claims were also maintained unamended, just like in the auxiliary requests.

Speaking of auxiliary requests, the Board’s view on those may be considered somewhat strict. The four sets of claims were indeed attached to the statement of grounds of appeal, and the unfortunate expression “propositions of auxiliary requests” used at some point in the brief probably did not introduce a fatal ambiguity. Indeed, it was stated at the beginning of the letter: “we attach four auxiliary requests” (not four “propositions“).

In short, it seems relatively clear that the four sets of claims attached to and commented on in the statement of grounds of appeal were those that the appellant intended to rely on in the course of the appeal proceedings.

An interesting question is whether this makes any difference though. Possible answer 1 is: no, if the Board believes that the main request cannot be properly understood, the appeal cannot be decided upon at all, and it has to be held inadmissible. Possible answer 2 is: yes, the Board could disregard an unclear main request and then directly examine the auxiliary requests.

Practically speaking, the appellant did not really fight, which may partly explain the decision. They did not reply to a communication from the Board containing a preliminary opinion which was negative for them both on the admissibility of the appeal as well as on the merits of the case, and both parties renounced their right to oral proceedings.

Anyway, the take home message for us European patent professionals is that we should be crystal clear when we state our requests, and preferably use the keywords that the EPO departments expect from us (“main request“, “auxiliary request No.X“, etc.), as they are not huge fans of guesswork.

There is always a way to know what an appellant's requests are.
There is always a way to know what an appellant’s requests are.

CASE REFERENCE: T 1435/11, Board of Appeal 3.3.08, May 20, 2016, Danstar Ferment AG v. Lesaffre International.

Of yeast and insects

It is with great pleasure that I am hosting a new contribution by Lionel Vial on this blog. Today, Lionel asks the question whether the regulatory specificity of biological medicinal products has just been denied by French courts.

It is known that Supplementary Protection Certificates (SPCs) make up a particularly tricky part of patent law. So tricky that national courts regularly feel the need to refer questions of law in this respect to the Court of Justice of the European Union (CJEU); and so tricky that the answers provided by the CJEU in its preliminary rulings have a tendency to fuel yet further references from national courts.

But when it comes to biological medicinal products, things can get even thornier, especially since policymakers may have primarily had chemical medicinal products in mind when the SPC regulation was drafted.

So let Lionel now explain how the difference may come into play.

The decision we discuss today was rendered by the Cour d’Appel de Paris on April 12, 2016 and deals with the appeal lodged by the Government of the United States of America against the decision of the Director of the INPI (French patent and trademark office) to reject SPC application No.08C0003 covering Cervarix® (GlaxoSmithKline Biologicals).

As a side note, we will first remind our readers that appeals against decisions of the Director of the INPI, such as rejections of patent applications or SPCs, are to be lodged directly to the Cour d’Appel de Paris, i.e. the second instance court, and not to the first instance Tribunal de Grande Instance de Paris.

Back to the case at hand, Cervarix® is a vaccine intended for use in women and girls from nine years old to protect against cancer of the cervix (neck of the womb) and precancerous lesions (abnormal cell growth) in the genital area (cervix, vulva or vagina) caused by certain types of the human papillomavirus (HPV). Cervarix® HPV-16/18 L1 AS04 vaccine contains recombinant C-terminally truncated major capsid L1 proteins of HPV types 16 and 18 as active ingredients. The L1 proteins of HPV-16 and HPV-18 are separately produced using a recombinant Baculovirus expression system and the insect cell line Hi-5 Rix4446 derived from Trichoplusia ni.

For those not versed in the biological arts, this basically means that the antigens contained in the vaccine are shortened versions of viral proteins from two different viruses (HPV-16 and HPV-18), which proteins have been produced in vitro in insect cells.

The SPC application was filed on January 18, 2008 on the basis of European patent EP 0662132 filed on September 3, 1993 and of the Marketing Authorization (MA) No.EU/1/07/49/001 of September 20, 2007. It was rejected on March 16, 2015 by the INPI.

