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 No. US 2012/311525) owned by Xaga Network was revoked.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.

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