In search of a technical effect

This is a repost of an article that will shortly be appearing in the October 2013 edition of the CIPA Journal. For anyone who doesn't want to know the score before the issue is published, please look away now. Alternatively, read on for a version in which I have incorporated links to the relevant case law and other material. 

Law and practice on what is considered patentable at the UK and European patent offices has been running along parallel lines for as long as the EPC has been in existence. While the direction of travel is always roughly the same, though with occasional diversions, the lines never seem to converge completely. At the risk of a gross oversimplification, this can be largely blamed on the difference between the law of precedent as applied in the UK and at the EPO. On one side, the EPO Boards of Appeal are apparently content to allow "lines of reasoning" to be developed, and sometimes abandoned, as time goes on and technology develops (see for example T 1227/05, commented by me here on the IPKat). Law and practice in the UK on the other hand has followed more of a process of accretion and correction, where previous case law has tended to act as a restraint on any major changes, although changes at the boundary can and do sometimes happen.

There have been six Court of Appeal judgments in the area of patentability under section 1(2) over the period from 1989 to 2013 (see here for a full list). From these, the law in the UK can be considered settled in a way that is roughly based on the four step test put forward by the UK IPO and approved by Jacob LJ in Aerotel/Macrossan from 2006, with various caveats and fudges applied that try to make the test stay in line with earlier Court of Appeal judgments as well as being as consistent as possible with the approach taken at the EPO. To achieve complete consistency between the UK IPO and EPO from the different approaches is, of course, impossible. In an ideal world, the same test would be applied regardless of the office in which an application was being prosecuted, and the same result obtained, not least because the effect of a patent granted by the UK office is the same as one granted by the EPO. This ideal world is not, however, going to appear in the foreseeable future. A change to match the EPO approach in the UK would require abandonment of not just the Aerotel/Macrossan test and related Court of Appeal case law, but also the well-established Windsurfing/Pozzolli test for inventive step. This is because the EPO test for patentability is inextricably linked with the problem-solution approach for assessing inventive step. Barring a highly surprising result from the UK Supreme Court, and ignoring the long-term possibility of the IPO ceasing to grant patents together with UK courts no longer having jurisdiction over UK patents, this is not going to happen. On the other side, it is unlikely in the extreme that the EPO Boards of Appeal would consider abandoning the universally applied problem-solution approach in order to fit with the different approach taken by only one member state. Since a fundamental change in approach is unlikely from either side, the best that could reasonably be hoped for is that outcomes are as closely aligned as possible. As the Enlarged Board of Appeal stated in G3/08 in relation to the exclusion of computer programs, “a uniform understanding of where to draw the line between applications relating to programs for computers as such [...] still cannot be assumed despite considerable convergence in recent court rulings” (point 4.1 of the reasons). However, despite the discrepancies in approach and principles, as Lord Neuberger stated in Symbian, there is clearly a strong desire for the two offices to be “marching together as far as possible”, and “where there may be a difference of approach or of principle, one must try to minimise the consequent differences in terms of the outcome in particular patent cases” (paragraph 61).

Since we can safely assume, at least for the foreseeable future, that the differences in approach and principle are not going to change substantially, the question becomes: how do we ensure that the outcomes are as closely aligned as possible? Now that the heat and antagonism arising from Jacob LJ’s judgment in Aerotel/Macrossan, which claimed that the EPO Boards of Appeal decisions were mutually contradictory, and the resulting response from Herr Steinbrener in T 154/04 accusing the Court of Appeal of missing the point, has dissipated, others have attempted to patch up any differences by using more common language that can be applied to both approaches. A common theme is the unfortunate but seemingly inevitable use of the word “technical”, in particular in the form of tests and checks for whether an invention provides a “technical effect”. Even though no-one has been able to provide a stable definition for what the word “technical” actually means in the context of patentability, this does not seem to matter because decisions from both sides are building up regarding what can and cannot provide a technical effect, while all decisions carefully avoid providing a definition of the exact boundary outside of which there would be no such effect.

