The provisional provisions

Further to the recent enactment of the loi PACTE, a game changer for French patent law, a whole bunch of implementing rules was due to ensue.

We have now had a glimpse of what the first salvo of the implementing rules will look like, as the DGE (Direction Générale des Entreprises) has just released a draft of executive order. Comments are in the process of being collected by various professional associations such as the CNCPI, the French AIPPI group, and others.

The purpose of this draft executive order is twofold: to redesign the rules on utility certificates; and to introduce the concept of provisional patent applications.

Let’s start with utility certificates. As a reminder, according to article 118 of the loi PACTE, the maximum duration of utility certificates is supposed to be brought from 6 years to 10 years; and it will now be possible to convert a utility certificate application into a patent application, whereas only the opposite is possible as of today.

The draft executive order specifies that the request to convert a utility certificate application into a patent application needs to be filed within 18 months from the filing or priority date, and at any rate before technical preparations for publication are completed. The deadline for requesting the opposite conversion (from patent application to utility certificate) will be aligned accordingly.

Protection of legal certainty for third parties was certainly the main concern here. By the time the patent application or utility certificate gets published, the fate of the IP right will be fixed – either patent or utility certificate application.

The main difference then between a patent application which was filed as such and a patent application stemming from a utility certificate application is that the former will generally be published together with a search report (assuming that it is a first filing), while the latter may not (since no search report is established for utility certificates). I wrote “assuming that it is a first filing“, because search reports for patent applications claiming a foreign priority are generally established at a (much) later stage.

The deadline for paying the search fee for a utility certificate application converted into a patent application will be 1 month from the request for conversion.

Regarding the increase in duration of utility certificates, from 6 to 10 years, a big question mark at the time the loi PACTE was published was that of transitional provisions.

A note issued by the DGE together with the draft executive order mentions that, in the absence of any specific provision in the law, the 10-year duration will apply to all utility certificates in force at the date of entry of the law into force.

The note explains that an IP right is not an “acquired right” but an “ongoing legal situation“, which justifies this solution – which would be different if, for instance, we were talking about a statute of limitations.

I guess the protection of interests of third parties was not so much of a concern for this part.

Interestingly, special transitional measures are planned for utility certificates which are almost 6-years old when the law enters into force. It will exceptionally be possible to pay the 7th renewal fee up to four months after the entry into force of the executive order (or within an additional 6-month grace period starting from the expiry of the above deadline).

Stretching utility certificates.

This now brings us to the second aspect of the draft executive order, namely the advent of provisional patent applications.

This was not mentioned in the loi PACTE and is a complete creation of the executive order. But we knew that it was coming, since rumor has it that it has been one of President Macron’s pet projects for a number of years.

So here is what we will be looking at:

  • A provisional application shall comprise a request for grant, a description and drawings. Claims and an abstract may be included – but they are not required. Similarly, when a French priority is claimed, a marked up copy of the prior filing must be included when a regular patent application is filed, but this will not be necessary if a provisional patent application is filed.
  • Only the filing fee is due, within one month after filing (whereas, for a regular patent application, also the search fee is due within the same deadline).
  • The applicant may request that the provisional application be made “compliant”, i.e. that it be transformed into a regular patent application, or into a utility certificate application, within 12 months from the priority date. I understand that this will require filing the claims / abstract / marked up copy of the prior filing, if these elements were not provided on the filing date – though I must say that this is not clear in the draft.
  • If this is not the case, the provisional application will be deemed withdrawn (this notion of fictional withdrawal is one which we are very familiar with under the EPC, but it is new in French patent law).
  • The deadline for paying the search fee will be one month after filing the request to make the application compliant.
  • A patent application cannot be made “provisional” after filing, it has to be marked as provisional from the start.
  • The defense administration will review provisional patent applications and authorizations to disclose the invention will be issued, similarly as for regular patent applications.
  • The provisional application can claim a French priority, as suggested above.
  • However, if there is a Paris Convention priority claim, then this will be interpreted as a request to make the application compliant – so, the applicant will not be able to keep its application as a provisional one. My understanding is that this may be because a Paris Convention priority claim can be filed up to 16 months after the earliest priority date, which sort of conflicts with the 12-month deadline for making the provisional application compliant.
  • If the applicant files a request for early publication, a request to make the provisional application compliant will have to be filed at the same time, otherwise the request for early publication will be inadmissible.

So, what can we make of these new provisional patent applications?

This is a new tool that few – if any – in the patent profession asked for. In fact, most of us did not understand at all what the point was.

