Dear readers, this is just a brief follow-up post on two topics previously addressed on this blog: partial priority at the EPO and vaccine SPCs.
First, partial priority at the EPO. This was already addressed in the past here and especially there, where I talked about the decision of the Enlarged Board of Appeal G 1/15.
Since then, another decision T 282/12 has been issued and has swiftly been presented on all good blogs (here, here and there).
In this decision, it was ruled that the priority of a claim was partially invalid because the alleged priority document was partially not the first application for the invention at stake.
As I have previously observed, although G 1/15 was almost unanimously welcome by the patent profession as a cure to the toxic divisional plague, the relatively flexible and generous approach of partial priority adopted in this ruling can also turn against patent proprietors when they file successive similar applications.
In this respect, T 282/12 is not really groundbreaking. The same already happened in T 1222/11, the decision which was the first one to theorize the “generous approach” later endorsed by G 1/15. In this earlier decision, the refusal of the patent application at stake was confirmed by the Board due to the invalidity of a priority claim in view of an earlier application (by the same applicant) which contained the same examples as the alleged priority document. I always thought that it was somewhat paradoxical that this decision considered as life-saving by many in fact killed the patent application at stake.
There is one remaining issue which may give rise to additional discussions, though.
T 282/12 states that the priority is only partially, and not fully, invalid if part of the claimed subject-matter was disclosed by the same applicant in an earlier application than the priority document. T 1222/11 was in my opinion not so clear in this respect. However, is it really certain that this is consistent with the Paris convention and the EPC? After all, these treaties do not expressly contain the notion of a “partial first application“.
So, it remains to be seen whether future decisions will be fully in line with this aspect of T 282/12 or not. It also remains to be seen what national courts will make of all this, as they are not bound by the Enlarged Board’s findings – least of all French courts if I may say so.
In the meantime, extreme caution should be exerted when filing successive applications on similar subject-matter, especially when the supporting examples are the same.
Second topic, totally unrelated to the first one: vaccine SPCs.
Almost two years ago, Lionel Vial reported on this blog on the refusal of an SPC application filed by GlaxoSmithKline Biologicals (GSK) for the Cervarix vaccine by the INPI, and on the confirmation of this refusal by the Paris Cour d’appel.
Interestingly, another French SPC application was filed by a different applicant, namely the Loyola University of Chicago, still for the Cervarix vaccine, and based on the same marketing authorization as the GSK application.
The same causes often produce the same effects. Thus, this second SPC application was also refused by the INPI, and the appeal filed by Loyola was dismissed by the Paris Cour d’appel.
As explained by Lionel in the earlier post, the Cour d’appel considered that the active substance in the Cervarix vaccine was in fact the same product as the active substance in the earlier Gardasil vaccine, for which an SPC had already been granted to GSK.
The Cour d’appel did not change its mind in the Loyola case and reminded that only one SPC can be granted per product. The fact that the patent mentioned in the SPC application as well as the applicant were different did not change anything.
To Loyola’s credit, whether both active substances are actually the same is not straightforward here. This is because one critical protein in the Cervarix vaccine is obtained differently (via insect cells rather than yeast cells), and is truncated, relative to the same protein in the Gardasil vaccine. Therefore, it was probably worth giving it another try despite the previous negative decision.
Loyola made ample reference to its own patent and to a later scientific publication as evidence that the difference in protein structure had an impact on biological properties.
But the court said:
[…] The INPI rightly states that this change is minor […]. Even though the appellant claims a different structure and different properties, they do not show that these modifications are anything but minor, as the active substance remains the same and the preventive purpose remains the same. The INPI rightly states that an increase in the capacity to form VLPs, a higher yield, a higher purity level, a more regular shape, a reduction in the risk of cellular DNA encapsidation or even a better stability, are changes which do not alter the nature of the active substance or its preventive purpose; they do not make it possible to conclude that the products are different.
So, once again, insects and yeast – same difference.
CASE REFERENCE: T 282/12, (Coated tablets / JOHNSON & JOHNSON), Board of Appeal 3.3.07, November 9, 2017, Pfizer Inc. v. Johnson & Johnson Consumer Inc.