In the UK, following the Court of Appeal judgments in Symbian and Aerotel, an attempt was made by Lewison J (as he then was) in Re AT&T Knowledge Ventures LP [2009] EWHC 343 (Pat) to summarise, in the form of a series of useful “signposts”, what aspects of an invention might point towards a relevant technical effect. These signposts are:

i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;

ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;

iii) whether the claimed technical effect results in the computer being made to operate in a new way;

iv) whether there is an increase in the speed or reliability of the computer;

v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

One benefit of these signposts is that there is no need for the word “technical”; the signposts make just as much sense without it. Hearing officers at the IPO seem to like the signposts, and have used them in practically every decision since AT&T, although in the vast majority of cases to show that a claimed invention does not in fact demonstrate any technical effect. The Court of Appeal, in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 (see here for my comments) has indicated that these are “useful signposts, forming as they do part of the essential reasoning in many of the decisions to which we must look for guidance. But that does not mean to say they will be determinative in every case”, but considered that the fourth was too narrowly put, which should instead ask “whether the computer is a better computer in the sense of running more efficiently and effectively as a computer” (paragraph 51 of Kitchin LJ’s judgment). This has been recently confirmed in Lantana Ltd’s Application [2013] EWHC 2673 (Pat), where Birss J has simply rewritten the signposts as modified by HTC v Apple.

Although the signposts, which are now firmly established in UK practice, are useful pointers towards what might be patentable, they are non-exhaustive and do not necessarily apply in every case. As Lewison J put it in AT&T, “it is still necessary to consider whether the claimed technical effect lies solely in excluded matter” (paragraph 41). This caveat leaves plenty of room for hearing officers and judges to conclude that an invention would still be excluded from patentability. In practice though there have been no decisions from the IPO where one of the signposts has pointed towards a technical effect but where the hearing officer has nevertheless still considered the invention to be excluded. The possibility therefore remains open, but it seems unlikely to be used in practice.

One of the main problems with aligning the UK approach to patentability with that of the EPO’s is that an assessment of patentability is typically made, according to the Aerotel test, without any real consideration of the prior art. The contribution (step two) is often assessed without looking at where the claimed invention differs from the closest prior art, and sometimes even without a search having been carried out. In some cases an assessment of novelty and inventive step is carried out by the examiner, and the issue of patentability is the only issue remaining to be resolved. In most cases, however, there is no real assessment of novelty and inventive step and patentability is the sole issue in question. This approach is completely at odds with that taken at the EPO, where the assessment of patentability is deliberately intertwined with that of inventive step through use of the problem-solution approach. This approach requires the closest prior art to be established, which in some business method cases might be simply a ‘general purpose computer’ (requiring no actual search to be carried out). The difference over this prior art is then established, and what technical effect this difference has. The objective technical problem is derived from the effect, and finally a judgment made as to whether the skilled person would find the difference to be obvious. The assessment of patentability is incorporated in the steps of assessing what the technical effect is. In line with the leading case on the subject, T 641/00, any differences that are not considered to be technical are moved into the problem to be solved, rather than considered as being part of the solution. In this way, any non-technical aspects are considered not to contribute to the technical character of the invention. As stated in T 641/00, “the problem must be a technical problem, it must actually be solved by the solution claimed, all the features in the claim should contribute to the solution, and the problem must be one that the skilled person in the particular technical field might be asked to solve at the priority date” (point 5 of the reasons), and “an invention in the sense of Article 52 EPC can only be made up of those features which contribute to said technical character” (point 6).

A recent decision from the EPO Boards of Appeal, T 1670/07 (commented on by the IPKat here), has reviewed in more detail what would be considered to be technical. As with T 641/00 (which, strangely, was not cited in the decision), the consideration at the EPO is largely a negative one, i.e. there are certain aspects that are considered not to be technical. Based on this decision, which related to patentability of a method of facilitating shopping using a mobile device, selecting multiple vendors for a shopping order and provision of a shopping itinerary based on a user profile are both considered to be not technical. The Board also considered that there were certain ‘fallacies’ in the arguments presented for a technical effect, which in essence claimed that non-technical aspects could in some circumstances contribute to the technical character of an invention. The Board considered that they could not.

