Patenting Computer-Implemented-Inventions (CIIs) in the EPO


The following note was written by European Patent Attorney Paul Cole who is also the Visiting Professor of IP at Bournemouth University

EPO Enlarged Appeal Board decision in G 0003/08 Programs for computers/PRESIDENT’S REFERENCE

The EPO President asked the Enlarged Board to consider a set of questions concerning the patentability of programs for computers (computer-implemented inventions, CIIs) on which she deemed the Boards of Appeal to have given different decisions and which she held to be of fundamental importance within the meaning of a. 112(1) EPC. Her referral had been preceded by an informal letter from her predecessor, Alain Pompidou, dated 22 February 2007, in which Lord Justice Jacob’s suggestion in the Aerotel/Macrossan judgment of 27 October 2006 ([2006] EWCA Civ 1371) of referring the issue of CII patentability to the Enlarged Board had been dismissed as unnecessary.  About 100 Amicus curiae briefs had been filed, amongst which a number questioned the admissibility of the referral, a view which was supported inter alia by Lord Hoffmann who was until his recent retirement the member of the UK House of Lords Judicial Committee who usually wrote the opinion of the House in cases involving IP.

 The opinion of the Enlarged Board is available here

and a more extended file of the case including the questions originally referred and the reasons for the reference can be found here.

In the outcome, the doubts proved well-founded and the referral was rejected as inadmissible. The views of the Enlarged Board are summarised in the official headnote:

“1. In exercising his or her right of referral a President of the EPO is entitled to make full use of the discretion granted by Article 112 (1) (b) EPC, even if his or her appreciation of the need for a referral has changed after a relatively short time.

2. Different decisions by a single Technical Board of Appeal in differing compositions may be the basis of an admissible referral by the President of the EPO of a point of law to the Enlarged Board of Appeal pursuant to Article 112 (1) (b) EPC.

3. As the wording of Article 112 (1) (b) EPC is not clear with respect to the meaning of “different/abweichende/divergent” decisions the provision has to be interpreted in the light of its object and purpose according to Article 31 of the Vienna Convention on the Law of Treaties (VCLT). The purpose of the referral right under 112 (1) (b) EPC is to establish uniformity of law within the European patent system. Having regard to this purpose of the presidential right to refer legal questions to the Enlarged Board of Appeal the notion “different decisions” has to be understood restrictively in the sense of “conflicting decisions”.

4. The notion of legal development is an additional factor which must be carefully considered when interpreting the notion of “different decision” in Article 112 (1) (b) EPC. Development of the law is an essential aspect of its application, whatever method of interpretation is applied, and is therefore inherent in all judicial activity. Consequently, legal development as such cannot on its own form the basis for a referral, only because case law in new legal and/or technical fields does not always develop in linear fashion, and earlier approaches may be  abandoned or modified.

5. Legal rulings are characterised not by their verdicts, but by their grounds. The Enlarged Board of Appeal may thus take obiter dicta into account in examining whether two decisions satisfy the requirements of Article 112 (1) (b) EPC.

6. T 0424/03, Microsoft does deviate from a view expressed in T 1173/97, IBM, concerning whether a claim to a program on a computer-readable medium necessarily avoids exclusion from patentability under Article 52(2) EPC. However this is a legitimate development of the case law and there is no divergence which would make the referral of this point to the Enlarged Board of Appeal by the President admissible.

7. The Enlarged Board of Appeal cannot identify any other inconsistencies between the grounds of the decisions which the referral by the President alleges are divergent. The referral is therefore inadmissible under Article 112(1)(b) EPC.”

 As regards the relationship between excluded subject mater and inventive step, the Enlarged Board concluded: 

“Indeed if the Boards continue to follow the precepts of T 1173/97 IBM it follows that a claim to a computer implemented method or a computer program on a computer-readable storage medium will never fall within the exclusion of claimed subject-matter under Articles 52(2) and (3) EPC, just as a claim to a picture on a cup will also never fall under this exclusion. However, this does not mean that the list of subject-matters in Article 52(2) EPC (including in particular “programs for computers”) has no effect on such claims. An elaborate system for taking that effect into account in the assessment of whether there is an inventive step has been developed, as laid out in T 154/04, Duns. While it is not the task of the Enlarged Board in this Opinion to judge whether this system is correct, since none of the questions put relate directly to its use, it is evident from its frequent use in decisions of the Boards of Appeal that the list of “non-inventions” in Article 52(2) EPC can play a very important role in determining whether claimed subject-matter is inventive … It would appear that the case law, as summarised in T 154/04, has created a practicable system for delimiting the innovations for which a patent may be granted.” 

The Enlarged Board did not attempt ant definition of technical effect, but commented: 

“While the referral has not actually identified a divergence in the case law, there is at least the potential for confusion, arising from the assumption that any technical considerations are sufficient to confer technical character on claimed subject-matter, a position which was apparently adopted in some cases (e.g. T 769/92, Sohei, Headnote 1). However T 1173/97, IBM sets the barrier higher in the case of computer programs. It argues that all computer programs have technical effects, since for example when different programs are executed they cause different electrical currents to circulate in the computer they run on. However such technical effects are not sufficient to confer “technical character” on the programs; they must cause further technical effects. In the same way, it seems to this Board, although it may be said that all computer programming involves technical considerations since it is concerned with defining a method which can be carried out by a machine, that in itself is not enough to demonstrate that the program which results from the programming has technical character; the programmer must have had technical considerations beyond “merely” finding a computer algorithm to carry out some procedure.” 

The fine print of the opinion will attract obsessive attention from specialists in this area, but the bottom line for the time being is that the status quo will be maintained. European practitioners await the Bilski decision with, if anything, even more interest.

93 thoughts on “Patenting Computer-Implemented-Inventions (CIIs) in the EPO

  1. I don’t know all the various national laws, but I think it is safe to assume you can at most be convicted for intentionally infringing a granted patent. So if for whatever reason you’re not even aware of the patent, your actions will not be criminal. The only uncertainty that I see is:
    - the precise boundaries of the claims;
    - are any of the claims valid at all.

    The validity has been checked by the patent office, but this check is necessarily incomplete. So there will be some conduct that appears criminal, but might turn out to be legal when an invalidity action succeeds. This is undesirable, but an unavoidable consequence of the political choice to bring intentional infringement under the criminal law system.

    The boundaries of a claim that complies with the clarity requirements of the patent law are much more precise than the boundaries of many criminal codes. For example, criminal law may forbid exhibiting “obscene” material. What’s that? (Yes, “I know it when I see it”.)

  2. the development of the law can render previously legal conduct criminal (without any corresponding change in the statute).

    So can the grant of a patent, presumably.

    As long as they can’t convict you for conduct that was legal when you did it (they can’t, can they?), I don’t have a problem with that.

  3. Btw, the ECHR recognises and accepts that the development of the law can render previously legal conduct criminal (without any corresponding change in the statute).

  4. Any such criminal infringement will be an infringement of a granted patent claim. (If infringement of the claims of a pending patent is criminal, there’s really nothing that can help anymore.) Now, you may have a point that the Boards of Appeal “developing” the law may create some uncertainty regarding the validity of a granted patent (assuming national courts actually follow these developments). However, this uncertainty is really NOTHING in comparison with the inherent uncertainty surrounding the validity of any given granted patent. A prior art search is never guaranteed to be complete, to mention just one factor.

    If intentional infringement is criminal, one will just have to assume that a granted patent is valid and act accordingly. I agree this is not a nice situation, but that’s the fault of the national law that makes infringement a crime.

    Of course you are well aware that actual prosecutions do not happen.

    Your comparison is of course utterly ridiculous and actually quite worrisome. Did you not sleep well?