Over the years, the Boards of appeal of the EPO have developed a number of rules which are now set in stone. The so-called “gold standard“, used for appraising whether any extension of subject-matter has occurred and whether priority is valid, is a famous one. An even more famous one is the “problem and solution approach” for appraising inventive step.
The problem and solution approach is a very clear reasoning framework which has two fantastic advantages:
avoiding an ex post finding artificially ignoring the actual contribution of the invention to the art; and
enhancing the predictability of the inventive step assessment, and thus improving legal certainty for all stakeholders, patent applicants and third parties alike.
Make no mistake: I love the problem and solution approach. Especially when I compare it with the Russian roulette of the obviousness rejections that you tend to randomly get at the USPTO.
However, one downside of a clear reasoning framework is that everyone learns how to make the best of it.
Clever patent drafting and sophisticated argumentation can thus sometimes make up for the relatively low inventive merit of some inventions. Correlatively, a number of patent professionals have noted that, for better or worse, the inventive step threshold et the EPO is generally rather low.
In fact, more often than not, whether an application or patent passes the article 56 test mostly depends on the selection of the closest prior art, and on what kind of technical problem you can possibly come up with – and these considerations may sometimes be remote from technical reality.
In such a context, I think it is a good thing when the Boards of appeal remind us that the problem and solution approach should be followed with some flexibility, in order to avoid any artificial outcome which would be unfair to third parties.
I will take two examples of how things can get somewhat skewed in the problem and solution approach; and how some Board decisions can nevertheless offer a way to achieve a right balance.
The first example is taken from T 2123/14, already discussed on Laurent’s blog.
The initial step of the approach is the selection of the closest prior art. As summarized in section G-VII, 5.1 of the Guidelines, “in selecting the closest prior art, the first consideration is that it should be directed to a similar purpose or effect as the invention or at least belong to the same or a closely related technical field as the claimed invention“.
It is therefore a classical strategy to insert a number of goals or purposes in the description of the application, and then argue that any prior art reference which does not address one of these goals or purposes is unsuitable for being selected as the closest prior art. This is especially helpful when it is indeed difficult to establish the existence of an inventive step starting from a reference sought to be discarded.
Now, such a strategy may be curtailed by following the reasoning used in T 2123/14. As a disclaimer, please note that I have formed no personal opinion as to whether the claims at stake were actually inventive or not, I will just focus on the principles established by the Board, which seem quite relevant.
In this case, the examining division had refused the application, relating to a cosmetic composition for the hair, for lack of inventive step based on D3 as the closest prior art. But the appellant argued that the closest prior art was not D3 but rather D8, so that inventive step should be assessed only based on D8 as a starting point.
The appellant’s argument, as summarized by the Board, was that:
D8 indeed mentioned as a technical purpose, beside the improvement of untangling, volume, lightness, softness, flexibility and tidiness, also the improvement of smoothing while avoiding a greasy feel […], unlike D3 which did not mention the problem of the hair’s greasy feel or heaviness, and which merely focused on a conditioning effect, on making hair soft and flexible, improving volume, brightness and smoothness of wet and dry hair […]. (Reasons, 1.2.1, translated from the French language).
The Board did not accept this and noted the following:
[…] The claimed subject-matter must involve an inventive step relative to each prior art document. Nothing prevents the relevance relative to D3 from being examined first. If, on the face of it, the skilled person can choose between several prior art documents as reasonable starting points, inventive step can thus be effectively acknowledged only after applying the problem and solution approach to each of the options (T967/97, T21/08). If one of the options reveals obviousness, then there is no inventive step. The problem and solution approach may therefore need to be repeated for each of these options (T710/97). (Reasons, 188.8.131.52).
This is a helpful reminder. A relevant document cannot be swept under the rug by pointing to an allegedly better document. All “reasonable” starting points may have to be investigated. Of course what is “reasonable” and what is not is a matter of case by case analysis.
The decision then goes on by recalling the criterion of the “similar purpose or effect” for the closest prior art. But the Board then adds:
This does however not mean that, when an invention purports to solve a list of specific problems, said closest prior art must necessarily specifically disclose or mention all of these specific problems or more particularly only one of these problems taken in isolation. This is in particular the case for the objective technical problem, which is only established in the second step of the problem and solution approach […]. This is also the case for a technical problem which is solved in an implicit and inherent manner by the closest prior art, although this is not expressly stated in said prior art.
