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.

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