  5. The Boards of Appeal may not formally be bound by precedents (like in the US/UK system), but patent infringement is a *crime* in some judisdictions, so human rights require “lex scripta” and “lex certa”, Any interpretations must not be against the interest of the “criminal” infringer. Unlike private law, in criminal law there can be no open-ended provisions(“unbestimmte Rechtsbegriffe”) – or if they are inevitable, they must be interpreted in a restricted manner. Any other position resembles art 1 of the Nazi criminal code that declared everything criminal that violated written OR UNWRITTEN rules of the “sound feelings of ordinary peopl”e = gesundes Volksempfinden.
    Munich used to be “The Capital of the Movement”, over 60 years ago. Is it again, under EPO?
    Sorry to use such a strong comparison – it is inevitable. Infringers typically are firms, but corporate criminal law – al least in some jusrisdictions – tries to find the actual leaders. So as a firm owner you may end in prison, career/family/personal life/marriage = everything destroyed. Because the EPO BoA feel entitled to “develop” the law! It is preposterous! This is bloody bad law!

  6. I wouldn’t go quite as far as that Ned (if only because I suspect I am myself not free of sin). I like to think that it’s not too late for him to repent of his posting ways.

    As for the problems he has with spelling, clearly you can help him with that.

    I suspect that ping is much younger than both of us, and he sees no reason to give respect to somebody, just because that person is older than he is. Now, I like to think we agree with him on that.

    But if ping were inclined to accord less respect to people the older they get, that I would regret.

  7. MaxDrei, I agree with you that ping has gone well beyond the pale of acceptable discourse here. He is not a serious poster, but is rather continuously obnoxious, obstreperous and jactitatious. The sooner he is removed, the better.

  8. Well ping, for all your sadness you are somewhat amusing. Hopefully you’ll find someone who’s able to help you with those issues of yours.

  9. you want to be seen by the gallery

    Yet another mistake Maxie – I don’t depend on the “gallery”.

  10. ping, you are so right. I’m happy to agree that, yes, I am a bit of a dullard (in comparison to some people I have the privilege to work with). But thanks for that last posting, which tells me that, when you write:

    “my ever humblest apoligies for your lack of ability”

    you want to be seen by the gallery not only as clever and prejudiced (is that an oxymoron, I wonder) but also as being characterized by bitter or scornful derision (Webster on “sardonic”). Oh well, if you insist.

  11. Maxie,

    You make several mistakes:

    somehow clever. I think it’s pathetic.

    It is clever and I don’t care what you think.

    I do know what rhetorical means – do you know what sardonic means?

    Admonish was for pong – I like pong. We have a nice game going back and forth. You on the other hand are a bit of a dullard – but unlike NAL, I don’t want you to change – I like your dumm arse posting cause it give me fodder for making fun of a blimy, one who fancies himself amused and charmed.

    The rod in place – and you don’t know who? I make no bones about my prejudice – my writing is pretty clear how I feel – its amusing how you invite readers to figure out what seems to befuddle you (Oh look – I gave you another chance to point). Maybe you think that’s also charming.

  12. ping, where in America do you learn to write gratuitously offensive stuff like:

    “my ever humblest apoligies for your lack of ability”?

    Is it from its politicians or from its lawyers. Do you think such stuff is somehow clever. I think it’s pathetic.

    Now some more rhetorical questions (that means I’m not expecting any answer).

    Is “admonish” and “smack” the new “assail”? Yawn. You’re not NAL in disguise, are you?

    Since you are shaping up to be a power user of the word “authoritative” you might like to check out Websters, to ascertain how it is spelled, and that would be in the USA as well as in Europe.

    But never mind all that. I was charmed and amused, I must say, by your assertion that one of us (you or me; with your writings, one can’t be sure which one you mean) already has the “rod in place”.

    And as to your:

    “it’s only the blimey brits who seem to have trouble”

    I would point to the key word “seem” as indicative of your prejudice, and invite readers to draw their own conclusions.

  13. @Ned:
    “I once got a patent on a label for a computer peripheral. It varied from other labels in that it contained installation instructions and arrows pointing to the connectors and switches under discussion.”

    With the EPO this would most likely not have worked. There might be an effect in that the user is taught how to perform the installation, but this effect would most likely not be considered “technical”. However, that’s more a matter of the boundaries of “technical” than a fundamental difference in approach.

    For example, the EPO would most probably not dismiss a printed bar code as non-technical/non-functional printed matter.

    So regarding printed matter, such as the poem on the cup, the EPO and US approaches seem rather similar.

  14. “even after I admonished Pong”

    my ever humblest apoligies for your lack of ability to note that it was me that admonished Pong, given the fact that the admonishment was taking Wikipedia as an authoratative source – Did I really have to spell that out for ya?

    As to explaining why – maybe cause his analogy don’t work – books just aren’t the same as ‘puters, especially as I did point out that it has to do with functionality. Again, must I lead you to it and smack you upside the head?

    onlookers don’t know” – most know – it’s only the blimey brits who seem to have trouble. No surprise I guess…

  15. ping, thanks for the answer and the laughs. I don’t recall admonishing my mate pong. Can you take me to the exact posting where I did it?

    If you know pong is “wrong”, can’t you share with me how you worked out that he is wrong? I don’t see why the simple “fact” of his being “wrong” relieves you of any obligation to explain why.

    I mean, in any discussion/argument that ever there was in the history of human communication, the other side was always “wrong”. But onlookers don’t know that till the wrongness is exposed for what it is.

  16. Ned,

    Don’t get me started – unless you want another smackdown.

    They do not amount to a serious answer to a substantive argument

    Except Maxie, pong doesn’t have a serious argument (about the point we are discussing), cause he is wrong. Plus, you no help, since even after admonishing Pong about learning at Wikipedia, you went and did the same – you wanna talk about trite in an intellectual sense, Sunshine…

    Stir yourself buddy – you already have the rod in place.

  17. ping, do you still not see? Those postings of yours, which you are so self-congratulatory about, are nothing more than flippant and trite remarks. They do not amount to a serious answer to a substantive argument. I’m sure I’m not alone, in willing you on, to come up with some sort of a worthwhile answer to the points that pong is patiently making. Stir yourself man. You can do it if you really try. Otherwise readers might suppose that you are just not intellectually up to the task.

  18. ping, pong, and other yo-yo’s, if one cannot claim a machine in terms of what it does except as provided by Section 112, p. 6, and one has to have corresponding structure to make such claims definite, what is the corresponding structure of a claim to a programmed computer?

  19. @Sarah:
    “Why would the poem on a cup be anything but a Design Patent?”

    But what if it is filed as a utility patent application? There must be some legal basis to reject it. Apparently this is 103, applying the printed matter doctrine. This approach is very similar to the EPO approach, except that the EPO does this with all “non-technical” features including pure business features and pure mental acts, not just for pure text.

    @ping:
    Too bad, especially for you, that you’re not able to properly formulate arguments.

  20. I once got a patent on a label for a computer peripheral. It varied from other labels in that it contained installation instructions and arrows pointing to the connectors and switches under discussion.

  21. When you apply “pure text” to a book, you leave the world of “pure text” and enter the world of very physical ink patterns.

    I don’t see much difference between ink drops that render pure text readable to the human eye and computer instructions that transform a computer into a machine that performs an abstract algorithm.

    The book is as much a new book as the computer implementing an abstract algorithm is a new machine.

    Why can the very physical ink pattern in a book or on a cup not render the known book or cup unobvious? Because once you treat the pure text as a familiar part of the prior art, it is obvious to come up with the ink pattern that corresponds to it, i.e. that implements the pure text.

    Given an abstract algorithm, it is obvious to come up with the computer instructions that implement it. It only takes a mechanical translation.

  22. the originality of an algorithm alone cannot make a known computer unobvious

    simple problem pong – when you apply the printed matter to a computer, you have left the world of “pure text”. Your analogy fails immediately at that point. “Applies, implementing…” – nothing wrong with my reading – you needsta look at your writing. You missa the fact (law actually) that programming a computer changes the computer into a new machine. You missed that from your extensive Wikipedia learning.

