Identifying technicity

What does a patent-eligible invention have in common with obscenity? Some may be tempted to answer that, in both cases, I know it when I see it, as the famous phrase goes. 

But the EPO would certainly not share this view, as the Boards of appeal have consistently worked on framing elaborate eligibility / inventive step tests so as to exclude any intuitive approach to the issue – the prize to pay being that this body of case law makes for a difficult read.

In today’s post, Aujain Eghbali examines if and how said extensive case law can be applied to the examination of French patent applications as well.

The examination of applications related to software inventions in France has been known to yield unpredictable outcomes. This is because, while substantive grounds provided to the French patent office (INPI) to refuse applications include the manifest exclusion from the scope of patentability (ineligibility) and the manifest lack of novelty in view of the search report, they do not include the lack of inventive step (which is only a ground for nullity).

Now, readers familiar with EPO practice know that software inventions are nowadays almost systematically examined under the scope of inventive step at the EPO. The mere mention of the use of a computer in a method claim allows passing the eligibility bar.

In this context, it has not been clear whether INPI examiners can rely on the ineligibility ground to refuse applications, or whether on the contrary they have to comply with EPO case law and conclude that there is no ground for a refusal.

Recent French court decisions, some of which were commented on this blog (here, here, here and there), seem to favor the first solution. The Sesame decision in particular confirmed the refusal by the INPI of a computer-implemented business method on the ground of ineligibility.

While this increase in legal certainty is surely appreciated, these recent developments raise other issues. One may notably ask the following question:

To what extent could INPI examiners apply principles established by the EPO in relation with the inventive step analysis in order to assess the patentability of software inventions, when they can only raise another ground?

EPO board of appeal decision T1992/10 of September 8, 2016 may be a good basis for the beginning of an answer.

SAP had filed a European patent application related to a solution to check the integrity of a shipment. The solution consists in calculating an initial identifier of a set of objects of the shipment based on individual identifiers, before sending the shipment. When the shipment arrives, the same algorithm is used to compute a set identifier for all arrived objects and the result is compared to the initial identifier. A match indicates integrity of the shipment.

Claim 1 according to the auxiliary request read as follows:

A computer-implemented method for checking the integrity of a shipment that includes multiple products, the method comprising:

calculating, prior to shipping, a set identifier for the shipment, the calculating comprising:

– receiving (210), at a tag reader, a first identifier from a first identification tag (130a; 570a; 730a) associated with a first physical object (120a; 560a; 720a);

– receiving (220), at the tag reader, a second identifier from a second identification tag (130b; 570b; 730b) associated with a second physical object (120b; 560b; 720b);

– determining (230) the set identifier at the tag reader, the set identifier corresponding to a set (110) of physical objects that includes the first physical object (120a; 560a; 720a) and the second physical object (120b; 560b; 720b), based on the first identifier and the second identifier, wherein the determining further includes:

— sorting (440) the first identifier and the second identifier to produce sorted identifiers, such that, for all pairs of identifiers, a first identifier of a pair appearing before a second identifier of the pair indicates that the first identifier is less than the second identifier;

— combining (450) the sorted identifiers to produce a combined set identifier by concatenating the first identifier and the second identifier in sorted order; and

— applying (460) the SHA1 algorithm to the combined identifier to produce the set identifier;

– associating (240-270) the set identifier with a web page (180a) that corresponds to the set (110);

calculating a set identifier for the shipment after shipping to verify the integrity of the shipment;

when the set identifier calculated prior to shipping matches the set identifier calculated after shipping, determining that no products have been removed from or added to the shipment in the time between the calculation of the two set identifiers, and

when the set identifier calculated prior to shipping differs from the set identifier calculated after shipping, determining that at least one product has been removed from or added to the shipment in the time between the calculation of the two set identifiers.