The decision of the INPI was essentially based on the Actavis judgment C-443/12 of December 12, 2013 by the CJEU (following a reference for a preliminary ruling from the High Court of Justice of England and Wales), and more particularly on points 40 and 42 of this judgement:

40. Bearing in mind the objective of Regulation No. 469/2009 [i.e. the SPC regulation] […] – namely, to compensate the patent holder for the delay to the commercial exploitation of his invention by providing him with an additional period of exclusivity – first, the grant of the first SPC in respect of the single active ingredient irbesartan [i.e. the drug at stake in the judgment] has already afforded the holder such compensation and, second, the objective of that regulation is not to compensate the holder fully for the delay to the marketing of his invention or to compensate for such delay in connection with the marketing of that invention in all its possible forms, including in the form of combinations based on that active ingredient. […] (emphasis added) 

42. It follows that, in such a situation, Article 3(c) of Regulation No. 469/2009 precludes a patent holder from obtaining, on the basis of one and the same basic patent, more than one SPC in connection with irbesartan, since such SPCs would in fact be connected, wholly or in part, with the same product […]”

Indeed, another SPC No.07C0020 covering Gardasil® (GlaxoSmithKline Biologicals) was granted earlier on the basis of the same patent in regard of a L1 protein from HPV16. The INPI thus considered that this previous SPC also protected the C-terminally truncated form of the L1 protein, purported to be obtained by production from insect cells, and that the product for which SPC No.08C0003 was applied for had already been the subject-matter of a certificate.

As it appears from the ruling, the main argument of the appellant against the decision of the INPI was that the HPV16 L1 protein obtained from insect cells, which forms the subject-matter of SPC No.08C0003, is a different product from the HPV16 L1 protein obtained from yeast cells, which forms the subject-matter of SPC No.07C0020, because of the differences in the glycosylation pattern and amino acid chains depending on the cell type (yeast or insect) in which the protein is produced. Accordingly, the MAs of Gardasil® and Cervarix® relate to medicinal products having different active ingredients and SPC No.07C0020 and SPC application No.08C0003 relate to different products. In addition, pursuant to Articles 4 and 5 of Regulation (EC) No 1768/92 (i.e. the previous version of the SPC regulation), an SPC may not confer a protection extending to a product which is not the one related to the marketing authorization.

"How could you possibly mistake me for a yeast?" said the beetle.
“How could you possibly mistake me for a yeast?” said the beetle.

However the Court ruled that:

As is rightly pointed by the Director of the INPI, firstly, the basic patent claims (claim 1) “an isolated HPV16 capsomer structure comprising L1 capsid protein” which is not characterized by its manufacturing process and the patent does not explain the differences between the proteins asserted by the appellant, [the patent] referring to various manufacturing processes (insect cells such as for Cervarix, yeast cells such as for Gardasil, and even mammalian cells (cf. page 20 of the patent)), secondly, the asserted differences are not mentioned either in the MAs provided with the two SPC applications which relate secondarily to the manufacturing process without drawing any conclusion regarding the protein structure, and finally, SPC application No.08C0003 initially related – before the amendments brought by the applicant in relation with the forms and production methods in response to the objections from the INPI during the examination procedure of the application – to a product defined as “L1 proteins from type 16 human papillomavirus”, this definition being precisely that mentioned in SPC application No.07C0020 filed on March 20, 2007;

Article 1 of the previously cited Regulation defines the product as “the active ingredient or combination of active ingredients of a medicinal product”, without any reference to the manufacturing process of the active ingredient;

Accordingly, the HPV16 L1 protein comprised in Cervarix and that comprised in Gardasil constitute one and the same product within the meaning of the previously cited Regulation, regardless of their possible differences regarding their forms and their manufacturing processes;

It results from Articles 4 and 5 of the Regulation that the protection and the rights conferred by an SPC are framed by the basic patent and that the MA is used to determine the product forming the subject-matter of the protection; it is thus irrelevant, for assessing the regularity of the rejection of SPC application No.08C0003, whether this application is based on an MA specially obtained for Cervarix, which, even though it aims at treating the same pathologies, is different from Gardasil, which has a different MA, since the HPV16 L1 protein comprised in the two drugs is the same;

Under these conditions, the Director [of the INPI] was right in considering that SPC No.07C0020 granted on July 23, 202 also applied to the HPV16 L1 protein comprised in Cervarix, even if obtained from insect cells, and in rejecting SCP application No.08C0003 filed on June 18, 2008 by the Government of the United States of America.

Accordingly, the decision of rejection of SPC application No.08C0003 was upheld.

This decision is interesting in that the Court decided, following the INPI, that the protection conferred by an SPC extends beyond the physical product which can be found in the marketed medicinal product to encompass all products falling within the definition of the product in the SPC or SPC application.

