A new hope

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

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

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

Aujain reports.

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

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

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

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

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

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

A secret method for properly drafting software patent applications.

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

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

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

Claim 1 of the main request read:

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

characterized in that it comprises the steps of:

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

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

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

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

The first instance examiners considered in particular that:

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

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

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

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

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

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

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

The Board itself conceded:

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

But then:

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

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

Regarding sufficiency of disclosure, the Board held:

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

And regarding clarity issues when assessing inventive step:

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

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

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

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


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

U-turn at the EPO

Who said patent law is boring? Sometimes, it can be as hectic as an episode of 24.

Look at the unitary patent package. One day it is supposed to enter into force anytime soon, then a UK referendum creates mayhem. In the following episode, the project is back on tracks. Next thing you know, bang, a constitutional challenge in Germany pops up in the season’s finale, and this is your cliffhanger until the next season.

These days, the same seems to be true of the issue of patentability of plants and animals obtained by essentially biological processes. Lionel Vial reports.

Some news regarding the patent eligibility of plants or animals obtained by essentially biological processes, which was previously discussed here and there on this blog.

On June 29, 2017, the Administrative Council of the EPO took a decision amending Rules 27 and 28 of the Implementing Regulations to the EPC.

Here are the amended Rules (with the amendments underlined):

Rule 27 – Patentable biotechnological inventions

Biotechnological inventions shall also be patentable if they concern:

(a) biological material which is isolated from its natural environment or produced by means of a technical process even if it previously occurred in nature;

(b) without prejudice to Rule 28, paragraph 2, plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety;

(c) a microbiological or other technical process, or a product obtained by means of such a process other than a plant or animal variety.

Rule 28 – Exceptions to patentability

(1) Under Article 53(a), European patents shall not be granted in respect of biotechnological inventions which, in particular, concern the following:

(a) processes for cloning human beings;

(b) processes for modifying the germ line genetic identity of human beings;

(c) uses of human embryos for industrial or commercial purposes;

(d) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.

(2) Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.

Breaking news: Archie Asparagus and Charlie Carrot remain patentable.

The decision also provides that amended Rules 27 and 28 entered into force on July 1, 2017 and that they apply to European patent applications filed on or after this date, as well as to European patent applications and European patents pending at that time.

The interpretation of the amendments appears to be quite straightforward: plants or animals which are exclusively obtained by means of an essentially biological process are not patent eligible.

To make a long story short, this decision aims at putting an end to a story which began with decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II) of March 25, 2015 of the Enlarged board of appeal (EBA) of the EPO. These decisions held that the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to a plant or plant material such as a fruit or plant part. The EBA decisions caused a certain turmoil in Europe, triggering fears among the public that producers and growers of plants obtained by essentially biological processes might be patent barred from practicing their activity.

As a consequence, France excluded from patentability products exclusively obtained by essentially biological processes for the production of plants and animals on August 8, 2016 (the Netherlands and Germany had already done so in 2010 and 2013).

Furthermore, the European Commission issued a notice on November 8, 2016 taking the view that the EU legislator’s intention in the so-called Biotech 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.

Eventually, a notice from the EPO dated November 24, 2016 informed the public that follow-up measures further to the Commission’s notice were under discussion with representatives of the member states of the European Patent Organisation. Pending this discussion, proceedings before EPO examining and opposition divisions in which the decision entirely depended on the patentability of a plant or animal obtained by an essentially biological process were stayed ex officio.

So, is the decision of the Administrative Council of June 29, 2017 the end of the story?

Well, we are not so sure.

Indeed, there are at least two points which will require some clarification in our opinion.

The first point regards the interpretation of the word “exclusively”, which happens to be found nowhere in the EPC nor in the Biotech Directive. Besides, to our knowledge, no guidance has been offered by the legislator either (the Administrative Council in this case) on its intent when using that word.

Let’s try by ourselves then.

The first interpretation which comes to mind is that “exclusively” is merely meant to emphasize that plants or animals which are obtained by means of a mix of an essentially biological process and a non-essentially biological process are not excluded from patentability.

In that case, “exclusively” may seem a little superfluous, as simply providing that European patents shall not be granted in respect of plants or animals obtained by means of an essentially biological process would probably also have made the job.

The second interpretation is that “exclusively” relates to the different ways the plant or the animal can be obtained. According to that interpretation, European patents would be denied only for plants or animals which at the filing date could only be obtained by an essentially biological process, whereas plants or animals which at the filing date could be obtained by an essentially biological process but also by an independent non-essentially biological process would still be patentable.

As readers will surely have noticed, this interpretation is reminiscent of decision G 2/06 of the EBA according to which, with respect to Rule 28(c) which prohibits the patentability of uses of human embryos for industrial or commercial purposes, the prohibition only concerns claims directed to products which – as described in the application – at the filing date could exclusively be prepared by a method which necessarily involved the destruction of the human embryos from which said products are derived (even if said method is not part of the claims).

It could thus be possible, under this interpretation, that a European patent could still be granted for a claim pertaining to a plant or an animal, which is only described in the application as being obtained by means of an essentially biological process, provided this plant or animal could also have been obtained by a non-essentially biological process at the filing date.

The second point to be clarified regards the application of amended Rules 27 and 28 EPC to European patent applications and European patents pending on July 1, 2017, i.e. filed before their entry into force, which in our opinion does not follow as evidently from the decision of the Administrative Council as the latter may consider.

Here again, G 2/06 offers some guidance.

The EBA further decided in that case that Rule 28(c) EPC (formerly Rule 23d(c) EPC), which was introduced by decision of June 16, 1999 of the Administrative Council of the EPO, applied to all pending applications, including those filed before the entry into force of the rule. It seems quite clear.

However, in point 13 of the decision the EBA notes that:

The introduction of this new chapter without any transitional provisions, can only be taken as meaning that this detailed guidance on what was patentable and unpatentable was to be applied as a whole to all then pending applications. It has not been argued that Rule 28 (formerly 23d) EPC took away the possibility to patent anything which had previously been regarded as patentable under Article 53(a) EPC, nor that the Directive did so (see in this respect the reference in Art. 6(1) to what is contained in Article 53(a) EPC as well as the reference to the TRIPS Agreement in Article 1(2)). Already by 1984 (see Dolder, Mitteilungen der Deutschen Patentanwälte, 1984, 1, “Barriers to patentability of biotechnological inventions under the EPC”), instrumentalization of the human body (as opposed to parts of it), thus degrading it to an object of technology, had been considered as a barrier to patentability. There is no indication that the commercial exploitation of human embryos was ever regarded as patentable.

Well, in the case at hand, it appears that plants or animals obtained by means of essentially biological processes were indeed previously regarded as patentable under Article 53(b) of the EPC (remember G 2/12 and G 2/13?).

Accordingly, there does appear to be a ground to challenge the application of amended Rules 27 and 28 EPC to applications and patents filed before July 1, 2017 before the boards of appeal of the EPO.

In fact, clarifications will surely be brought to the above points, as the agriculture industry is not deprived of deep-pocketed applicants who will fiercely defend their applications before the examination/opposition divisions and boards of appeal of the EPO.

Thank you Lionel. Let’s wait for the next episode then. But, dear readers, don’t hold your breath, though. 24 hours is not exactly the kind of time scale we are talking about in the patent law saga.

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?