According to SAP, both with and without the invention, it was necessary to scan all arriving objects; but with the invention, only one comparison subsequently needed to be made: the identifier calculated on arrival had to be compared with the identifier calculated before shipping. Without the invention, many individual comparisons would be needed. Furthermore, SAP argued that the specific algorithm used to produce the set identifier performed speedily. Also, the final comparison could be made fast, thanks to the format of the set identifier.

A non-computer implemented identification tag – therefore a technical one?

The Board considered that the contemplation of a set identifier in particular to perform a shipment integrity check did not involve any technical consideration as such. Furthermore, the Board was not persuaded that the effects argued by the appellant were actually obtained (speedy identifier calculation and fast comparison).

Also, the Board did not buy the argument related to only one set identifier comparison to be eventually made instead of many individual comparisons. On this topic, the Board not only noted that a database programmer would tend to send one composite query rather than a series of individual queries, but the Board also considered again that the alleged effect was not credible since no details about the comparison were provided in claim 1.

As a conclusion, the algorithm did not seek to overcome a limitation of a computer, but was imposed from the outside for the non-technical purpose of providing a set identifier.

Whether we agree with this reasoning or not, the part of the decision most interesting to me lies elsewhere, where the Board considered:

10. This is not a case in which a clearly non-technical method, consisting of non-technical steps, is performed by a computer, essentially by telling it to carry out the steps involved. Such cases normally fail under the approach in T 0641/00, Two identities/COMVIK, OJ 2003, 352, which, by placing the steps in the statement of the objective technical problem, in essence ensures they do not contribute to inventive step. With such a method, the novelty and obviousness of the steps themselves need not be assessed and the salient question for inventive step is often only whether the implementation of the steps using a computer would have been obvious. In most cases, it would have been.

11. This contrasts with the present invention, in which, although the steps are per se non-technical, a technical contribution cannot be immediately ruled out. The need to investigate the obviousness of these steps depends on such a contribution. The aim of the invention is a non-technical one: identify objects and sets of objects, and keep track of them. The present invention, however, starts from an existing technical method of identifying objects. It seeks to overcome shortcomings in that technical method, and raises rather more problems than the cases referred to above. Are the shortcomings themselves technical? Are technical means used to overcome them? In short: what is the technical effect on the prior art system?

12. That is a matter that requires care. On one side, the technology of the starting point, or its shortcomings, should not be trivialised. On another, circumventing a problem, rather than solving it, is no basis for an allowable claim.

As we can see, the Board introduced a distinction here between SAP’s invention and others which consist in performing a clearly non-technical method, consisting of non-technical steps, by a computer.

The Board considered that, in the shipment integrity check case, care should be taken before ruling out the technical contribution of a step apparently non-technical. The Board suggested performing a thorough analysis of effects alleged to be provided by the invention in view of the prior art, and then only searching for those effects which are technical and credibly achieved.

This decision therefore stresses that, when a computer-implemented invention does not relate to performing a clearly non-technical method by a computer, it is of the utmost importance to assess its patentability within the scope of inventive step, such that the prior art can be discussed. The Board thus reminded us that the approach developed by EPO case law is not merely cosmetic.

Now, once again, the ground provided to INPI examiners to refuse computer-implemented inventions is the manifest exclusion from the scope of patentability.

We know that although the INPI can refuse an application on the ground of a manifest lack of novelty, the lack of novelty has to be really blatant for the INPI to refuse the application. We also know that the INPI cannot refuse an application on the ground of a lack of inventive step. As mentioned in the Sesame post, when there is room for discussion on patentability the legislator probably wanted said discussion to occur within a trial rather than during examination.

I believe that this principle should fully apply to computer-implemented inventions: when there is room for discussion on the presence or not of a technical contribution, said discussion should not occur at the examination stage. In other words, there should be situations where the INPI admits that exclusion from the scope of patentability is not manifest.

Decision T1992/10 not only provides a reason why but also a criterion that the INPI could apply: is the computer-implemented method merely a clearly non-technical method implemented by a computer?