Thus, simply inserting a purpose or even more so a list/series of specific purposes in the description does not allow the applicant to oppose any objection of lack of inventive step raised in view of a document which does not mention one of the abovementioned specific purposes, if this document was concerned with a similar use. (Reasons 184.108.40.206).
In other terms, in order to qualify as a closest prior art (possibly among others), a reference needs to relate to a similar use. But it is not necessary for the document to explicitly address all the purposes that the drafter included in the description of the application or patent.
To me, this is a significant clarification, as the strategy consisting in inflating the number of purposes set out in the description in order to discard possible closest prior arts has certainly been quite effective for a number of applicants / patent proprietors to date.
In the case at hand, the Board found that D3 was indeed a possible closest prior art to take into consideration:
[…] Even if D3 does not explicitly mention the purposes of the claimed subject-matter, it cannot be denied that both documents D3 and D8 show compositions designed for the same goal and belong to the exact same technical field as the present application, namely conditioning shampoos, and therefore have a similar use and the same actions and effects on the hair, in particular in terms of smoothing.
It can thus be legitimately expected that the type of cosmetic composition disclosed in D3 and D8 generally involves the same technical problems, or technical problems necessarily deriving from the similar use. Besides, even if the properties relating to the absence of a greasy feel or heavy hair are not explicitly recited in D3, it remains that example 5 of D3 does contain said non-silicone fatty components responsible for a possible greasy feel and possible heavy hair. In the absence of any specific indication or remark in example 5 of D3 regarding these properties, it is immediately apparent and obvious for the skilled person that the properties and abilities of the compositions disclosed in D3 are prima facie satisfactory, including regarding a greasy feel or heavy hair. (Reasons 220.127.116.11).
To summarize this latter point: even if a very specific technical problem is not expressly addressed in a reference, the skilled person can sometimes derive from the context that this technical problem is indeed taken into account in the document.
Here is now a second example of a possible flaw in the problem and solution approach favoring the applicant / patentee, and a possible remedy taught in T 2456/13 (decision initially reported on Peter de Lange’s blog).
The issue here is the second step of the problem and solution approach, namely the formulation of the objective technical problem. Sometimes, several technical effects relative to the closest prior art can be possibly contemplated. Depending on which technical effect(s) is/are retained, the solution may or may not be obvious for the skilled person.
The usual strategy for the applicant / patentee is to focus on one or more very specific technical effects, seldom addressed in the art, so as to more easily arrive at a finding of non-obviousness. But in some instances, this may be considered as artificial (and, if I may add, ex post) if, already based on another, less sophisticated technical effect, it would be obvious for the skilled person to arrive at the claimed invention.
The way the EPO may deal with this situation is addressed in section I.D.10.8 of what is commonly referred to as the Case law book. It is called the “bonus effect“:
[…] If, having regard to the state of the art, it would already have been obvious for a skilled person to arrive at something falling within the terms of a claim, because an advantageous effect could be expected to result from the combination of the teachings of the prior art documents, such claim lacked inventive step, irrespective of the circumstance that an extra effect (possibly unforeseen) was obtained. […] An unexpected bonus effect does not confer inventiveness on an obvious solution.
However, my subjective impression is that the bonus effect objection is seldom effective in practice.
One difficulty is how to distinguish a technical effect which is merely a bonus effect from one which absolutely must be taken into account in the formulation of the objective technical problem.
In some decisions, reference was made to “one-way street” situations, in which there is a lack of alternatives for the skilled person, as opposed to situations wherein “the use of means leading to some expected improvements might well be patentable in relying on an additional effect, provided this involved a choice from a multiplicity of possibilities” (see the above section of the Case law book). Clearly, this is a restrictive approach, as I do not think that there are generally many one-way streets in technology.
In T 2456/13, the patent proprietor argued that a secondary reference D3 would not be taken into account by the skilled person as it did not address a certain technical effect, namely the reduction in the tendency to caking.