    You said it earlier without realizing it: “but that only goes to show that a physical book is not a computer

  23. Ping, maybe you believe that it is my position that the printed matter doctrine applies to computer programs. That is not the case. What I am saying is that it seems to make sense to extend the printed matter doctrine in an analogous way to dealing with other (partly) non-statury subject-matter under 103.

    Pure text is non-statutory. Under 103, the printed matter doctrine ensures that the originality of pure text alone cannot make a known cup unobvious.

    A pure abstract algorithm is non-statury. It would appear to make sense that under 103, the originality of an algorithm alone cannot make a known computer unobvious.

    The analogy is pretty clear. Whether it is valid under US patent law is another thing.

    “You want to say that since its obvious that computer programs are loaded onto computers that all computer programs are thus obvious.”
    Too bad you can’t read very well. I was talking about computer programs implementing no more than an abstract algorithm. I have been rather clear about that, but oh well.

  24. Well, clearly the fact that a physical book is not a computer does not make the analogy incorrect.”

    Huh, wha?? “clearly” you are daft. The analogy is based on the Printed Matter Doctrine and the hinge point of functionality absolutely destroys the analogy. “So your point… was irrelevant.” is completely daft and only shows you missed the point. Just ’cause you dont understand (or don’t want to understand) don’t mean my point is irrelevant Sunshine.

    Another example:…” – No. Stop. Don’t go onto another example – you haven’t grasped the meaning of the first one yet.

    The function of a physical book is to be loaded with text – Sunshine – you be using “function” wrong. Put down the ganja. To see this, don’t misconstrue “function” and “function of”. As to “the function of a computer is to be loaded…” – that’s a completely ‘nother fallacy that you are to be disabused of – more on that below.

    Now, there certainly are cases in which a computer program is more than an abstract algorithm” and “make sense…implementing…” – At least you are beyond the “aint 101 point”, but tell me – how is anything “abstract” if it be implemented?

    Now to the 103 issue you be confused about. You want to say that since its obvious that computer programs are loaded onto computers that all computer programs are thus obvious. That’s just like saying that since all molecules are made up of neutrons, protons and electrons that all molecules are obvious (guh bye pharmaceutical patents). You confuse building blocks with end results. The natural corollary to your view is that nothing is patentable since the building blocks of everything are provided by nature, or it is natural to use the building blocks in their respective toy boxes. Patent law just don’t work like that. Damm sure not in the States – pretty damm sure not in the EPO either.

    When I said keep your eye on the ball, I did not mean put the ball up to your eye and smack yourself with the paddle.

  25. Well, clearly the fact that a physical book is not a computer does not make the analogy incorrect. So your point that a book can’t be programmed was irrelevant. (Another example: the relationship between a plane and a pilot is not different than the relationship between a car and a driver. Now you might say that a car can’t fly, but clearly that doesn’t make the analogy false.)

    About the functional relationships, the function of a physical book is to be “loaded” with text and the function of a computer is to be “loaded” with a computer program. These “functional relationships” clearly are obvious.

    I don’t see any other “functional relationship” between a computer and a program if the program is not more than (an implementation of) an abstract algorithm.

    Now, there certainly are cases in which a computer program is more than an abstract algorithm. But I said that already.

    Should the outcome of Bilski be, say, that pure business methods are non-patentable, it would make sense to treat computers running programs implementing pure business methods “as if the business method was well-known”. These computers should still pass 101 (Diamond v. Diehr), but it would not make sense if they can pass 103.

    Just to be sure: there certainly are business methods that are not “pure” business methods. In Europe we look for a technical effect. The US probably feels more at home with “functional relationship”.

  26. I feel goods about myself without shuddering (the cause of shuddering wasn’t me)- but thanks Pong.

    But your back and forth game needs a bit of work. Keep your eye on the ball:

    only goes to show that a physical book is not a computer.

    and

    In general the relationship between a computer program and a computer is not different than the relationship between a text and the physical book that contains the text.

    I’m sure that you can spot other differences as well (I’ve given you a hint with the functional relationship).

    Care to concede and withdraw your analogy yet (or is another self-banning bet in line here)?

  27. A physical book cannot be programmed, but that only goes to show that a physical book is not a computer.

    It seems that US case law accepts that an abstract algorithm is unpatentable. The algorithm does not pass 101.

    A computer loaded with a program implementing the algorithm certainly does pass 101, being a computer.

    The logical extension of the printed matter doctrine and some of the reasoning in Parker v. Flook is to examine said computer under 103 as if the abstract algorithm was well-known. Given that it is quite conventional to implement algorithms on a computer, the computer should fail 103.

    Of course this will not hold for programs that implement more than “abstract algorithms”. Now we come to a discussion similar to the European question of what is “technical”.

    Now please go on shuddering if that’s what you need to feel good about yourself ;)

  28. In general the relationship between a computer program and a computer is not different than the relationship between a text and the physical book that contains the text.

    In general, you couldn’t be more wrong. Can a physical book be programmed with text?

    When you say you checked case law, I shudder to think what that means for you.

  29. Well, I could have asked you to explain me, but supposing a guy or girl named “ping” is sufficient would show even more poorly on my analytical skills, wouldn’t it? (Well, maybe not as I don’t see what it has to do with analytical skills. More with the ability to judge evidence.)

    Anyway, the Wikipedia article refers to actual case law which I did check.

    “Focus on the functional relationship angle. Does a algorithm or formlua in a computer code have a functional relationship with the computer (see the recent German decision for example)?”

    That sounds quite similar to “does it have a further technical effect when run on a computer”. In general the relationship between a computer program and a computer is not different than the relationship between a text and the physical book that contains the text.

  30. pong,

    You should know better than to get your education from wikipedia. Supposing wikipedia is sufficient shows poorly on your analytical skills.

    The lesson there is very incomplete.

    Focus on the functional relationship angle. Does a algorithm or formlua in a computer code have a functional relationship with the computer (see the recent German decision for example)?

  31. Well, Parker v. Flook was overturned by Diamond v. Diehr, so yes it would pass 101.

    In the reasoning of Parker v. Flook, the conventional cup would not be sufficient to pass 101. In the reasoning of Diamond v. Diehr it would be sufficient.

    “Pong, do you need a primer in Printed Matter Doctrine?”
    I suppose Wikipedia already has sufficient information. Very interesting, the claim indeed is treated under 103 “as if the poem is a familiar part of the prior art”.

    Now do the same for algorithms, mathematical formulas, business ideas, etc., and we have the EPO approach.

  32. Following Parker v. Flook it would not pass 101

    Um, no.

    It would pass 101. It would not pass 102/103. It would have nothing to do with whether the poemn itself was new or not. Pong, do you need a primer in Printed Matter Doctrine?

  33. “Granting a patent every time someone claims a cup with a new poem on it would be a perverse result.”

    Do you happen to know how US law would deal with this? Following Parker v. Flook it would not pass 101 (the cup itself being conventional), but Diamond v. Diehr seems to clearly imply that it would (a conventional cup still passing 101). How is this treated under 103?

    I’d say one should treat it “as if the poem is a familiar part of the prior art”, also for the purpose of obviousness. Basically the Parker v. Flook approach, but under the proper heading of obviousness.

  34. If no, on what basis should the cup be refused?

    Granting a patent every time someone claims a cup with a new poem on it would be a perverse result.

  35. Thanks pong.

    ping, Mr Bakels has read enough to realise that European Patent Attorneys are what Americans deem “patent agents” because they lack a law degree and are not registered with a Bar Association as an Attorney at Law. At least on that point, even I knew what he meant. Give him a break, if only because he is using English as a foreign language. Could you be as fluent in Flemish, or French, or Dutch as he is being in English?