Thank you Aujain. Who knows, maybe we will get some clarification in the next version of the French guidelines for examination? Those may still have a long way to go before they can match the completeness and reliability of the EPO guidelines.

CASE REFERENCE: T1992/10, Board 3.5.01, September 8, 2016, Set Identifiers / SAP.

French courts get IT

Some patent attorneys are more passionate about IT than others. See, when I read this acronym, the first thing that comes to my mind tends to be Stephen King’s classic goosebumps-giving novel. My partner Aujain Eghbali, on the other hand, immediately thinks of databases, networks and the like.

This is why I am particularly delighted that he has taken it upon himself to update us on the increasing alignment of French courts on EPO case law regarding computer-implemented inventions.

Here is to him.

Although the provisions of article 52 EPC regarding the ineligibility to patent protection of computer programs as such are repeated word-for-word in article L.611-10 of the Code de la propriété intellectuelle, French practitioners like to remind applicants that French courts are not bound by EPO case law.

Such precaution used to be particularly appropriate in the field of computer-implemented inventions, as only very little national case law was available until recently.

The situation has however started to become clearer since a few decisions commented on this blog were issued (see here, here and there). I have notably written on this blog based on my understanding of the Sesame decision 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.

A recent decision Xaga Network v. Ewalia of November 18, 2016, by the Paris Tribunal de grande instance seems to extend this principle to other types of computer-implemented methods.

In this decision, French patent No. FR 2948788 (corresponding to EP App. No. EP 2460112 and to US App. No. US 2012/311525) owned by Xaga Network was revoked. The patent was directed to a system allowing users to easily customize generic applications without any coding, such that the users need not be skilled programmers.

Claim 1 of the patent read:

An application management system, characterized in that it comprises at least one dataspace adapted to be associated to an application, said dataspace comprising:

– at least one organizational entity able to be linked in at least one other dataspace and comprising a plurality of first components;

– at least one operational entity comprising a plurality of second components;

the first and second components being able to be activated/deactivated by parameterization within said dataspace according to the managed application.

The owner stated that the claimed system enabled the development of preconfigured applications adaptable and customizable by a simple activation-deactivation of the modules, without any new coding. The patent addressed a technical problem, namely, how to select the components that will be used in an entity for an application. The patent further solved this problem by a component activation/deactivation system within a dataspace. The proposed technical solution thereby made it possible for the user not to necessarily have technical knowledge to implement the invention.

Obviously, the nullity claimant did their homework and duly noted that the EPO had refused the corresponding application, although claim 1 was very extensively amended during examination at the EPO to eventually recite:

A system for managing applications (APP), characterized in that it comprises:

– a web server (SRVW) including: 

– objects comprising one or more predefined and pre-assembled components (Cp), said objects forming:

– a generic model of Organization (MGO) composed of logical organizational entities (ST) forming sets of identified physical persons, said logical organizational entities (ST) being possibly configured to be linked together;

– a generic management model (MGG) composed of logical operational entities (EO), an operational entity comprising at least one task which can be implemented by at least one person, said logical operational entities being possibly configured to be linked together;

– a generic pilot model (MGP) consisting of data analysis tools (OA) so as to monitor, owing to a set of indicators, actions performed on at least one operational entity (EO);

– a generic model (MGS) of screens and kinematics (SCR) for a user interface (Ul), said kinematics corresponding to a sequence of screens;

– a set of tables and files (G_TAB) characterizing the possibilities of activation and personalization of the objects and characterizing the processes, flows and rules associated with the objects;

– identification tools (ID_T) of the possible activations of objects linked to an initial activation of an object;

– management tools (MG_T) allowing the construction of logical networks comprising data spaces, and preassembled links that can be activated and customized, each data space being composed of all the objects,

– a connector object (ML) searching for tables and files corresponding to the activation and personalization of components of the object and object data to be displayed in the areas of the corresponding screen;

a data server (SRVD) including a predefined single physical database (DB1) comprising the data corresponding to said objects.