This construction of Articles 4 and 5 of the SPC Regulation may not give rise to too much discussion for chemical medicinal products, as in addition to C-443/12 (Actavis) it could also be considered to be an application of the previous ruling of the CJEU in C-392/97 (Farmitalia) (“where a product in the form referred to in the marketing authorisation is protected by a basic patent in force, the supplementary protection certificate is capable of covering the product, as a medicinal product, in any of the forms enjoying the protection of the basic patent”). But it may give rise to more concerns as regards biological medicinal products, as in the present case.

In fact, it can be regretted that the present decision was not taken as an opportunity to discuss – and why not to request a preliminary ruling on – the question of knowing if the same standard is to be applied to chemical and biological medicinal products when applying Articles 4 and 5 of the SPC Regulation.

Indeed, the specificity of biological medicinal products has been recognized by European Union law. By way of example, Article 10 of Directive 2001/83/EC notably provides that where a biological medicinal product which is similar to a reference biological product does not meet the conditions in the definition of generic medicinal products, owing to, in particular, differences relating to raw materials or differences in manufacturing processes of the biological medicinal product and the reference biological medicinal product, the results of appropriate pre-clinical tests or clinical trials relating to these conditions must be provided.

Accordingly, in view of the objective of the SPC Regulation which is, as was recalled above, to compensate the patent holder for the delay to the commercial exploitation of his invention by providing him with an additional period of exclusivity, it could be questioned whether biological products obtained by different manufacturing processes could not be considered as truly different products and not merely as different forms of a same product.

As a final side note, we would like to add that the above-mentioned Actavis decision of the CJEU is only one of numerous rulings following from references from the High Court of Justice of England and Wales. It is with some sadness that the commentator in us sees the Brexit taking away the most active Case Law provider in SPC matters.

Although I share Lionel’s concern regarding Britain’s major contribution to SPC case law, maybe we should not be too sad too soon; after all there are still many unknowns as to what comes next.


CASE REFERENCE: Cour d’appel de Paris, Pôle 5 chambre 1, April 12, 2016, The Government of the United States of America v. Directeur Général de l’INPI, RG No. 15/12234.

Invalidity swept under the rug

Self-represented applicants, who draft and prosecute their patent applications on their own without an extensive knowledge of patent law have a good chance of getting a French national patent granted – this is in fact not an extremely difficult task. But they also run a very high risk of getting an invalid patent granted.

One of my previous posts was dedicated to the revocation of what looked like one such patent, and today’s post is dedicated to the revocation of another one of those.

French patent No. FR 2933591 contains four claims, the first one of which reads as follows:

1. A set for praying comprising a rug, characterized in that it comprises weights at its four ends. They are made of metal or lead and are in the form of beads, or round or angular parts. The set is folded and put in a pouch. 

The three dependent claims are drafted in a similarly non-conventional manner:

2. A rug according to claim 1 characterized in that it is made of a waterproof material covered on the lower side with a silver or gold coating [I am not sure about the meaning of the French term used here] on its back. 

3. A rug according to claim 1 characterized in that it is made [sic] of a drawing indicating the direction of the prayer. 

4. A pouch according to claim 1 characterized in that it comprises adjusting seams in order to keep the rug folded. 

Globacom SARL is a company which markets Islamic products online, including prayer rugs. Globacom was sued for infringement of the above patent by the patent owner, Salmane SAS, as well as the inventor – who was the original applicant.

Globacom counterclaimed for revocation of the patent.

Their first argument was lack of novelty over an alleged public prior use of the invention. The court dismissed this argument which was insufficiently substantiated. Reference was made to a number of websites, but the contents of these websites were not submitted to the court, and the only examples actually filed did not clearly predate the filing date. Globacom also relied on prayer rugs advertised in catalogues, but these catalogues did not contain any precise description of the rugs. Lastly, Globacom mentioned the inventor’s own press releases. But the court could not identify any evidence of a disclosure before the filing date. There was a relevant publication in the issue of September 2008 of a magazine, but this was precisely the month in which the patent was filed, and the exact day on which the magazine was published was not known.

Then the defendant raised an argument of lack of inventive step, which was successful.

Unfortunately, the court did not cite in its decision specific prior art for all the claimed features. I can only assume that such specific prior art was indeed identified in the defendant’s submissions – to which the court referred to in the judgment.

The court held that

The folding, the waterproof material, the silver or gold coating and the presence of weights in order to keep the rug on the floor are indeed known functional parts. 

Besides, the folding and the drawing indicating the direction of Mecca are features introduced before the patent, as evidenced by catalogues of the Chinese company Huitai Carpet showing that as from 2005 a foldable prayer rug kept in a pouch was marketed notably under reference BT317 or BT301. 