    As Bakels explains, he’s an academic, looking for new insights, some theory which will supersede present ones, carry the day and for ever after carry his name. So, he’s bound to challenge the established view. As he’s finding out though, it is not easy to come up with a theory that is good enough to displace the incremental, trial and error, pragmatic and painstaking development of EPO caselaw carried out over 30 years by more than 20 Technical Boards of Appeal to get where it is today.

    Then again, if you have something substantive to add to the debate between Bakels and pong, bring it on, because we’d all like to read it.

  36. @Reinier:
    Why don’t you answer the simple question whether the test you propose would add anything to what Art. 83 EPC already requires? And if so, what is the difference? (I might be able to explain positive law, but I did take the time to read your brief and I believe it does not make a whole lot of sense.)

    “Considering non-technical features not to contribute to the novelty/inventive step (T1173/97, PBS, COMVIK etc.) again mixes subject-matter and novelty/inventive step.”
    It does mix, but it does not confuse. And it does make a lot of sense.

    Take the cup with a new and artistic poem printed on it. I think we agree that this cup, being a cup, is patent-eligible subject-matter.

    The cup with the poem differs from a known cup in that it has a poem printed on it. If we allow that the poem contributes to inventive step, then the cup is inventive / non-obvious, and a patent must be granted for it.

    According to you, does this cup deserve a patent, the only new thing about it being this very original poem printed on it?

    If no, on what basis should the cup be refused?

    I believe most laymen with only superficial knowledge about patent law would agree that the printed poem cannot make a known cup inventive. Patents are about technical ingenuity, at least in Europe.

    “Perhaps with computer-implemented business methods the distinction can be made. But e.g. for control engineering applications the distinction is problematic.”
    The EPO approach makes it possible to carefully treat any non-technical features appearing in claims relating to control engineering. I believe this is much harder with the UK approach. Identifying the non-technical features (or rather, the features that do not contribute to a technical effect) requires a technical understanding of the invention. No way around that. (And sure, it also requires one to decide whether certain effects are technical or not.)

    Btw, it is interesting that your amicus brief effectively states that there should be no limits on software patents apart from novelty, inventive step and sufficiency of disclosure. I thought you were kind of linked to the anti-swpat lobby.

    Another thing, are you aware that the Aerotel test ignores non-novel features when testing for patent-eligibility? Aerotel goes against the whole contents approach.

  37. Perhaps patent attorneys (patent agents, in US terminology)

    As if we didn’t have enough academics already over here – we get a foreign one who doesnt’ realize taht there are both attorneys and agents and the terms do not mean the same.

    Geesh.

  38. I am a European – but I studied US patent law extensively.

    Perhaps patent attorneys (patent agents, in US terminology) find my perceptions unusual. And they are right. As an acacemic, I tried to look for a different approach, in view of persistent complaints about unclear/inconsistent law. I appreciate that patent attorneys can’t afford to say “I don’t understand the law”. I can’t afford to ignore the complaints. Yes, I know that when the British judge complained about inconsistency (in the Aerotel decision), patent attorneys blamed him for poor understanding of EPO patent law. I would think twice to make such statements about a British judge.

    Back to the substance. This is an American website, hence the refercne to US case law. And it provides interesting insights. I trioed to draw a parallel between the link that is made in the US from 35 USC 112 to 35 USC 101, and the link that is *not* usally made from 83 EPC to 52 EPC. I appreciate that it requires some imagination to recognize the parallel, and I apologize if the approach is perhaps beyond the scope of this blog.

    Considering non-technical features not to contribute to the novelty/inventive step (T1173/97, PBS, COMVIK etc.) again mixes subject-matter and novelty/inventive step. The very notion that non-technical features can’t contribute to the inventive step implies that they can be distinguished. Yes, perhaps in the claims one can make the distinction. Perhaps with computer-implemented business methods the distinction can be made. But e.g. for control engineering applications the distinction is problematic.

    “pong” explains “positive” law (sorry, a European term), which is logical from his position, because as a patent attorney he is bound by the present state of the law. I am trying to find answers to persistent questions about consistency. And I am trying to link to the purposes of patent law. But I won’t elaborate on that aspect here.

  39. Dear Paul,

    I guess M. Battistelli might seem ill-equipped technically without a Science degree.

    On the other hand, thirty years ago I spent a year doing a DEUG course at Bordeaux University III. I already had nearly all of both a Physics degree and an arts degree in modern languages which at home made me feel split between C.P. Snow’s ‘Two Cultures’. The astonishing thing was how little the French suffered the same cultural divide.

    It was partly because all French feel clear thought as a cultural imperative, and mathematics is therefore not despised; by extension, neither are the hard sciences. Benoît Battistelli might yet show an adequate understanding of the word ‘technical’.

    Regards, Terry Cole

  40. To further explain my last paragraph: Diamond v. Diehr criticised Parker v. Flook _not_ for its dissection technique (“treating the abstract idea as a familiar part of the prior art”), but for ruling that the claimed invention failed 101 for the reason that the remaining (non-abstract) features were conventional. Diamond v. Diehr stressed that conventional features may be sufficient to pass 101.

  41. @Reinier:
    First, sufficiency of disclosure (Art. 83 EPC) is not a requirement of Art. 52 EPC for a good reason.

    Art. 52-57 EPC define the allowable scope of a patent:
    - the patent may only protect patent-eligible subject-matter;
    - its scope may not intersect with what was already known at the filing date;
    - it must be sufficiently far removed from what was known.

    Art. 83 EPC states that the applicant can only get such a monopoly if in return he discloses this new area to the public. This is not a condition on the scope of the invention, but a condition on its disclosure in the application.

    Systematically it makes no sense to view sufficiency of disclosure as a patentability requirement. You may disagree, but this is how patent law works.

    Second, would your requirement that only “knowledge that can be applied (by the skilled person)” add anything to the requirement of sufficiency of disclosure? If so, in what way does it differ from “the application discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art”?

    Third, do you agree that the test “can it be applied by the skilled person” is dependent on the filing date of the invention (in your words: dependent on the outside world)? Indeed, the capabilities of the skilled person depend on the common general knowledge at the filing date of the invention.

    Fourth, you have now started to criticise the technology requirement. This requirement has not much to do with the shift in the case law away from the contribution approach. Maybe you never meant to criticise that shift, but at least you gave me that impression.

    Note that whether the technology/technicality requirement is part of the EPC was not questioned in the referral. It is in any case beyond doubt that the EBA agrees with this requirement, since it plays an important role in many many EBA decisions of the past.

    You write:
    “One part of the problem is that “development” (changes in approach) of EPO case law are motivated by a development of insight in the essence of technology. See for instance the reference in one of EPO BoA decisions to the fact that “writing with a pencil on paper is technical as well” (but does not make a technical contribution). This is philosophical.”

    Wrong, wrong, wrong. The change in approach was not motivated by a development of insight in the essence of technology. The change in approach was motivated by the realisation that the old contribution approach mixes up novelty and patent-eligibility. It is very similar to what was stated in Diamond v. Diehr, with the addition that non-technical features may not contribute to an inventive step. Again, this change in approach does not at all mean that the boundaries of “technical” have changed.

    If a method of adding two numbers using pen and paper is to fail the test for patent-eligible subject-matter, then that test mixes in novelty and/or obviousness considerations. Before the inventions of pen and paper, such a method was clearly patent-eligible, since both pens and paper are undoubtedly patent-eligible subject-matter.

    “Yes, I am aware that the wordings of claims apparently already dissect the invention, but still there is the (statutory!) requirement that a single patent application relates to no more than a single inventive concept. Again, the associated provision (82 EPC) is in the formalities section, but its reflection on requirements pertaining to the actual invention can not be ignored.”
    I concur with MaxDrei: this is gobbledegook.

    “The “apparent” need for a dissection under the European “technicity” requirement (nowadays under 56 EPC) shows that this approach is fundamentally wrong.”
    You might not have realised that the “analytic dissection” technique does not contradict the “whole contents” approach.