How then, in practice, do these different approaches to patentability work, and do they result in decisions where one would favour patentability for particular types of inventions over the other? The answer appears to be in looking at how a technical effect is defined, rather than the overall approach to be followed. Consideration of a technical effect is now at least common to both approaches, even if it is used at different steps in the process. There is also a degree of convergence in what would be considered to be a technical effect, even though the way to assess what such an effect might be is a positive one in the UK (i.e. deciding whether the effect can be found from a list) and a negative one at the EPO (i.e. whether the claimed technical effect is one that has been previously decided not to be technical). In the end though, if there is a technical effect according to the UK approach, there will always be at least an arguable case for the effect to contribute to the technical character of the invention according to the EPO approach. Decisions may vary according to the facts of particular cases, and to how well arguments are made but in general, despite the differences in approach, the good news at the moment is that there should be no significant difference in result. 

Time-Lapse IVF - A non-patentable method of diagnosis?

Article 53(c) EPC states that European patents shall not be granted in respect of "methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body". As far as I am aware, all of the case law relating to this provision relates to methods applied on human or animal bodies in their fully formed state. What does not appear to have been considered previously is whether the provision would apply to methods applied to human or animal embryos. This intriguing possibility has been raised in an article to be published in the journal Reproductive Biomedicine Online, written by Sigrid Sterckx, Julian Cockbain and Guido Pennings. The second of these authors happens to be a European Patent Attorney, while the other two are from the Bioethics Institute in Ghent. The abstract of the article, which is currently available in full online here as a preprint, states:

European Patent No. 2430454 [EP Register here] of Stanford University is open to opposition before the European Patent Office if such opposition is filed by 23 October 2013. This is the European equivalent of the US Patent that raised such controversy in this journal in August 2013 as being a patent on time [the patent is presumably one of these: US7963906, US8323177 and US8337387, although the August 2013 article refers to publication number US 2011/092762. None of these are, of course, patents on time]. The European Patent, which is directed to a method of selecting embryos for implantation using the results of time-lapse microscopy, should, in the present authors’ opinion, be revoked as being directed to a method of medical diagnosis, which is unpatentable under European patent law. The only party currently opposing Stanford’s patent is a competitor, Unisense FertiliTech A/S which is itself seeking to patent similar methods in Europe; the objection that Stanford has patented a method of diagnosis has not been raised by Unisense FertiliTech. We submit that Stanford’s patent should be opposed to safeguard competition and to protect the freedom to operate of clinicians. In this paper we explain how Stanford’s patent should fail under European law.

The argument in the article, which is well worth reading in full, is quite well put and at least plausible, although very probably wrong. The main weakness in the argument seems to me to be whether an embryo can be considered to be a human body. Although there does appear to be support from the CJEU on this interpretation, I think it is possibly a bit of a stretch to apply this to the particular exclusion under Article 53(c). The case law of the EPO Boards of Appeal, in particular the decision in G 1/04 (see this section of the case law book), would also seem to suggest that such a method would not be within the exception because it does not provide a diagnosis for curative purposes. The test would instead only provide an indication of whether an embryo is 'good' or 'bad'. The argument therefore seems to me to be doomed to fail on at least two major points.

The article has, however, already had the desired effect of provoking another opposition. An opposition has recently been filed (here) which, by an amazing coincidence, names the authors of the article and the European Society of Human Reproduction & Embryology as joint opponents. As an aside, I am a bit puzzled as to why the opposition would be filed in this way, rather than using the qualified European attorney as the joint representative.

Regardless of the new opposition, it looks like the patent will probably be revoked, or at least substantially limited, as a result of the opposition that has already been filed, which is very extensive and relies only on conventional grounds of novelty and inventive step. As a point of interest, one of the prior public disclosures cited by Unisense Fertilitec is a YouTube video (see below), which apparently shows the patented method being carried out prior to the filing date. It will, however, be interesting to see how the additional ground for opposition is viewed, and whether it becomes at all relevant or is simply dismissed as being a no-hoper. One to watch for the long term, perhaps, given the long gestation period of EPO oppositions.



UPDATE 5 November 2013: Third party observations have now been filed by Galway Fertility (here) and jointly by the Association of Clinical Embyologists (ACE) & the Royal College of Nursing (RCN) (here), both sets of observations presumably having been prompted by the Sterckx et al article. Both make points based on ethical, rather than legal, grounds, so do not appear to add any further legal weight to the additional opposition. The support by ACE has also been announced on the ACE website here.