Finally, when reading the patent it does not appear that the inventor brought any solution to a technical problem, except for transporting the rug so as to use it in any circumstance or place, which was already solved in the prior art by folding the rug and keeping it in a sleeve. 

Therefore the patent is a mere addition of juxtaposed functional means without any distinct result, so that the patent must be revoked for lack of inventive step. 

This is quite a change from the usual hyper-technical pharma or telecom cases.

The reference by the court to “juxtaposed functional means” is reminiscent of old, traditional French case law, which made a distinction between mere juxtapositions of features and combinations of features bringing a new technical effect (synergistic features if you will).

A more modern approach rather uses a reasoning akin to the EPO problem and solution approach. But this case was probably so simple that a problem and solution approach was not really necessary.

Besides, the patent itself does not contain any indication of a problem to be solved. The description is less than one page long and basically contains a copy-and-paste of the claims plus a couple of additional sentences.

So, what would have happened if the applicant had hired a professional to draft the patent application? Was there no possible patentable invention at all in this product? Could a better drafting have changed the situation? Difficult to say. Expert patent drafting is a necessary and insufficient condition for a valid patent.

As a last word on the case, Salmane SAS further argued infringement of a community design, which was also revoked by the court for lack of novelty. A copyright claim also failed as the originality of the work was not clearly defined by the plaintiff. And so did a passing-off claim.

This praying robot may be more of an invention than the foldable rug in suit.
This demo praying robot may a more sophisticated invention than the foldable rug in suit.

Some readers may wonder how on earth the foldable rug patent got to be granted by the French patent office in the first place. The answer is that the patent office is not supposed to perform an extensive screening process. It issues a search report and a written opinion, and then it is up to the applicant to decide what to do.

This does not necessarily do self-represented applicants a favor.

But for those who are fully aware of the specificity of French patent prosecution, going the national route can be really advantageous.

In fact, while everyone’s attention right now is focused on European patents with or without unitary effect, it should not be forgotten that national patents remain a valuable option.

Here is why, in my view:

  1. French patents are much easier to obtain than European patents. Applicants often have to deal with minor objections of e.g. lack of clarity. But as far as prior art objections are concerned, an application cannot be refused for lack of inventive step. It can only be refused in case there is lack of novelty, and actually only if the lack of novelty is “blatant” (i.e. there is no room for discussion).
  2. Accordingly, prosecution is much cheaper than for a European patent (even when taking into account the need for foreign applicants to provide a French translation).
  3. The lighter examination process also makes it possible for applicants to avoid making statements which could possibly constitute a form of estoppel.
  4. A search report and a written opinion (for information purposes only) either similar or exactly identical to those issued by the EPO are provided at a much lower cost.
  5. There is no pre-grant or post-grant opposition.
  6. After grant, the patent proprietor can file a limitation of the patent at any time. It is thus a possible strategy for a proprietor to get a patent granted in a form which they know is probably too broad, and then limit the patent at a later stage if and when enforcement of the patent is contemplated (or even after the patent has been asserted and subjected to an invalidity challenge).

For the sake of completeness, after this subjective list of pros, here is an equally subjective list of cons (leaving aside the scope of geographical coverage, which is an obvious point):

  1. Applicants have to take their full responsibilities when drafting and prosecuting a French patent application. They should not count on the patent office to make them amend the claims and they should not consider a patent grant as an indication that they have obtained the right scope of protection – as the case discussed above clearly shows.
  2. In terms of valuation, French patents may be perceived as weaker and thus less valuable than European patents. However, this approach is debatable; as explained above, to some extent French patents are stronger because they cannot be opposed, and they can be limited at any time if their initial scope of protection is too broad.
  3. It is not possible to enter French national phase via a PCT. Therefore, a French patent application needs to be filed either as a first filing or as a direct filing within one year from another, original filing. This is a huge handicap which puts our national patent market at a disadvantage with respect to other European countries such as Germany, where national phase entries are allowed. But that is the way it is.

In summary, I do not believe that French national patents should be considered as useless remains of the pre-EPC, pre-UPC world. Together with Unitary patents, opted-out European patents and non opted-out European patents, national patents are yet another valuable option in an ever more complex IP landscape, which requires flexible strategies… Provided that great care is brought to the drafting.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 3ème section, March 25, 2016, Salmane SA v. Globacom SARL, RG No. 13/06836.