    Whole contents is about not ignoring non-novel features. Dissection is about ignoring non-technical features (assuming them to be known). The COMVIK-approach is a “whole contents” approach to inventive step.

  42. I’m a European patent attorney. I can see where Mr Bakels is coming from (copious references to statutory provisions and caselaw) but not where he wants me to follow him. He relies a lot on US caselaw. I’m curious about his communication skills; can any US patent attorney follow him?

    For the time being, his posts look like he’s regurgitating stuff he’s previously binged on, without properly appreciating what he has been so assiduously gobbling. And sadly, when I look at what he has puked up, I see gobbledegook.

  43. Let me add something to my perception that the EPO Boards of Appeal can’t attribute the perceived inconsistencies in their approach to a “development of law” which is normal for any court. (@pong: Are you working at EPO? you really defend them!)

    One part of the problem is that “development” (changes in approach) of EPO case law are motivated by a development of insight in the essence of technology. See for instance the reference in one of EPO BoA decisions to the fact that “writing with a pencil on paper is technical as well” (but does not make a technical contribution). This is philosophical.

    Law should strike a balance of interests. In that resoect, American court decisions do a better job. Yes, they are bound by precendents. But that is not my point now. The essence i,s that decisions refer to interests

    When the SCOTUS denied patentability to mathematical algorithms in Gootschal v. Benson in 1973, its concern was that a patent on the algorithm would pre-empt all its uses. Basically it is a follow-on the Brenner v. Manson in 1966, when the SCOTUS said “a patent is not a hunting licence”. There is a fundamental tension between the exclusive right of a patent, and the principle of free trade fostered in the western world.

    Unfortunately, the “mathematical agorithm” concept is not very helpful to make a distinction based on interests. The result was confusion in the 1980s: see e.g. the FWA test. Eventually in the 1990s the CAFC concluded that there are no objections against patenting algorithms because they are abstract, but if they are abstract. But abstract subject-matter is not patentable anyhow, so hey rightly concluded that there is no reason for a separate “mathematical algorithm exception” (State Street, 1998). Teh mistake as that they failed to replace this exception with a better delimitation: the “useful/concrete/tangible result” criterion has been found insufficient.

    The generally recognized “abstract ideas” exception in US patent law is not very clear: the word “abstract” itself suffers from abstractness! But it does make sense, and actually it has substance, see 19th century(!) deciions like O’Reilly v. Morse, Le Roy v. Tatham, Rubber Tip Pencil, Tilghman v. Proctor. Hope that the SCOTUS continues this line in Bilski v. Kappos.

    Incidentally, behind all the logical (or not very logical) reasoning there are apparently shiting perceptions on whether patent law should be wide or narrow. The dilemma between the (statutory!) “whole contents” approach, and a “point of novelty” approach (formally abolished a long time ago, but still prevalent in various guises and under various names maps 1:1 to the above expansive vs. restrictive perception of patent law: a whole contents approach works expansive. But whatever one may think of Diehr, it explained very well why a dissection of an invention is inappropriate. Yes, I am aware that the wordings of claims apparently already dissect the invention, but still there is the (statutory!) requirement that a single patent application relates to no more than a single inventive concept. Again, the associated provision (82 EPC) is in the formalities section, but its reflection on requirements pertaining to the actual invention can not be ignored.

    The “apparent” need for a dissection under the European “technicity” requirement (nowadays under 56 EPC) shows that this approach is fundamentally wrong.

    Fixing the problem is like fixing a defective computer program suffering from design errors. the only solution is reculer pour mieux sauter.

  44. @ pong
    I don’t believe that art. 83 EPC is “just an administrative rule”, rather the opposite. But it is in EPC Chapter III “Chapter I Filing and requirements of the European patent application” (not in Chapter II “Substantive Patent Law”. The article is the peer of 35 USC 112. In US case law, there is often a discussion whether the “101″ test (=52 EPC) or the “102/103/112″ test is more important in a particular case (see e.g. State Street). Tell me if I am wrong, but I am not aware of similar “54/56/83 EPC” connection, at least not in case law.

    The 83->52 EPC connection (= 112->101 connection in 35 USC) is indirect anyhow. While improper subject matter can not be described in the required way, it is still a separate test. Put otherwise, proper subject matter is a necessary, not a sufficient condition for 83 EPC/35 USC 112 compliance.

    T 1173/97 and PBS are just as wrong as the original “contribution theory” developed from the VICOM decision. because the German and French text (that are equally authentic to the English text, see art. 177 EPC) of art. 56 EPC refer to “Stand der Technik”/”etat de la technik”, the EPO concluded that only inventions non-obvious i nthe field of technology qualify for patent, but the English text (referring to th “state of the art”) shows that this interpretation is questionable (or worse).

    Please note that it is actually incorrect to derive the “technology” requirement from the updated art. 52(1) in EPC2000. yes, it refers to “all fields of technology”, but the identical clause in art. 27(1) TRIPS purports to “none excepted” rather than “only technology”, and that is also basically the linguistic meaning, imho. Yes, the material of the “EPC 2000″ diplomatic conference shows that the drafters intended to clarify that EPO patents are only granted for technology – but under art. 32 VCLT preparatory material may only be take into account of the treaty text is really unclear (or unreasonable) – which imho is not the case here.

    Besides, even if 52(1) EPC would codify the technology requirement, it still does not imply that “as such” is the opposite of “technical”, the EPO position. Here the EPO is very alone – even in German law, where the technology requirement originated, the “as such” test was considered a separate test until about a decade ago, and the British always disagreed that the list of excepted subject matter under art. 52(2) EPC shares a lack of technical character.

    With the “vertical technology concept” I developed, there are to more inconsistencies, to be honest.

  45. @Reinier:
    In a presentation I found on the internet, you state (as in your brief) that patents should be reserved for knowledge “that can be applied”, and:
    “Surprisingly, this conclusion is fully compliant with a provision that is already in the European Patent Convention: the provision that requires appropriate disclosure. Granted, this provision is usually considered just an administrative rule for the application.”

    It is UTTERLY WRONG that Art. 83 EPC is usually considered just an administrative rule. Really, if that is what you believe, you simply do not have much of a clue about the European patent system.

  46. @Reinier:
    Maybe I misunderstood your answer to the cup question. Yes, I agree with the drafters of Diehr that the known cup with a print is statutory / non-excluded subject-matter. And as I said, this is exactly the present EPO approach.

    So we agree that the DUNS approach is correct?

  47. @Reinier:
    “Re development of the law: sorry to say, but you just re-iterate the EPO position, and the standard argument why interpretation is inevitable.”
    I can’t help it that the EPO position conforms with well established and universally acknowledged principles.

    “For the cup with the poem, it seems obvious to require specifically the technical aspect to be novel.”
    The technical aspect must be novel for the claimed cup to be non-excluded / statutory subject-matter? You are confusing the requirement of novelty with the requirement of statutory / non-excluded subject-matter. In your own words: novelty is NOT a property of the invention, since novelty depends on the outside world, therefore novelty cannot be a test for 52(2)(3) / 101.

    The “new” EPO approach recognises this and draws the logical conclusion. The reasons for the switch away from the old “contribution approach” are explained in T 1173/97, PBS, T 258/03, DUNS, etc. This development also has nothing to do with a change in the interpretation of “technical”, as you seem to suggest. The term “technical” has the same meaning in both approaches. What DID change is that now it is sufficient for a claim to recite one technical feature, novel or not, to render the claim non-excluded. Under the old approach only the novel technical features could render a claim non-excluded (which confuses novelty with the requirement of “invention” / 52(2)(3) / 101).

    I can agree with your “properties” vs. “state”, but I really don’t see how you can conclude from that that the old contribution approach would be the correct one.

    I have read your amicus brief. You confuse technicality with sufficiency of disclosure. Sufficiency of disclosure is already a requirement of the EPC (and is btw dependent on the outside world). Really, your brief makes no sense.