A figure as scary as a lengthy claim to an application management system.

The EPO examining division construed the application as relating to an abstract model comprised in a Web server, consisting in a collection of generic objects and data, and meant to facilitate the programming of applications by unskilled users.

The EPO considered that such a purpose was not of a technical nature and referred to the old decision T 0204/93 which had previously held that “generating concrete software programs from supplied generic specifications, i.e, reusable software modules, involving computer programs as such, and a computer implementation of mental acts, does not make a contribution in a field outside the range of excluded matters”. This decision has been constantly followed by the EPO boards of appeal.

Examiners are used to overkilling applications when they refuse them.

Accordingly, the examining division further added that claim 1 in any case did not clearly provide a solution to the problem of facilitating the management of applications, the claimed model being too vague for that. The division probably wanted to remind the applicant, before they considered filing an appeal (which they did not), of the particularly high bar regarding clarity when it comes to computer-implemented inventions.

The question of whether both the problem and its solution are technical is critical here. Thus, the EPO is particularly strict on the requirement that all “ingredients” for solving the alleged problem should be present in the claim, so that the problem is effectively solved on the whole claimed range. While practitioners used to chemistry or biotechnology inventions are familiar with this approach, European patent attorneys know that the EPO is sometimes more lenient in other technological fields, such as mechanical engineering.

Interestingly, the French court followed both lines of reasoning, holding first that the claim related to software as such and that the programming activity field did not constitute a patentable technical activity, and second that claim 1 described “an abstract scheme which does not offer any technical solution to the application management facilitation problem it pretends to solve since it is not made explicit how the proposed management system effectively helps the user”.

Like in the Sesame decision, I must say that I am quite impressed by the capacity of French legal judges to level up to EPO case law’s subtleties in the area of software patentability, which is not known as the most limpid literature even to technical practitioners such as European patent attorneys.

These recent developments teach us that French courts are probably taking the path of European legal harmonization in the field of software patentability by integrating principles well-established at the EPO in that area. This increase in legal certainty will surely be appreciated by most applicants, especially by those who understood early on that a patent granted by the INPI (French patent office) for a computer-implemented invention meant so little that they played the game of filing directly at the EPO.

But this leaves open the question already asked at the end of the Sesame post: how will the INPI deal with an application blatantly not providing any technical solution to a technical problem, from now on?

As a final word, Aujain also wanted to draw our readers’ attention to the U.S. counterpart of the patent at stake. He says the applicant also had a very hard time at the USPTO, as the claims were deemed not to relate to statutory subject-matter, but were also held to lack the equivalent of clarity in Europe. And yet, this happened pre-Alice.

So, this may be a sign of a growing harmonization also across the Atlantic.

CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 2ème section, November 18, 2016, Xaga Network SAS et al. v. Ewalia et al., RG No.2013/11351.

Stay ordered in a rush

Today’s post will remain delightedly short – for once – as I would just like to update readers on the currently hot topic of “biological patents” (this expression being a shortcut of course). 

At the end of a recent post co-penned with Lionel Vial, I briefly mentioned a notice by the European Commission regarding the so-called biotech Directive 98/44/EC. The Commission took the view in this notice that the EU legislator’s intention in the Directive was to exclude from patentability products (plants/animals and plant/animal parts) that are obtained by means of essentially biological processes.

This view by the Commission is contrary to the position recently taken by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13 of the Tomato and Broccoli sagas. The final words in the post were that patentability of biological materials in Europe is currently on moving grounds, and that more episodes of this developing story were to be expected.

No, this is not an illustration of a EU commissioner. I was just wondering whether this creature was obtained through an essentially biological process.
No, this is not a picture of a EU commissioner. I was just wondering whether this creature was obtained through an essentially biological process.

However, what Lionel and I did not expect is that the new developments would be so quick.

