EPO Board Of Appeal Clarifies Various Legal Issues - UK Lord Justice Jacob Heavily Criticised.
The European Patent Office has published Decision T 0154/04 - 3.5.01 of the Boards of Appeal concerning European Patent application 94912949. The application is directed to a method of estimating product distribution, at it appears to be clear already prima facie that there might be some difficulties in view of the patentability of such invention over the legal requirements set forth in the EPC. But what makes this Decision really interesting is not only a thorough discussion of the merits of the individual case but still more the scrutiny with which the Board under the Chair of Mr Steinbrenner has answered some more general questions in the context of the debate on the limits of patentability.
One interesting point might be read as an answer to UK judges proposing to raise the question concerning the limits of patentability to the Enlarged Board of Appeal in view of allegedly differing case law issued by various Boards over the years:
"[...] The decisions of the EPO Boards of Appeal are mutually contradictory. To say that is not to criticise anyone. On the contrary the Boards of Appeal have each done what they think is right in law - as befits tribunals exercising a judicial function. But surely the time has come for matters to be clarified by an Enlarged Board of Appeal. Under Art.112(1)(b) of the EPC the President of the EPO has the power to refer a point of law to an Enlarged Board where two Boards of Appeal have given different decisions on that question. That is now clearly the position. There are indeed at least four differing points of view. We have no power to refer any question and must reach our decision now independently of what any Enlarged Board might decide if and when there is a reference. Nonetheless we have ventured to formulate questions which might be asked of an Enlarged Board in the hope of encouraging a reference. We add that the Comptroller supports us in this course. [...]"
The answer given by the Board of Appeal reads as follows:
"[...] A decision deviating from an opinion given in another decision of a board of appeal, a diverging opinion expressed in decisions of different boards, or a deviation from some national jurisprudence - for example, from the UK case law of the Court of Appeal to which the appellant referred in support of its case - are not per se valid reasons for referral (see also Article 15 RBPA). Hence, the legal system of the European Patent Convention gives room for evolution of the jurisprudence (which is thus not "case law" in the strict Anglo-Saxon meaning of the term) and leaves it to the discretion of the boards whether to give reasons in any decision deviating from other decisions or to refer a point of law to the Enlarged Board. The President of the European Patent Office may intervene under Article 112(1)(b) EPC, in particular if the legal situation becomes unclear for first instance proceedings. [...]"
And, vice versa, there will be limited reception of national case law by the Board of Appeal:
"[...] In the interest of the harmonisation of national and international rules of law, the boards of appeal will take into consideration decisions and opinions given by national courts in interpreting the law (see G 5/83 - Second medical indication/EISAI (OJ EPO 1985, 64), Reasons No. 6). Nevertheless, in the proceedings before the European Patent Office, such considerations do not exonerate a board of appeal from its duty as an independent judicial body to interpret and apply the European Patent Convention and to decide in last instance in patent granting matters. In addition, despite harmonised legal regulations it is not self-evident that their interpretation is also harmonised among different national courts, let alone courts of different contracting states, so that the boards of appeal would be at a loss as to which interpretation to follow if they did not exercise their own independent judgement. [...]"
A doctrine providing a patentability test based on seven principles for inventions comprising non-technical features is stated as follows:
"[...] The constant jurisprudence of the boards of appeal as far as it is relevant to the present case may be summarised succinctly in the following principles:
(A) Article 52(1) EPC sets out four requirements to be fulfilled by a patentable invention: there must be an invention, and if there is an invention, it must satisfy the requirements of novelty, inventive step, and industrial applicability.
(B) Having technical character is an implicit requisite of an 'invention' within the meaning of Article 52(1) EPC (requirement of 'technicality').
(C) Article 52(2) EPC does not exclude from patentability any subject matter or activity having technical character, even if it is related to the items listed in this provision since these items are only excluded "as such" (Article 52(3) EPC).
(D) The four requirements invention, novelty, inventive step, and susceptibility of industrial application are essentially separate and independent criteria of patentability, which may give rise to concurrent objections. Novelty, in particular, is not a requisite of an invention within the meaning of Article 52(1) EPC, but a separate requirement of patentability.
(E) For examining patentability of an invention in respect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention.
(F) It is legitimate to have a mix of technical and 'non-technical' features appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features 'as such', do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step.