    @MaxDrei:
    “You suggest that the EPO approach might strike patent attorney observers as “odd”. I respectfully submit that more disinterested impartial intelligent observers might think it more odd that decisive to the outcome of a patentability enquiry on a new coffee mug is the answer to the question how non-obvious is the text of the admirable poem that adorns its outer cylindrical surface.”

    I fully agree. Moreover, I suspect that non-patent professionals such as Supreme Court justices share this view.

  48. @ pong
    Re development of the law: sorry to say, but you just re-iterate the EPO position, and the standard argument why interpretation is inevitable.

    Let me put this in perspective. Unlike in most other fields of law, there are persistent complaints about lack of clarity. And a court departing from precedents is imho obliged to explain why. But the fundamental issue is that there is not really a basis to motovate the changes. On the one hand, the EPO boards of appeal try to grasp the “ontology” of technology, on the otherhand they apply the technology concept as a legal concept, where “non-technical” basically is defined as “non-patentable”. Then it can no longer be a reason – then the reasoning would be circular.

    re the cup and the drawing: read the article I cited (or my Amicus brief to the EPO, which was the base for the article). This type of paradoxes stems from a fundamentally incorrect understanding of patent law structure, and I have developed a consistent alternative, though admittedly it is pretty far apart from present case law.

    52 EPC=35 USC 101 are the sole provisions concerning properties of the invention (well, for completeness I ought to add 57 EPC, but it has no practical relevance anymore nowadays). Properties apply to the invention itself, regardless of the outside world.

    54/56 EPC=35 USC 102/103 concern a state of the invention. After patent application, the invention is no longer novel or non-obvious, but it still is an invention. Here it is the opposite: the invention staus the same and the envirnment changes.

    Anyone familiar with the principles of object-oriented program design will appreciate the difference immediately.

    The pre- and post T1173/97 and PBS contribution theory, and the Flook vs. Diehr approach with or without “insignification post solution activity” all suffer from paradoxes because they mix properties and state.

    For the cup with the poem, it seems obvious to require specifically the technical aspect to be novel. Various examples notably from control-engineering applications show that the system is the invention and the drafters of Diehr were right to decide that an invention solely composed from non-novel elements still could consititute patentable subject-matter.

    Also in “real life”, soome questions seem to have obvious answers, but actually there is no correct answer at all if the question itself is defective. The standard example is “did you stop beating your wife?” Don’t answer “Of course I did!”

  49. Nice work, pong. I didn’t know the Neilson v. Harford case.

    I remember at AIPPI in Berlin quite a few years ago, an influential speaker from the USA lamenting the EPO approach of “deeming” new stuff (like the text of the poem) to be part of the prior art.

    I had thought that the EPO Boards of Appeal had in the meantime advanced beyond that point. I will have to re-read the Duns Licencing case (on which the EBA opinion hangs so much) but I thought that the current way is to simply finesse away the “new” text on the cup with the argument that it adds nothing of substance to the defence against an obviousness attack because it is not a technical means contributing to the solution of an objective technical problem. So, no need any more then to take the embarrassing step of “deeming” it part of the prior art.

    You suggest that the EPO approach might strike patent attorney observers as “odd”. I respectfully submit that more disinterested impartial intelligent observers might think it more odd that decisive to the outcome of a patentability enquiry on a new coffee mug is the answer to the question how non-obvious is the text of the admirable poem that adorns its outer cylindrical surface.

  50. Reading up on US case law, I have to agree with the dissent in Parker v. Flook that 101 should not involve novelty and obviousness considerations. I can therefore understand why Parker v. Flook was overruled in Diamond v. Diehr. However, how can one explain that “insignificant post-solution” activity will not transform an unpatentable principle into a patentable process? Diamond v. Diehr removes novelty and obviousness from 101 and at the same time imports a concept of “significance”. That makes no sense at all.

    The Boards of the EPO were able to get around this problem by applying the Neilson v. Harford to novelty and inventive step (102 and 103). This seems to be the only approach that is logically consistent, but I guess it is unlikely that Bilski will adopt it…

  51. It might be useful to explain the EPO approach to a claim to a cup with a (novel and original) poem printed on it.

    A cup with a poem is still a cup, and cups are not excluded (non-statutory if you will) subject-matter, so the cup with a poem passes the test for excluded subject-matter (the equivalent of 101).

    However, the features defining the poem are considered non-technical (since they relate to excluded matter), at least insofar as they define the textual content and layout and other presentational properties of the poem. (Insofar as they define what paint is used, they are of course technical.)

    Now those non-technical aspects are to be ignored when assessing novelty and inventive step. Since it is easier to skip the question whether the claimed cup’s paint particles render the cup novel over a known cup, the Boards usually go directly to inventive step (non-obviousness). Since the skilled person, starting from a known cup and given the task of somehow placing the poem on the cup would have no problem in applying known paint techniques in order to solve this task, the claimed cup with poem is obvious.

    It might at first glance seem odd that the skilled person is given the content of the poem, even though the poem was not known in the prior art, but this approach dates back to the 19th century UK decision Neilson v Harford (1841) 151 ER 1266 (cited in O’Reilly v. Morse and again in Parker v. Flook): “We think the case must be considered as if, the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces; and his invention then consists in this — by interposing a receptacle for heated air between the blowing apparatus and the furnace. In this receptacle he directs the air to be heated by the application of heat externally to the receptacle, and thus he accomplishes the object of applying the blast, which was before of cold air, in a heated state to the furnace.”

  52. (Sorry, I should have added from the start that the very entertaining poem did not previously exist.)

  53. Btw, maybe someone can tell me how I should read the word “new” in “any new and useful process, …”. Does this refer to novelty (rendering the concept of statutory subject-matter dependent on the date of the invention)? Or should I read it as “not pre-existing in nature” / “made my man”?

    It is the latter, right?

    In that case, a known cup with a very entertaining poem printed on it would be statury subject-matter, right? (I would be very surprised if it was not.) This cup would also be novel, since the poem did not exist in the prior art. Chances seem good that the poem is also non-obvious. So a (US) patent would be granted, right?

  54. @Reinier:
    “The EPO Boards of Appeal make a caricature out of their right to “develop law”, and the absence of a formal “stare decisis” rule. They apply the technicity criterion, but they argue that this criterion must be “dynamic” and *can* not be defined, because the very purpose of patent law is to protect *new*, as yet unknown technologies. Think twice. This is outrageous!”

    That is hardly outrageous. In fact, this happens ALL THE TIME, at least in continental law systems. Continental statute law is full of open norms that are intended to be further developed by the courts (and I doubt this is much different in common law).

    The point is that one CANNOT foresee each and every possibility. One cannot simply write down once and for all 15 categories of “technical” fields and leave it at that.

    The notion of “technicality” together with the COMVIK-approach as developed by the Boards of Appeal allows one to very precisely analyse a claim for inventive step, making sure an inventive step is not acknowledged for a non-technical development even in the presence of clearly technical features.

    “The EPO used to apply a “contribution theory”, that was replaced by a (secret) “contribution theory 2.0″ in 1998. Previously, there should be a novel non-excluded item, now the novelty should be in a non-excluded field. See the difference? It is the same! They persistently mix the novelty/non-obviousness and subject-matter tests.”

    Tell me: is a cup with a new print on it excluded subject-matter? Does that make sense?

  55. “For further information please refer to my article: [...] Available on Westlaw.”

    Care to post it here for po’?

  56. Ping – just at the moment it is a Brit (Ms Alison Brimelow). But as of 1 July it will be a Frenchman called Benoit Battistelli who is now Director-General of the French Institute for Industrial Property. He has a degree in law and spent a year in Cambridge in 1975 which is a positive. Unlike all European patent attorneys, though, he does not have a degree in science.

  57. Numerically, there are just two European countries that really matter here: Germany and the UK.

    That’ll sit good with the French. Who was that that was leading the EPO now?