According to a notice from the EPO dated November 24, 2016 (but actually published only on December 12), “follow-up measures” further to the Commission’s notice are under discussion with representatives of the member states of the European Patent Organisation.

In the meantime, the president of the EPO has decided that all proceedings before examining and opposition divisions in which the decision depends entirely on the patentability of a plant or animal obtained by an essentially biological process will be stayed ex officio.

This notice from the EPO does come as a surprise.

Clearly, the notice from the European Commission has no binding effect on the EPO. The EPC is a non-EU international agreement. Rule 26 EPC specifies that the biotech Directive shall be used “as a supplementary means of interpretation” when it comes to European patent applications and patents concerning biotechnological inventions. But there is no organic link between EU institutions and the EPO. Thus, the EPO or the Enlarged Board of Appeal may very well have a different interpretation of the biotech directive than the EU institutions.

On the other hand, since the majority of the EPC contracting states are members of the EU (and this is supposed to remain the case in the future, Brexit notwithstanding), some consistency between the approaches taken by the various institutions involved would be highly desirable.

Gossip has it that the president of the EPO is looking for any opportunity to throw tomatoes (or broccoli) at the Enlarged Board of Appeal – things between them being what they are. Now, gossip is seldom reliable; but is it conceivable that the EPO management might currently show less deference to the Enlarged Board’s views on a number of topics than in the past?

What will happen next is anyone’s guess – though of course the stay of proceedings does not bode well for biological product patents or applications.

  • Will the EPO align its practice on the Commission’s notice? If so, how? Will an amendment of the Implementing Regulations be proposed?
  • Shouldn’t the EPO wait first for the Court of justice of the EU to have its say on the matter, one way or another? After all the Luxembourg judges may not necessarily share the same interpretation of the Directive as the Commission.

The bottom-line is that the fate of products obtained by essentially biological products is becoming again very much a matter of public policy.

In this respect, it is quite interesting to note that France, sometimes mocked by its neighbors for its handling of patent matters, was first to act before the Commission’s notice, as reported in the earlier post.

Finally, as explained by Lionel in the post, most interesting is the definition of which processes are essentially biological and which processes are not. Various stakeholders have vastly different views in this respect. Is it possible that, on this issue as well, the Boards of Appeal’s position could at some point of time be at odds with that of member states or EU institutions?

Biological patents: an endangered species

Last August, while most of the patent profession was enjoying well-earned holidays, the Code de la propriété intellectuelle (CPI) was amended in a way that may significantly alter the fate of patents on biological materials.

So much so that my colleague Lionel Vial wonders whether France may become a safe haven for copies of patented plants.

Here are his thoughts on the subject.

The so-called law for the recovery of biodiversity, nature and landscape dated August 8, 2016, which entered into force on August 9, 2016, has introduced two amendments into the Code de la propriété intellectuelle (CPI).

The first amendment is the addition of a new paragraph in article L. 611-19 CPI:

I – The following shall be unpatentable:

1° Animal varieties;

2° Plant varieties as defined in Article 5 of Regulation (EC) No. 873/2004 […];

3° Essentially biological processes for the production of plants and animals. A process that consists entirely of natural phenomena such as crossing or selection shall be regarded as such;

3° bis Products entirely obtained by the essentially biological processes defined in 3°, including the elements constituting these products and the genetic information they contain;

4° Processes for modifying the genetic identity of animals which are likely to cause them suffering without substantial medical benefit to man or animal, as well as animals resulting from such processes.

II – Notwithstanding the provisions of (I), inventions which concern plants or animals shall be patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety.

III – The provisions of I (3°) shall be without prejudice to the patentability of inventions which concern a technical process, in particular a microbiological one, or a product obtained by means of such a process; any process involving or resulting in or performed upon a microbiological material shall be regarded as a microbiological process.

According to parliamentary discussions during the lawmaking process, this amendment was essentially triggered by decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II) of the Enlarged board of appeal of the EPO. As a reminder, these two decisions provided that the exclusion of essentially biological processes for the production of plants from patentability in article 53(b) EPC does not extend to product claims directed to plants or plant materials such as plant parts.