It should be borne in mind that getting a filing date for a (regular) patent application (which may thus serve as a basis for claiming priority in France or abroad) only requires filing a description.

The claims and abstract are not necessary. Neither is the payment of any fee (not even the filing fee). So, regular patent applications already provided the same benefits as the future provisional patent applications.

The way I see it, the only difference is that a provisional application can be made into a regular patent application without having to refile. But this is a very slight advantage, and it will also result in an overall duration of scope of protection which will be reduced (since, when you refile 1 year after the initial filing, you can get 20 years of protection from the second filing).

Even after reading the draft executive order, I still cannot see in what circumstances I would recommend filing a provisional patent application.

The answer to the conundrum can probably be found in the following statement in the DGE’s explanatory note:

Feedback from innovative business and start-up entrepreneurs has shown that they are reluctant to undertake to protect their inventions. The patent filing system, due to its formalism, is often perceived as onerous and costly. 

I would thus say that all of this is really about communication and perception, not about actually providing additional useful legal tools to applicants.

After all, this can be a valuable reason. Let’s not underestimate the importance of communication and perception.

However, one major concern is that this communication and perception effort may ultimately result in miscommunication and misconception.

If “innovative business and start-up entrepreneurs” believe that filing a draft of scientific paper, or even an invention memo, as a provisional application, without drafting claims and without working with a patent professional, can serve as a basis for a strong future patent application, or even can secure them a priority date, they are in for some serious disappointment. Think G 2/98; and think “gold standard“, which is applied under French law in a similar manner as at the EPO.

Patent law is complex, patent rights are difficult and costly to obtain and enforce. This is a fact, not an erroneous perception. Aren’t people better off if they are aware of this reality, rather than believe that a provisional filing is a cure-all?

A last word on the date of entry into force of the new system.

The rules on the transformation of utility certificate applications into patent applications will enter into force the day after the publication of the executive order. As for the rules on provisional patent applications, they will enter into force on July 1, 2020.

Please bear in mind that the executive order is not yet in its final form and that the draft may still be amended, especially based on input from stakeholders. But I suspect that only minor bugs will be fixed, and only clarifications / editorial changes will be made.

A technical silver lining

They say that every cloud has a silver lining.

Thinking about a recent Philips case in which not one, not two, but three patents were revoked by the Paris Tribunal de grande instance (TGI), this saying seems quite fitting.

From the perspective of IP right holders, the dark cloud is of course that we have just been presented with yet another confirmation that patent validity is severely appraised in France. But the silver lining is that, although software patents were at stake, the court did not strike them down for just being that, but on the contrary fully acknowledged the technical nature of the inventions.

The case at hand was certainly a big one for Philips.

Not only were three patents involved, but there were also parallel proceedings against several unrelated defendants.

So much so that there were in fact four judgments issued on the same day: one pitching Philips against HTC, another against Asus, another against Archos and the last one against Wiko.

Philips reproached all defendants for not joining their “Touch enabled device” license program, and retaliated by filing an infringement action based on European patents No. EP 1384134, EP 0888687 and EP 1571988.

The four judgments look substantially identical, so it should be sufficient to look at only one of them.

Claim 1 of EP’134 reads as follows:

A data processing apparatus having a user interface assisting in searching for information from an ordered list a data array, the apparatus comprising:
an array scroller responsive to user actuation; and
a helper character-generator, actuated by continued user actuation of the array, the helper character generator being operative to display a helper character representative of a portion in the list being scrolled.

In brief, this is a user interface invention. The context is that of a long list of elements. In order to facilitate the retrieval of one element in the list by the user, a so-called “helper character” appears. This helper character may represent e.g. a first letter of a name or a first digit of a telephone number. It is thus representative of a cluster of entries in the list. By scrolling from helper character to helper character, the user may select a desired cluster, and then browse within this cluster instead of browsing through the entire list.

Choosing the right song in a menu, a critical decision to make.

The defendants argued that this was a mere presentation of information, and thus not an invention under art. 52 EPC.

Here is the court’s position on this objection:

Displaying the helper character involves continuous actuation by the user in a scrolling array. 

The patent thus relies on the user taking an active part, via an improved interface interacting with him, thus creating a particular technical effect due to the actuation by the user, allowing a faster choice in an array of elements. 

By combining several modes of scrolling down a list of elements, the patent teaches an adaptive user interface for searching and displaying, and thus does not just present information “as such”. It should also be emphasized that the purpose of the invention is to facilitate the selection of an element in a large set of data, on small size devices, taking into account their specific ergonomic design. 

Therefore, the EP’134 patent undeniably implements technical means to obtain a technical solution to a technical problem. Its subject-matter is thus patentable. 