UPDATE 20 November 2013: My reply to the paper, which is to be published as a letter in the same journal, is currently in press and available here.

UPDATE 9 May 2014: The patent proprietor's representative has now responded to the oppositions. Their letter of response can be accessed on the EP register here. In brief, they seem to be in agreement with me (unsurprisingly) that the claimed invention is not a method of diagnosis within the meaning of Article 53(c), and for the same reasons. The main points are that i) the method is not a diagnosis of any kind, and ii) it does not result in any kind of treatment. G 1/04 is fairly decisive.

Partial Priority - An opposing view

Regular readers will know that I have been concerned with the issue of partial priority under Article 88 EPC, and how far it can be applied, because this has serious implications regarding the extent to which a European patent or application can be held to lack novelty over its own priority application. I have consistently expressed the view that it should not be possible for a European patent to be held to lack novelty over its own priority application if the effect of Article 88 EPC in combination with Article 54(3) EPC is properly applied. My view, which has support from the EPC and the case law of the Boards of Appeal, is detailed in previous posts (the main one being here). There is, however, an opposing view that can also be said to have support from the EPC and case law, which has been expressed and discussed in comments on this blog and elsewhere. It is not yet clear which view will eventually win out, and I think it will need a referral to the Enlarged Board to settle it.

This opposing view has been detailed by one of the opponents in the Nestec case T 1674/12, which unfortunately will not be the case that settles the issue because a referral to the Enlarged Board has not been made. As noted last week, the Board decided in the end to revoke the patent, and will be issuing their written decision later. Whether their reasons will take into account the partial priority issue is not yet known. I suspect they will simply bypass the issue because the patent was invalid for other reasons anyway [Update 19/10/13: It appears my suspicions were correct; the Board did not even get to the issue of partial priority at the hearing, so it will definitely not feature in the reasons for the decision]. For the time being, it is interesting (to me at least) to see how the other side's view on the partial priority issue has been expressed.  The following is a rough translation of the relevant portion from the opponent's letter from 9 September 2013, which I have annotated with hyperlinks where appropriate. The original is available on the register here. My apologies for any errors or omissions resulting from my less than ideal language skills. If you can come up with a better translation, I would be happy to replace it.

2 . On the issue of partial priority

The patentee seeks, in its letter of 15 July 2013, to criticize the British decision of Nestec v Dualit especially regarding the issue of the invalidity of the priority of claim 1 (and by default novelty vis-à-vis document D1).

2.1. Position of the proprietor

The incumbent continues to assert that claim 1 has a partial priority that immunizes against the lack of novelty vis-à -vis document D1 . In support of this assertion , the owner cited and commented on a recent decision T 1222/11, which also refers to a part of the preparatory work of the EPC 1973, namely a memorandum of FICPI, mentioned in the reasons of the Enlarged Board of Appeal G 2/98.

G 2/98 accepted the principle of allocating separate priority dates for different subject matter covered by the same generic type of claim, provided that it leads to "a claim having a clearly defined limited number of alternatives".

According to the proprietor, the decision T 1222/11 as well as the memorandum of FICPI lends credence to the theory that the above condition posed by the Enlarged Board of Appeal is satisfied if it is possible to "identify conceptually" alternative objects by comparing the claim and the contents of the priority documents.

The approach proposed by the holder should not be followed for the following reasons.

2.2. Neither decision T 1222/11, nor the contents of the memorandum of FICPI, is authoritative

First, the decision T 1222/11 (by Board 3.3.7) is an isolated decision. In point 11.5 of the reasons, it is explicitly stated that the Board departs from the approach that has been followed in previous decisions T 1877/08 (by Board 3.3.10 ), T 476/09 (Board 3.3.9 ), T 1443/05 (Board 3.3.1 ) and T 1127/00 (Board 3.3.8) . We can add to this list the decision T 70/05 (Board 3.3.8) , which confirms the reasoning in T 1127/00.

Thus the decision T 1222/11 is opposed to the dominant jurisprudence of the Boards of Appeal. If only for that reason, it should not be followed by the present Board.