The idea was also to push for a modification of European Union law, in particular of Directive 98/44/EC, after similar amendments were made in German and Dutch national laws (see Patentabilty of Plants in epi information 4/15:156-168).

However, the French version of this new exclusion from patentability is broader than a prohibition of patents on products entirely obtained by essentially biological processes, like in Germany and the Netherlands. Indeed, the exclusion also encompasses elements constituting these products and the genetic information they contain.

According to statements made by members of parliament promoting this amendment, the aim was to further prevent native traits of plants from being patented.

As a consequence, the exact scope of this new exclusion from patentability is not simple to delimit. Indeed, from a teleological point of view, it appears that elements from plants previously occurring in nature are also intended to be excluded from patentability by this provision. In contrast, based on a literal approach, only elements from plants entirely obtained by essentially biological processes, and thus obtained by human action, should be excluded from patentability. This would also be consistent with article 3.2. of Directive 98/44/EC per which

Biological material which is isolated from its natural environment may be the subject of an invention even if it previously occurred in nature.

The impact of the amendment of article L. 611-19 CPI should nevertheless be relatively limited, as it applies only to French patents. Besides, the INPI (French patent and trademark office) had already decided, before the entry into force of the new law, that it would not apply G 2/12 and G 2/13 and that it would refuse to grant French patents pertaining to biological material obtained by essentially biological processes.

But lawmakers also added a third paragraph in article L. 613-2-3 CPI which defines the protection conferred by a patent on biological material and which applies both to European and French patents (possibly including those already granted before the entry into force of the new law):

The protection conferred by a patent on a biological material having specific characteristics as a result of the invention shall extend to any biological material derived from that biological material through propagation or multiplication and having the same characteristics.

The protection conferred by a patent on a process for producing a biological material having specific characteristics as a result of the invention shall extend to biological material directly obtained through that process and to any other biological material, derived therefrom, by reproduction or multiplication and having the same characteristics.

The protection conferred by a patent relating to a biological material having specific characteristics as a result of the invention does not extend to biological materials having these specific characteristics, obtained independently from the patented biological material and by an essentially biological process, nor to biological materials obtained therefrom, by reproduction or multiplication.

Our readers may have difficulties determining the exact scope of this exclusion from patent protection. If so, we would be inclined to think that this is not entirely due to the translation, as the French text itself is quite cryptic.

Let’s try to get things straight.

The aim of this amendment is mainly to prevent seed makers who use essentially biological processes to generate genetic diversity when producing new seeds from being prohibited to use or sell the new seeds thus obtained because of existing patent rights.

An enlightening example for understanding the motives of the lawmakers in this regard relates to the aphid-resistant lettuce case which was referred to by several members of parliament during the debates.

In this case, the French seed maker Gautier Semences, a family business, was allegedly forced into a license agreement with Rijk Zwaan in respect of European patent EP 0921720, to be able to continue to market the aphid-resistant lettuce seeds it had been selling before the patent was filed.

As a side note, claim 1 of the patent as maintained in amended form after opposition proceedings reads as follows:

Lettuce plants of the species Latuca sativa L. which are resistant to the aphid Nasonovia ribisnigri due to presence in the genome of the Nr resistance gene, characterized in that the genetic information responsible for the CRA phenotype is absent from the genome of the plant at least to such an extent that in the presence of the Nr gene in homozygous condition the CRA phenotype is not expressed.

But how on earth could this patent be enforced against Gautier Semences, as they should benefit from prior user rights? In addition, shouldn’t there be a serious novelty issue in view of the seeds marketed by Gautier Semences?

The response is that in theory Gautier Semences should indeed have been immunized against the effects of Rijk Zwaan’s patent. However, evidence of prior user rights or of public prior use may be difficult to provide, especially for an SME.