  58. Leaving the admissibility issue aside, this case shows why Americans should *not* be envious not to have a technology criterion.

    Over the years, the EPO Boards of Appeal developed very detailed rules to assess the technicity of an invention, and of software and business methods in particular. It is like the old American FWA test, but worse.

    As a British judge once said: the reference to technology really is a “restatement of the problem in more imprecise terminology”. Well, in that respect the American “abstract ideas” exclusion is similar – except perhaps that it is obviously vague, while the technology test seems clear at first sight.

    Re precedents, there is actually just a gradual difference between the Anglo-Saxon “stare decisis” system and the continental European system. Normally, European courts have an (implied) obligation to make consistent decisions as well. In any legal system, an *occasional* change in policy is inevitable. Still it requires ample justification by a court if it really feels it should depart from precedents. Just as a matter of “legal hygiene”.

    Due to historic reasons, national courts who decide on infringement of European patents are not bound by EPO precedents. A single CAFC-like court for the EU is a long-term controversial project (some people believe that the CAFC experience is a reason not to make the same mistake again!) Numerically, there are just two European countries that really matter here: Germany and the UK. Germany usually follows the EPO (Munich and Karlsruhe are not that far apart), but – as usual – the British foster their “splendid isolation”. Well, they have come closer to the EPO in recent years because they understand the need for harmonisation, but they are still strong critics of the EPO approach. I always love the way British courts word their decisions.

    The EPO Boards of Appeal make a caricature out of their right to “develop law”, and the absence of a formal “stare decisis” rule. They apply the technicity criterion, but they argue that this criterion must be “dynamic” and *can* not be defined, because the very purpose of patent law is to protect *new*, as yet unknown technologies. Think twice. This is outrageous!

    As you know, law is supposed to apply fixed rules to varaible facts – now the rules are variable as well. The EPO claims to have the right, if not the obligation to develop the law it its case law. It is a pretext for – indeed – inconsistent and inpredictable decisions. It shows that there is something fundamentally wrong in the underlying reasoning.

    There is a persistent tendency – in the US too – to depart from the “whole contents” principle. Apparently (only apparently!) the principle can not be reconciled with intuition, so it must be violated, but in disguise, in order to avoid the blame not to observe the “whole contents” rule. So don’t be surprised the law is unclear!

    The EPO used to apply a “contribution theory”, that was replaced by a (secret) “contribution theory 2.0″ in 1998. Previously, there should be a novel non-excluded item, now the novelty should be in a non-excluded field. See the difference? It is the same! They persistently mix the novelty/non-obviousness and subject-matter tests. Well, it all resembles the Flook/Diehr dichotomy, and the US concern about “insignificant post-solution activity” -which makes the same mistake.

    To make a long story short, there are two different issues on the table: the lack of clarity, and the “scope creep” of the patent system into new fields such as (abstract) business methods.

    The EU Directive proposal originally was a clarification attempt – but it was perceived as a subject-matter extension attempt, which caused the political turmoil that eventually caused it to fail when it was rejected by the EU Parliament in 2005.

    In my perception it is a strange step for the EPO President to submit the same clarification problem – that was identified as a political/legislative problem by the very act of proposing a directive – to the judiciary for another attempt. But the Enlarged Board drew the right conclusion: this is really something for the legislator.

    Still, only politicians with suicidal tendencies will consider yet another CII proposal.

    IMHO the basic problem is that all these “clarification” attempts are bound to fail, because they are written by narrow-minded patent attorneys who build on fundamentally faulty logic. The issue is not to grasp the “ontology” of technology (which is believed to be a fundamental patentability criterion – in a German tradition, not in the UK!). The true issue is a proper understanding of the interests that patents are supposed to protect.

    For further information please refer to my article: Reinier B. Bakels, ‘Software Patentability: What Are the Right Questions?’, 31 EIPR 2009, p. 514-522. Available on Westlaw.

  59. Max: Will some lawyer perhaps do Emeritus a favour and explain how law does actually get “settled” in a civil law (as opposed to English common law) jurisdiction?

    Judging by the Enlarged Board’s decision, law gets settled in much the same way dust gets settled. You throw a bunch of it up in the air and wait, remaining scrupulously inert all the while.

  60. I believe Poppa may be right in calling the “what is technical” ISSUE toxic. That’s not the same as calling the concept of technicality toxic. See also point 11.2.3 of the Opinion.

  61. Hmmm,
    “useful arts”, “technology”, “technical”, “information economy”, discussssss……..

  62. Two more pearls from dear Maxie.

    Is “technical” really “toxic” Poppa?

    Of course – otherwise why didn’t the board take the opportunity to be decisive? For all the prosletyzing done about how great and clear this is, groping towards the future rather deflates that bravado.

    Looking back the way we came, all is crystal clear

    Really Sherlock? Do you mean that hindsight is 20/20? Wow what a concept. I bet you could apply this universally.

  63. Is “technical” really “toxic” Poppa?

    Take the question in the context of civil law and the way the law develops in such jurisdictions. No Binding Precedent, just a bunch of blind TBA members, groping forward into the cloud that is the future.

    Looking back the way we came, all is crystal clear. Moving forward, the EBA has its 24 TBA scouts out there, feeling their way forward.

    On obviousness, 103 (Art 56), the EPO is in much better shape than SCOTUS. As to 101 (Art 52), we in Europe await Bilski, to see what sort of a fist SCOTUS can make of that ticklish problem.

    Somebody on the parallel IPKat thread complains about different EPO Boards having different views on “technical”, in the context of claimed subject matter that involves a “mental act”. Good so. Their argument will flush out the purest line of legal advance. Meanwhile, I must say, if that’s the limit of what’s wrong at the moment with “technical”, it’s a pretty small gripe. Wasn’t it Lord Justice Jacob, who pointed out that, when it comes to the validity of a claim, a “puzzle at the edge” is not a good enough reason to revoke the claim. So it is too, with “technical”.

  64. i thirdsy the “The Great Free Beer debate, or what ales the patent system?”

    it will probably be the funniest paper ever written about patent law. in fact, it borders on the bizarre, but is pure genius.

  65. I see 2 take-away points in this “decision”:

    1. the EBA doesn’t want to touch the toxic “what is technical” issue, to wit:

    ” 9.2… We do not attempt to define the term ‘technical’.”

    2. the EBA does tell us what magic words to use to “avoid exclusion” (the EPO equivalent of a 101 statutory subject matter rejection):

    “10.13 The present position of the case law is thus that… a claim in the area of computer programs can avoid exclusion under Articles 52(2)(c) and (3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium. But no exposition of this position would be complete without the remark that it is also quite clear from the case law of the Boards of Appeal since T 1173/97 that if a claim to program X falls under the exclusion of Articles 52(2) and (3) EPC, a claim which specifies no more than “Program X on a computer-readable storage medium,” or “A method of operating a computer according to program X,” will always still fail to be patentable for lack of an inventive step under Articles 52(1) and 56 EPC.”

  66. Socius, this in haste. No excuses needed. It is confusing, I grant you.

    When the EBA says that there is no divergence, and therefore no need for a touch on the tiller, that settles the issue.

    Those who argue CII cases before the Boards of Appeal at the EPO know where that leaves them. I think you will find Paul Cole’s note reflects this sentiment. See also the IPKat blog.

    National courts in EPC Member States, considering patentability under the EPC, ought to know where that leaves them.

  67. Paul, it seems we have a mutual friend. I know Dave from way back, when we were patent searchers.

    I even saw Dave perform as lead singer/keyboard player in TV Personalities, but patent law won out over rock’n'roll. I used to sing in a band too, but Dave never saw me perform (probably just as well). His band released an album and did a tour of Germany, whereas we never had a recording contract and the most I ever made from a gig was three quid, LOL!

    I have read the article you’re talking about, BTW, because his firm sends me their newsletter. Good value for the two cases I sent him!

