Peter informed the group that the Directorate was seeing a large surge in requests for ex parte patentability hearings on "hopeless" business method applications. He recognised that in the past applicants had tried to hang on to cases in the hopes that the law and/or the political climate might shift towards widening the scope of what was patentable. However, it should by now be very clear to everyone that this was not going to happen. The political climate in Europe was firmly against any widening, and whilst the latest EPO case law continued to refine the tests, it was not making any significant shift in the boundary between what is and is not patentable.
The large number of hearings was creating a lot of extra work for the Directorate with no real benefit to applicants, their representatives or anyone. Accordingly, we are introducing two changes to the way we handle hopeless patentability cases, with immediate effect:
1. Appointment of a hearing at an earlier stage, with consideration of other matters deferred. At present, each case goes through several rounds of correspondence, in which other objections are resolved and, typically, the applicant offers a growing number of reformulated claims allegedly containing some technical effect. The case then finally gets to a hearing right at the end of the rule 34 period, when the hearing officer nearly always concludes that the invention is fundamentally unpatentable and no amount of claim re-formulation will get round that fact. In future, a hearing will be appointed in such cases as soon as the first response has been received from the applicant.
2. Shorter decisions, which would still make the reasoning clear but would do so by relying on the reasoning in previous decisions rather than going through the reasons all over again. This approach was justified by the House of Lords judgement on 1 July in South Bucks District Council and another v Porter (No 2) - see Times Law Report for 2 July. This had made clear that whilst a tribunal’s reasons had to be intelligible and adequate, they could be briefly stated.
Peter stressed that these changes only applied to hopeless cases, and not to those whose disclosure did seem to contain a genuine technical effect which had the potential to provide the basis for a valid claim.
Peter encouraged the group to look at the latest EPO decision – Hitachi, T0258/03. At first glance, its approach seemed very different from that established by UK case law, since it reduced the Article 52 test to a triviality. However, it strengthened the Article 56 test in a way that had much the same effect as the UK approach, and arguably was even a little tougher. One interesting line of reasoning was that circumventing a technical problem by modifying the business scheme was not a technical contribution.
Peter confirmed that whilst the Office would welcome an appeal on a suitable case in order to give the courts the opportunity to consider the latest EPO case law, applicants were showing little inclination to appeal. He suspected this was because they felt they had very little chance of success.
Peter asked the interests for help in getting the message across. Following discussion,CIPA he agreed to issue a Practice Notice, which could then be publicised in the CIPA Journal. Gwilym said this would help agents who were under pressure from US clients to pursue these cases.
Peter also said that the Office is preparing literature to help with the debates on the "software" directive, and one of the items would be a short leaflet which would include a list of a dozen or so cases refused by the Office this year, to give a clearer idea of what was not patentable. Richard suggested that this list be included in the Practice Notice (with hyperlinks to the decisions), and Peter agreed. Peter also confirmed that the material produced would be available to the profession and would be put on the Patent Office website.
Actions: Interests to take back to organisations information regarding faster PO decisions. Peter to prepare a Practice Notice [...]"
Indeed, the "political climate" in Europe is more and more firmly against any widening of the criteria for patentable subject-matter. To the contrary, the various anti-patent lobbyists are exercising a huge political pressure on Patent Offices and Courts to define the patentability criteria as narrow as possible. Not only in the UK but also in Germany and elsewhere.
A lot of money has been wasted around 1999/2000 during the last phase of the dot-com boom era for preparing and filing patent applications directed to border areas of computer-implemented inventions which looked promising at filing date but now, under today's "political climate" conditions, are considered to be "hopeless" cases. Those investors fleeced of the patent rights for their inventions might wish to thank the various anti-patent campaigners for their losses.
BTW, the last item on the agenda of the meeting was:
"[...] 9.4 Website information
Luc asked about the possibilities of providing an e mail notification to customers regarding updating of Patent information notices on the website. [...]"
"E-mail notification"? Sounds rather outmoded. Could please someone explain to the Internet Development Team the advantages of RSS / Atom Feeds?
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Dipl.-Phys. Axel H Horns is Patentanwalt (German Patent Attorney),
European Patent Attorney as well as European Trade Mark Attorney. In particular, he is Member of:
UKPTO web site the 