The new provision should therefore facilitate the defense of those marketing biological materials covered by a patent, when the materials were obtained by an essentially biological process. However, it will probably still be necessary for those wishing to take advantage of this provision to prove the latter fact.

Besides, it should be noted that the new provision goes beyond simply addressing situations such as the above aphid-resistant lettuce case, as it applies to any biological material obtained by an essentially biological process, irrespective of whether it was obtained before or after the patent was filed.

Now that we have a better view of the aim of the new provision, let’s examine two interesting consequences.

The first one is in relation to the meaning of the expression “essentially biological processes”.

At least we can tell that this plant material was not obtained by an essentially biological process.
At least we can tell that this plant material was not obtained by an essentially biological process.

This expression is not defined as such in the rest of the statute. Reference is made to “essentially biological processes for the production of plants and animals” in Article L. 611-19 3° CPI. The same article also provides that “processes that consist entirely of natural phenomena such as crossing or selection shall be regarded as [biological processes]”.

Accordingly, it is possible that the expression “essentially biological processes” in Article L. 631-2-3 CPI could be construed as not being limited to processes entirely consisting of natural phenomena such as crossing or selection.

This may be apparent from the parliamentary history of the new provision which, until the last round of amendments and vote (out of 7!) still recited:

The protection defined in the first paragraph of the present article does not extend to the biological materials entirely obtained by the essentially processes defined in the third paragraph of part I of article L. 611-19 CPI.

The result of this last minute amendment, the justification of which was to protect the French seed industry, was to cancel any explicit reference to a process that entirely consists of natural phenomena such as crossing or selection being regarded as a biological process.

A consequence could therefore be that plants obtained by a process involving, among steps of a biological nature such as crossing or selection, a step of random mutagenesis, and having properties similar to a plant covered by a patent, could be considered as being obtained by an essentially biological process and would thus be excluded from patent protection.

Indeed, the French union of seed makers (Union Française des Semenciers) for instance considers that random mutagenesis, e.g. by the use of chemical agents or ionizing radiations, yields native traits, i.e. traits that could be obtained through natural processes

It will be interesting to see how case law will develop in this regard, especially in view of new mutagenesis techniques, such as the superstar CRISPR/Cas9 technique for which Monsanto has just secured a non-exclusive license.

Another consequence of this last minute amendment, which might be seen as a huge side effect, is that the exclusion from patent protection set by the new provision in article L. 613-2-3 CPI is not confined to plants and animals but now encompasses all biological materials and potentially microorganisms.

Again, it remains to be seen how patents pertaining to isolated microorganisms endowed having specific characteristics, e.g. food transformation or health properties, will be enforced against microorganisms having these characteristics but which were isolated independently from the patented microorganisms.

At present, there is no way for patentees to escape the new provision. However, there might be one in the future owing to the Agreement on a Unified Patent Court. Indeed, the limitations of the effects of a non-opted out European patent will be defined by Article 27 of the Agreement… and not by the French statute. That is, if the agreement ever enters into force…

Many thanks, Lionel. Struggling to figure out what a new legal provision exactly means, and guessing about unintended fallout are probably the perks of every single patent law reform.

Conformity of the new provisions to the biotech directive 98/44/EC could also be an interesting and tricky question. All the more so that the European Commission released a notice which was published in the Official Journal of the European Union a few days ago.

The notice addresses a number of aspects of the biotech directive. It is in particular stated that:

The Commission takes the view that the EU legislator’s intention when adopting Directive 98/44/EC was to exclude from patentability products (plants/animals and plant/animal parts) that are obtained by means of essentially biological processes.

The Commission’s view is thus contrary to the position taken by the Enlarged Board of Appeal and on the face of it consistent with at least part of the recent amendment of French law.

Clearly, patentability of biological materials in Europe is on moving grounds right now. I would not be surprised if there were more episodes of a tomato, brocoli or lettuce saga coming up in the near future.

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.