    Alun Palmer, US Patent Agent

  68. MaxDrei,

    Excuse my ignorance, but it appears that the only settled point is that the referral was not admitted for consideration because there was no controversy for the board to resolve. I don’t see how my characterization is irreconcilable with yours. As for my dicta position, look to the language used: “While it is not the task of the Enlarged Board in this Opinion to judge whether this system is correct”, “can play a very important role”, “It would appear”, “it seems to this Board”. At [b]MOST[/b] the EBA dipped its big toe into the waters of CII patentability, thought I am doubtful that it did even that.

  69. Will some lawyer perhaps do Emeritus a favour and explain how law does actually get “settled” in a civil law (as opposed to English common law) jurisdiction?

    Emeritus, do you realise that the EPO’s “Enlarged Board of Appeal” is not just some bog standard Board of Appeal with an extra along for the ride but, rather, the top floor, with statutory duties defined in the European Patent Convention. All the other EPO Boards of Appeal (not far short of 30 of them) are down below, on a lower deck. In the EPO, individual TBA Decisions are not binding on anybody (except for the case at bar), but what the EBA says does “settle” the law.

  70. Correct me if I am wrong but regardless of the 61 or so page “opinion”, the case was dismissed on procedural grounds. Thus, all of the discussion on patenting CIIs is dicta. The discussion thus does give insight into the thinking of this particular Enlarged Board but does not provide any settled law regarding CIIs.

  71. link to ipkitten.blogspot.com

    links to the IPKat thread, with a moderated comments thread.

    Malcolm, you think it would be good news if the EPO ramps up its business method filter. But do you know how the EPO’s 103 filter works? Not fierce enough for you? I’m surprised.

  72. Paul’s description has the flavor of a Monty Python skit.

    It sounded like the decision of the Enlarged Board amounted to “look, this isn’t an argument!”

  73. >>Prof. Straus

    Ah, a man that understands patents. A generally good guy as well.

  74. I cannot too strongly recommend the Dave Musker paper, and his comments on stupefying effect as a criterion for the patentability of beer before the EPO. Nor to mention some of his characters e.g. International Brewing Machines and the Open Sauce movement.

  75. Could this be an omen for the ultimate character and decipherability of the long awaited Bilski opinion?

    Paul’s description has the flavor of a Monty Python skit.

  76. PaulColethere was ample opportunity for bad news, a tightening of patentable subject matter standards and even more problems for those who draft specifications for software and business method-related inventions.

    That sounds like great news from where I’m sitting.

  77. Malcolm – I completely sympathise with your views.

    You can look up the questions on the EPO website. And you can scratch your head vigorously while you are trying to figure out what they were really about. I never really figured them out, and a lot of European people I have spoken to feel the same. The questions did not originate in a real controversy but were drafted by the EPO staff in order to put forward an (alleged) controversy. An object lesson in why this is usually a bad procedure.

    What we can say is that T 154/04 Duns has gained greatly in stature. That is a good news/bad news situation. The good news is that it is easy to draft claims which will not be caught by the prohibitions on certain types of subject matter. The bad news is that if they do not contain features which produce what the EPO is willing to accept as a technical result, then the claim will be rejected for lack of inventive step. That approach now seems to be written in stone.

    Also now written in stone is that for patentability there must be an effect produced which goes beyond the internal operation of the software itself. I think that largely codifies the existing case law.

    It is the old question about the curious incident of the dog in the night-time. The dog did nothing in the night time, and similarly here the Enlarged Board did nothing to change fundamentally the rules for software and business method inventions. The EPO approach will remain much the same, which is good news because there was ample opportunity for bad news, a tightening of patentable subject matter standards and even more problems for those who draft specifications for software and business method-related inventions.

    And if you have not read it, Google “The Great Free Beer debate, or what ales the patent system?” by my friend David Musker. It summarizes the history of the Free Beer debate, which occurred some years ago in Wasted Life, the first virtual world to feature a patent system. If you do not find it hillarious, I will be very disappointed. And it is far more informative than the decision that has just been handed down by the Enlarged Board.

    If the Bilski decision is similarly innocuous, everyone will be very pleased, if somewhat surprised.

  78. This should be a segment on Saturday Night Live… Or we should call it Patently o Jive.
    HeHe you all make me laugh. Oops strike that 6 and IANAE are way to angry to make fun.

  79. The Enlarged Board’s decision on point 2 creates some uncertainty. What, exactly, constitutes a different composition of a single Board? As Joseph Straus stated in his amicus brief, does it mean a completely different membership? different chairpersons? variation in a single member? I believe it would have been better for the Enlarged Board to take the opportunity to delineate more specifically what “different composition” means as it did with “different opinions.”

    In particular, I agree with Straus that the same laws (EPC Article 112(1) and the Vienna Convention) that call for a narrow definition of “different opinions” also call for a narrow definition of “two boards,” namely two different boards having different organizational numbers. Failing that, the definition of “different composition” should be similarly narrow.

    Joseph Straus’s amicus brief can be found here:

    link to innovation.hoover.org

    Full disclosure: I work with Prof. Straus at the Project on Commercializing Innovation.

  80. MM said: >>Fyi, Paul, it is impossible for anyone to >>understand what the issue was or what was >>decided. Thanks.

    Please go upstairs and ask your aunt to help you out, MM.

  81. The EPO President asked the Enlarged Board to consider a set of questions concerning the patentability of programs for computers (computer-implemented inventions, CIIs) on which she deemed the Boards of Appeal to have given different decisions and which she held to be of fundamental importance within the meaning of a. 112(1) EPC. Her referral had been preceded by an informal letter from her predecessor, Alain Pompidou, dated 22 February 2007, in which Lord Justice Jacob’s suggestion in the Aerotel/Macrossan judgment of 27 October 2006 ([2006] EWCA Civ 1371) of referring the issue of CII patentability to the Enlarged Board had been dismissed as unnecessary. About 100 Amicus curiae briefs had been filed, amongst which a number questioned the admissibility of the referral, a view which was supported inter alia by Lord Hoffmann who was until his recent retirement the member of the UK House of Lords Judicial Committee who usually wrote the opinion of the House in cases involving IP.

    The opinion of the Enlarged Board is available here.

    and a more extended file of the case including the questions originally referred and the reasons for the reference can be found here.

    In the outcome, the doubts proved well-founded and the referral was rejected as inadmissible.

    Fyi, Paul, it is impossible for anyone to understand what the issue was or what was decided. Thanks.

  82. “Technical Effects” strikes me as a rational rule for dividing patentable from unpatentable subject matter. Great for Europe. For us here in the U.S., it could also be a great solution. However, I see no clear support for this in the statute. The courts are supposed to interpret laws, not write them. Furthermore, the Supreme Court has already construed this statute, beginning with the decision in Gottschalk v. Benson. While many feel that case was wrongly decided, the Supreme Court is reluctant to revisit its own prior construction of federal statutes. The Federal Circuit did about as good a job as could be done in reconciling precedent with policy, within these constraints. The Supreme Court has a little more power, but don’t expect miracles. Furthermore, there are inherent constraints that the Supreme Court is powerless to address, such as the limited budget of the USPTO, resulting in poorly vetted patents, which may be the root cause for a lot of the discontent in this area. The reality is that money for better examination will not be there. The answer may be simply to restrict what is patentable, as Bilski did. On the other hand, the Justices, in trying to show how brilliant they are, could come up with a “solution” that makes things even worse.

    Also left unsaid is that the Federal Circuit has been trying much harder to get with the program of following the same law that everyone else does. Bilski itself is a very good example of this.

    If I were on the Court, I would be tempted to vote to affirm on the opinion of the Federal Circuit.

    It is true that there has been a tendency to apply Bilski very narrowly, so as to accept any recitation of “a processor” or the like, making the “machine” part of the test rather toothless. However, this interpretation has not fully matured, and the Federal Circuit itself can regulate how it is applied.

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