With regard to this Memorandum of FICPI, it is true that the opinion G 2/98 states in 6.4 that we can consider that it "express[es] the legislative intent underlying Article 88(2), second sentence, EPC". The purpose of the memorandum was indeed to suggest that the legislature can allocate multiple priorities in a claim. The proposal was accepted , and it is in this (narrow) sense that the memorandum reflects the ratio legis of Article 88.

Specifically, the Enlarged Board takes up the distinction made in the memorandum between the claims of "AND" type and claims of "OR" type. Only the second type can lead to the allocation of multiple priorities (paragraphs 6.5 to 6.7 of the reasons).

However, the Enlarged Board of Appeal has not expressed the opinion that the detailed content of the memorandum should be taken as is, without changing anything or adding an assessment of whether, for a given generic claim, partial priority can actually be recognized for a portion of the claim.

The Enlarged Board has actually implicitly taken a contrary position when said in the passage quoted in the opinion, at the end of Section 6.7 of the reasons that "The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2), second sentence, EPC is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters". Indeed, this condition of a "limited number of clearly defined alternative subject matters" is not listed in the Memorandum of FICPI. It is therefore a condition that was added to the memorandum by the Enlarged Board of Appeal , when analyzing the situation of type "OR" claims.

Consequently, it is not correct to take the examples cited in the memorandum of FICPI and indicate that the Enlarged Board approved the allocation of multiple priorities for these examples. The Enlarged Board has only taken over the general framework of the memorandum of FICPI (distinction between claims of type "OR" and "AND"), adding the condition of a "limited number of clearly defined alternative subject matters" regarding claims of "OR" type, without any comment on the illustrations of "OR" type claims presented in the memorandum.

Only the decision T 1222/11 has taken over the sample claims of "OR" type mentioned in the memorandum, but in doing so it follows an approach in contradiction to Boards 3.3.1 , 3.3.8 , 3.3.9 and 3.3.10 .

In addition, on the merits, the approach of the proprietor, which is based on the decision T 1222/11 and the Memorandum of FICPI taken in its entirety, is not consistent with the view G 2/98 as is shown below.

2.3 . The faulty reasoning of the decision T 1222/11 and part of the memorandum FICPI

In section 11.4 of the reasons for the decision T 1222/11, Board 3.3.7 is critical of the jurisprudence of Boards 3.3.1 , 3.3.8 , 3.3.9 and 3.3.10 of the fact that this jurisprudence has held that the requirement for the Enlarged Board on the "limited number of clearly defined alternative subject matters" characterizes the manner in which the subject of an "OR" claim must be defined. In point 11.5.2 of the reasons, Board 3.3.7 offers its own interpretation of the condition laid down by the Enlarged Board, that this condition simply refers to the ability to identify conceptually, by a comparison of the claimed subject matter with priority documents, a limited number of clearly defined alternative subject. This theory is also extended to the case of partial priority (paragraph 11.6 of the reasons).

But this interpretation cannot be correct because it leads to rendering meaningless the condition "limited number of clearly defined alternative subject matters" posed by the Enlarged Board. Indeed, it is always possible to divide conceptually (that is to say abstractly and thus artificially) a generic object into two objects of type A and non-A. Also, one wonders in what situations allocating multiple priorities (or partial priority) should not be accepted, following this approach. In other words, to follow the proposed T 1222/11 interpretation, the condition imposed by the Enlarged Board had simply no reason to be: it is not a requirement.

In addition, the Board 3.3.7 reviews examples in the memorandum of FICPI, and sees a confirmation of its theory (Section 11.5.8 of the reasons). But in fact, at least some of these examples are problematic.

The first example cited (listed in Section 11.5.5 of the reasons) seems consistent with G 2/98. In this example, a first priority document discloses subject matter with the element chlorine, a second priority document discloses subject matter with the elements bromine, iodine and fluorine, and a generic claim in the subsequent request is subject matter with a halogen. In this case, the generic claim has the first priority in terms of chlorine, and the second priority that is bromine, iodine and fluorine.

This first example appears to conform to the G 2/98, since the generic term "halogen" corresponds to a limited number of clearly defined alternative subject , namely the four elements chlorine, bromine, iodine and fluorine.

The situation is different when a generic claim covers a continuum of embodiments . This is particularly the case in the third example of the memorandum of FICPI in point 11.5.7 of the reasons of T 1222/11.