I asked my partner Aujain Eghbali, who is an ace at computer-implemented inventions, what we can make of this.

His main comment was that this is the same type of reasoning that the EPO could have made. He added that the court’s reasoning is in fact quite patent-friendly even by EPO standards.

In particular, the court relied on the ergonomic character of the human/machine interface when assessing the technical nature of the invention. The Boards of appeal of the EPO have sometimes adopted a similar approach (see T 1779/14) but the Guidelines for examination do not take any clear position on the technical nature of such innovations. Section G-II, 3.7.1 suggests that a “physical ergonomic advantage” could be considered as a technical contribution, but specifically in relation with user input.

The court also took note of a statement in the description of the patent, per which human-machine interaction is particularly challenging when the device is small, due to the physiology of the user. Although effects relying on human physiology are acknowledged in the EPO Guidelines (section G-II, 3.7), they are not commonly accepted by examiners as having a technical character, Aujain said.

Going back to the judgment, the EP’134 patent was thus found to meet the requirements of article 52 EPC.

Further objections of insufficiency of disclosure and lack of novelty were also rejected. But the patent finally died of lack of inventive step.

However, it is important to note that all features of claim 1 were fully taken into account in the inventive step reasoning, in keeping with the court’s finding that the claim related to a technical solution to a technical problem.

The court’s negative opinion on the patent was thus fully based on relevant disclosures identified in the prior art. So, this is your good old, traditional, prior art-based lack of inventive step, if you will; not a this-is-not-technical-enough lack of inventive step.

In more detail:

The EP’036 document teaches that, upon continuous actuation of the scrolling key, the first names are sequentially displayed, in the alphabetic order, for each letter, thus providing a search tool. 

Starting from this search tool disclosed in EP’036, the skilled person, namely an electrical engineer experienced in designing user interfaces for portable electronic devices, confronted with the problem of selecting an element in a scrolling list on a small size screen, would achieve claim 1 of the EP’134 patent, since the search tool of the EP’036 prior art (underlining the first letter of a name) is only a visual alternative to the generation of a help character, which is anyway taught by the US’949 document. 

The EP’036 document also taught scrolling cluster by cluster, allowing the user, by maintaining the scrolling key pressed, to go from letter to letter in the directory, without having to go through all names starting with the same letter. 

Therefore, the features of claim 1 of the EP’134 patent derive from the state of the art. 

Next up was EP’687, another user-interface patent.

See in particular claim 1:

An electronic device comprising:
– at least one display;
– a controller arranged to cause the display to show a rotating menu comprising a plurality of menu options,
which menu is disposed off centre in the display so that at least one option is rotatable off the display at any one time, whereby an arbitrary number of options may be added to the menu without changing its format.

Again, the court fully acknowledged the technical character of the invention:

[…] The EP’687 patent aims at improving a user interface for a screen. To this end, it allows displaying a menu comprising a plurality of options as well as adding an arbitrary number of options to the menu without changing its format. It thus provides a better identification of options. 

The objective of the EP’687 patent is to facilitate adding more articles to the menu without making the display more complex, as long as at least one option in the menu is out of the screen due to the rotating menu being off-centered. 

Therefore, the patent makes it possible for the user to interact with the device, while adding any number of options to the menu, without modifying the format and while keeping their own character making their identification easier.

Consequently, the EP’687 patent, which ensures a better identification of menu options for the user, by means of a controller which combines a particular option display format and a double function of rotation and addition of options, obviously implements technical means to provide a technical solution to a technical problem. Its subject-matter is thus patentable. 

Like for the previous patent, Philips was also able to fend off insufficiency and lack of novelty challenges, but then stumbled on inventive step, as the prior art was deemed to be very similar to the invention.

The third patent was directed to an activity monitor. Its technical character was not challenged. It was revoked for lack of inventive step all the same.

In summary, the present case seems to confirm a trend recently seen in a Thales decision and on the contrary to drift further away from past case law in which the stance on patent eligibility was considerably stricter.

How apropos then that the INPI (French patent office) has just published an updated version of its examination guidelines containing two new sections C.VII.1.3.1 and C.VII.1.3.2 on computer-implemented inventions.

One section is dedicated to CAD and computer simulations. The other one relates to AI. Both provide additional guidance as to what should be considered technical or non-technical, again quite in line with the EPO approach. Maybe the next revision will contain some additional thoughts on graphical user interfaces?

CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 1ère section, July 11, 2019, Koninklijke Philips NV v. SAS HTC France Corporation & HTC Corporation, RG No. 16/02073.