But the Board considered this effect as a mere bonus effect. The Board did not hold that this was a one-way street situation but adopted another approach:
D3 discloses a generic process for the preparation of sodium percarbonate particles which are coated by spraying on a solution of sodium sulfate and sodium carbonate. […] According to D3, the coating improves storage stability […]. In view of the partial task of improving storage stability, the skilled person would, in the opinion of the board, refer to the relevant document D3, even if no improvement in the tendency to caking is explicitly shown. The person skilled in the art is in fact taught by D3 that, with a coating in the composition range between 82:18 and 69:31 parts by weight of sodium sulfate to sodium carbonate, particularly stable percarbonate particles can be obtained. […] He would try to adjust the advantageous ratio indicated in D3 and thus reach the claimed article.
A (slight) improvement in the tendency to caking is necessarily also obtained. In the opinion of the board, it constitutes an additional or bonus effect, which cannot justify an inventive step. The board takes into account that the improvement in the tendency to caking is only slight […] and possibly for this reason not mentioned in D3. (Reasons 4.9, translated from the German language).
This decision thus provides a possible criterion for establishing that a technical effect is merely a bonus effect, namely the relative low magnitude of the effect.
Of course, we should bear in mind that this is only one factor among others that may have to be taken into account.
All in all, these two decisions may helpfully contribute to containing some of the possible abuses of the problem and solution approach leading to artificial non-obviousness findings.
T 2123/14, Board 3.3.07, October 27, 2016, L’Oréal.
T 2456/13, Board 3.3.05, March 7, 2017, Evonik Treibacher v. Kemira Oyj.
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.
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.
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.
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.
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.
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 inperforming 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.
It has already been more than a week since the latest Enlarged Board of Appeal’s decision G 1/15 has been published. It has therefore already been reported and commented on in all good blogs, so that there is probably no need for me to repeat what other have already explained very well.
It will be sufficient to remind readers that the decision provides important guidance on the issue of partial priority (especially with respect to so-called “OR-claims“) and puts an end to the doctrine of “poisonous divisional applications“.
Basically, if a claim in an application or patent encompasses subject-matter which was disclosed in the application to which priority is claimed, but is broader than said disclosed subject-matter, the priority is not fully invalid. The part of the claim which was disclosed in the priority document benefits from the priority, and the other, new, part of the claim does not. G 1/15 makes it clear that no conditions or limitations apply in this respect.
With that in mind, I do have a couple of thoughts on this topic that I might as well share in this post. Actually, both thoughts are not so much about what the decision says as about what it does not say.
The first remark relates to the Enlarged Board’s reasoning. The theory of poisonous divisional applications was originally adopted in a number of decisions from the Boards of appeal. These decisions relied on the following sentence in the founding decision G 2/98 on the assessment of priority claims:
The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2) EPC, second sentence, is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject matters.
This sentence was interpreted by a number of boards as imposing a limitation to the possibility to divide a claimed subject-matter into different parts having different effective dates. This was also the respondent’s position in the referral. The argument was well summarized in the submission of the president of the EPO. And in item 3 of the reasons of G 1/15, it is acknowledged that “the divergence that has emerged in the case law has been caused by the proviso in point 6.7 of the Reasons of G 2/98“.
Therefore, I am somewhat disappointed that the Enlarged Board did not really address the question of what was meant by this sentence in G 2/98. In the core of G 1/15, the Enlarged Board analyzed the EPC, the Paris Convention, the Travaux préparatoires and some authors’ opinions, and came to the conclusion that there can be no condition or limitation restricting partial priority. This is all fine and well, but the sentence in G 2/98 was simply left out of the picture. So, does G 1/15 represent a change in case law relative to point 6.7 of the reasons of G 2/98? Or was the Enlarged Board unable to figure out what was originally meant in G 2/98? After all the sentence explicitly mentioned a proviso, which does strongly suggest a condition or limitation.
So, it seems to me that there is a little bit of a lack of transparency here.
The second remark is more practical than theoretical – and therefore probably more interesting than the first one.