In this example, a first priority document discloses a method of coating the interior of a pipe, and a second priority document discloses a method of coating the walls of bottles or any other hollow body. The memorandum suggests that the provision of the EPC proposed on multiple priorities will permit a generic claim in a subsequent application of a method of coating the inner walls of a hollow body. The memorandum justifies this approach by the desire to avoid having to unnecessarily increase the number of claims of patent applications.

The memorandum states in this regard: "if multiple priorities are not allowed for a single claim, the applicant must write parallel claims, one on the method of coating inner walls of the pipe, which will benefit from the first priority, and the other on the method of coating inner walls of hollow body other than the pipes, which will benefit from the second priority".

But this position is completely incompatible with the position of G 2/98, that for the condition of the "same invention" to be met for a claim to be eligible for the priority of an earlier application means that: "the person skilled in the art [must ], using common general knowledge, directly and unambiguously deduce the purpose of the claim of the previous application as a whole".

According to the reasoning of the memorandum of FICPI, a putative claim "on the method of coating inner walls of bodies other than hollow pipes" is supposed to benefit from priority in the second priority document. The second document priority only describes a "method of coating walls of bottles or any other hollow body" and therefore does not describe a method of "coating internal walls of hollow bodies other than pipes". According to G 2/98 - and the application has been made consistently by the Boards of Appeal - this claim devised by the FICPI memorandum therefore cannot benefit from the second priority. It is necessary that the second priority document itself describes a "method of coating inner walls of bodies other than hollow pipes" for priority to be validly claimed.

Correspondingly, the generic claim proposed in the third example of the memorandum of FICPI cannot benefit from the multiple allocation of the first priority and the second priority. Not that the claim was a generic form - since this does not raise any difficulty in the case of first example of halogens, but the fact that the concept of cladding inner walls of hollow bodies covers a multitude of possibilities (while G 2/98 requires a limited number of subject matters), which are not clearly defined (although the G 2/98 requires that the objects are clearly defined). Thus, this claim cannot really benefit from the second priority, which is the only one to disclose the generic concept of cladding hollow bodies, a concept that is not divisible by a limited alternative objects clearly defined number.

In fact, the Board 3.3.7 seems to have identified the contradiction between the third example of the memorandum of FICPI and the position of G 2/98. But for the Board, the position of G 2/98 does not apply just to the situation of multiple or partial priorities .

It is true that the question that the Enlarged Board of Appeal responded to did not specifically concern the situation of multiple or partial priorities . Nevertheless, the principle laid down by the Enlarged Board has a very broad application and also covers claims of type "OR" with multiple or partial priorities. Thus, the allocation of a certain effective date of only part of the subject matter of a claim assumes that the subject matter can be directly and unambiguously derived by the skilled person from the relevant reference document .

To decide otherwise would be to establish an exception to the test for disclosure that was developed by the Enlarged Board of Appeal over the years including G 3/89, G 11/91, G 2/98, G 1/03 and G 2/10 - while nothing justifies such an exception.

This approach, termed the "gold standard" in G 2/10, is indeed precisely considering the coherent separate questions of the validity of the right of priority (Art. 87 EPC ), the extension of subject matter (Art. 123(2) and 76(1) EPC) and novelty (Art. 54 EPC).

And, in this consistent approach, the central criterion is direct and unambiguous disclosure for the skilled person. This is why the reference to the possibility of identifying conceptually alternative subject matters proposed by T 1222/11 and endorsed by the patentee has no place in this coherent approach. It is, in effect trying to implement a so-called rule of logic to conclude in a systematic way the possibility of benefiting from the allocation of multiple or partial priorities.

However, using a rule of this type of logic has been firmly rejected by the Board of Appeal, in a related context, that of the evaluation of disclaimers. The Enlarged Board [in G 2/10] concluded that it was not possible to make a case by case evaluation of the direct and unambiguous disclosure of relevant subject matters.

The memorandum of FICPI was written in 1973 , well before the establishment of the "gold standard" mentioned above. It is not surprising that it is not fully compliant with this standard. It is for this reason that the Enlarged Board of Appeal made clear in the G 2/98, the condition of a "limited number of clearly defined alternative subject matters", the only way to ensure consistency of the whole practice of the EPO .