(G) For the purpose of the problem-and-solution approach, the problem must be a technical problem which the skilled person in the particular technical field might be asked to solve at the relevant priority date. The technical problem may be formulated using an aim to be achieved in a non-technical field, and which is thus not part of the technical contribution provided by the invention to the prior art. This may be done in particular to define a constraint that has to be met (even if the aim stems from an a posteriori knowledge of the invention). [...]"
UK Lord Justice Jacob is heavily criticised in view of his arguing in the recent Aerotel/Macrossan judgement:
"[...] These views [of the EPO Boards of Appeal] are entirely consistent with the legal concept of 'invention' applied by the Board in the context of Article 52(1) to (3) EPC, which should not be mixed up with the layman's ordinary understanding of invention as a novel, and often also inventive contribution to the known art. Using these two very different concepts of invention in one breath would be a legal fallacy.
The 'technical effect approach' endorsed by Lord Justice Jacob in the Aerotel/Macrossan judgement (see paragraphs Nos. 26(2) and 38) seems to be rooted in this second ordinary meaning of the term invention, a practice which might be understandable 'given the shape of the old law' (Lord Justice Mustill, loc.cit.), but which is not consistent with a good-faith interpretation of the European Patent Convention in accordance with Article 31 of the Vienna Convention on the Law of Treaties of 1969.
Actually, any reference to the prior art in the context of Article 52(2) and (3) EPC would lead to insurmountable difficulties; the prior art, the 'state of the art' in the terminology of the Convention, is a complex concept finely tuned by a combination of provisions, Articles 54 to 56 EPC, and depending on the filing and priority dates of the application or patent as well as on the patentability requirement involved.
There is, however, no rule whatsoever defining the prior art which should be applied in the context of Article 52(2) EPC. It is simply inconceivable that the contracting states missed such an important point in the conclusion of the Convention. Hence, there are convincing reasons why the 'contribution' or 'technical effect' approach should be abandoned, which the boards did some ten years ago.
[...] The 'technical effect approach (with the rider)' applied in the Aerotel/Macrossan judgement is irreconcilable with the European Patent Convention also for the further reason that it presupposes that 'novel and inventive purely excluded matter does not count as a 'technical contribution' ' (Aerotel/Macrossan, e.g. paragraph No. 26(2)). This has no basis in the Convention and contravenes conventional patentability criteria; referring e.g. to mathematical methods and to discoveries, the Enlarged Board of Appeal said in decision G 2/88 (supra), Reasons No. 8: '[...], as was recognised in Decision T 208/84 [...] (dealing there with a mathematical method rather than a discovery, but the same principle applies), the fact that the idea or concept underlying the claimed subject-matter resides in a discovery does not necessarily mean that the claimed subject-matter is a discovery 'as such' '.
In fact, a non-technical feature may interact with technical elements so as to produce a technical effect, e.g. by its application for the technical solution of a technical problem (see for example Opinion G 1/04 (supra), Reasons Nos. 5.2 ff.). If this is true for some purely excluded matter, for example the intellectual exercise cited in the Opinion, then - to the extent it contributes to the technical effect - it must count as a contribution to the technical character.
[...]
From this distinction between the technical features and non-technical features ('merely mental in nature' in the citation above), it must be inferred that nontechnical features to the extent that they do not interact with technical features to produce a technical effect cannot establish novelty or inventive step (see also the decisions cited in 'Case Law of the Boards of Appeal of the European Patent Office, fifth edition, December 2006, European Patent Office 2006, chapter I.D.8.4). The Aerotel/Macrossan judgement at paragraph No. 27 makes the comment that to 'deem the new music or story part of the prior art (the device of Pension Benefits and Hitachi) is simply not intellectually honest'. However, this misses the point of the approach used by the Board to determine the technical features in a claim if technical and non-technical aspects are tightly intermingled in a mixed type claim, as it is typically the case with computer-implemented inventions (see, for example, decisions T 172/03 - Order management/RICOH (not published in OJ EPO), Reasons Nos. 4 ff. and T 619/02 (supra), Reasons No. 4.2). [...]"
Indeed, after the failure of the EU Draft Directive on the patentability of computer-implemented inventions, which would have harmonised these matters, there appears to be a widening rift between the Decisions of the EPO Boards of Appeal, on the one hand, and of the Case Law of the UK Courts, on the other.
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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:
Decision T 0154/04 - 3.5.01 of the Boards of Appeal concerning 