In one of my previous posts, I reviewed decision T 1222/11 in detail. This was the first decision which extensively discussed the theory of poisonous divisional applications and came to the conclusion that the theory was incorrect. The reasoning was that partial priority can always be acknowledged if a claim is broader than the disclosure of the priority document. This is the so-called “conceptual approach” which has now been endorsed by the Enlarged Board in G 1/15.
In this previous post, I noted that the line of thought of T 1222/11 may also have side effects which go beyond the issue of partial priority. More particularly, the issue is related with the question of what is a first application, for the purpose of assessing priority. So, now seems like a good time to revisit this question again.
Quite remarkably, in T 1222/11 the refusal of the patent application at stake was confirmed due to an invalidity of the priority claim. This has always striken me as paradoxical, since this decision was widely acclaimed in the patent profession as being an antidote to the nefarious theory of poisonous divisional applications adopted in earlier decisions (as well as in several national court rulings).
G 1/15 basically states that the principles set out in T 1222/11 were the right ones. Although it does not address the particulars of this earlier case, there is every reason to assume that T 1222/11 was also correct in that it concluded that the priority claim at stake was invalid.
In T 1222/11, the claimed subject-matter was properly disclosed in the priority document. But part of it was also disclosed in an even earlier application by the same applicant, called D4b. In other terms, the teaching of the priority document (and of the claimed subject-matter) corresponded to a generalization relative to document D4b. In particular, some examples of D4b were found by the Board to fall within the claimed subject-matter. Although the claim at stake mentioned a property (namely a buffering capacity) which was not recited in D4b, the Board concluded that the same property was necessarily achieved in D4b. Also, the fact that D4b was limited to the use of a combination of two components (malic acid and lactic acid), whereas the priority document and the claimed invention were not, was found to be irrelevant.
The overall conclusion was that D4b was the actual first application for the claimed subject-matter, and not the priority document. As a result, the priority was invalid, and the claimed subject-matter lacked novelty over D4b. No disclaimer was allowable because D4b became full prior art due to the invalidity of the priority claim.
Therefore, G 1/15 has fully disarmed opponents or nullity claimants. Although poisonous divisional applications may no longer be a legal weapon, what we coud call “poisonous prior applications” (of the D4b sort in T 1222/11) have perhaps become more powerful weapons.
Let’s simplify the question one step further. Let’s assume a first application A1, a subsequent application A2 and an even later application A3 by the same applicant.
A3 claims subject-matter S, which is properly disclosed in A2. On the other hand, A1 does not disclose S but only part of S, which we can call s.
For instance, s can be a process involving a certain temperature range, and S can be a similar process involving a broader temperature range. Or s can be a composition comprising components A, B and C, while S can be a similar composition comprising components A and B.
If you had asked me the question a few years ago, I would probably have taken the view that, in such instances, the first application for subject-matter S is A2 and not A1. Just like, for consistency reasons, and under the EPO’s “gold standard“, the disclosure of s cannot be a proper support for claiming S (for the purpose of the assessment of Art. 123(2)).
This view is actually consistent with what is stated in the EPO case law bible (Case Law of the Boards of Appeal of the European Patent Office, 8th edition, II.D.4.1, 1st paragraph).
However, a side effect of the generous view of partial priority adopted in T 1222/11 and now endorsed in G 1/15, seems to be that this view is not correct, and that the first application is such a case is in fact… A1.
Applicants will therefore need to be careful about this, especially if they file successive applications containing the same examples but claiming different aspects of the same technology. Or else, some form of poisoning will come back to haunt them.
Now, here is a challenging idea: could some form of partial priority be acknowledged in the context of a “not-the-first-application” argument? In other terms, if A1 discloses S1, A2 discloses S2, and A3 claims S1 or S2 (while claiming the priority of A2 only), is the priority claim fully invalid, because A2 is not the first application at all? Or does the priority claim remain valid as far as S2 is concerned?
Based on T 1222/11, I would tend to answer that the priority is fully invalid. Unless some supplementary condition needs to be examined, such as the fact that a limited number of clearly defined alternative subject-matters are claimed? Just kidding.
CASE REFERENCE: Enlarged Board of Appeal, November 29, 2016, G 1/15, Clariant Produkte (Deutschland) GmbH v. Infineum USA L.P.