2.4. Conclusion concerning claim 1

In view of the foregoing, the reasoning of the patent holder cannot be followed. Claim 1 of the main request does not cover a "limited number of clearly defined alternative subject matters". In fact the claim covers an infinity of subject matters that are not identifiable to each other - as has already been explained above. This claim cannot therefore benefit from the claimed priority, even partially. So there is a lack of novelty vis-à -vis D1.

This opposing view looks at least superficially persuasive, citing much relevant case law in support. The main flaw in the argument, however, is the assertion that the Enlarged Board in G 2/98 did not consider that all of the examples in the FICPI memorandum could justify a claim having a valid claim to partial priority under Article 88 EPC. If this was the case, it is very strange that the Board made no mention of this in their reasons. The Board clearly approved the memorandum and its justification for Article 88 EPC, so the argument that the criterion of "a limited number of clearly defined alternative subject matters" somehow makes some of the examples in the memorandum invalid is to my mind implausible. If instead we take all of the examples in the memorandum, which the Board in G 3/98 certainly at least considered, to be valid then the opponent's argument must fall away and a claim to partial priority of the kind in the Nestec case must be valid.

Nespresso European Patent Revoked

Following my previous post on the subject of the appeal case in T 1672/12, the hearing for which was held in Munich over the past couple of days, a press release from Nestec has announced that the Board of Appeal has decided to revoke the patent (thanks to IPCopy for prompting me with a link). Nestec's press release states:

Nestlé Nespresso SA acknowledges the decision today of the Appeals Board of the European Patent Office (EPO) to revoke a patent related to the Nespresso system. The decision overrules a decision by the EPO [opposition division] from April 2012, which maintained the patent in an amended form. We believe that the decision fails to recognise the unique innovations inherent in the design of the Nespresso system. 

While disappointing, the ruling does not have any impact on the current competitive situation. Nespresso has brought legal cases against producers of generic capsules, although there are currently no prohibitions on their sale based on this patent. The decision, therefore, does not change the status quo. 

The protection of our intellectual property is an important component of our business strategy. However, our success will continue to be driven by our ability to exceed consumer expectations by delivering products and services of exceptional quality. This focus has allowed us to maintain our position as the reference in the portioned coffee category and it is why consumers continue to choose the unique Nespresso experience over the 100 other portioned coffee offerings in the market globally. 

We will await the written decision of the EPO ruling before determining next steps in the pending legal cases.

This presumably means that the Board has decided not to refer the partial priority issue to the Enlarged Board, which is doubly disappointing. The reasons behind the Board's decision will not be known until the written decision issues, which could take a few months. It will certainly be interesting to see how the Board managed to tackle (or perhaps avoid?) the issue.

UPDATE 19 October 2013: I have heard from a very reliable source that the issue of partial priority did not come into play at the hearing. The deciding factor was instead that of added matter (Article 123(2) EPC). The Board got no further than this, deciding to refuse all requests on this basis and revoke the patent.

UPDATE 22 November 2013: The minutes of the oral proceedings have now appeared on the EP register here. The minutes confirm that the patent was revoked for not complying with Article 123(2). The Board stated:

"Après délibéré, la chambre a conclu que l'objet de la revendication 1 selon la requête principale ne satisfait pas aux exigences de l'article 123(2) CBE, en particulier du fait de la suppression de deux caractéristiques ("position intermédiaire selon un axe de manière décalée et/ou inclinée" et- "la capsule asymétrique"), et du rajout des deux caractéristiques finales prises en isolation dans la description (collerette passe "en dessous des moyen d'arrêt" et "de façon à ce que dans son mouvement, la partie mobile agisse sur la capsule pour la descendre")"

UPDATE 6 January 2014: The decision has now issued, and has been expertly summarised here at K's Law. Not a word about toxic priority, of course.

Coffee pods at the ready

The hearing in appeal case T 1674/12 relating to Nestec's European patent EP2103236 is due to be held tomorrow, 9 October 2013, at the EPO in Munich. For readers unfamiliar with the case, see my earlier post here. Since I last posted on the subject there has been further correspondence, the most interesting bit of which to my eyes is a letter filed just a few days ago by one of the opponents. This letter raises a question that the opponent submits "depending on whether certain issues arise during the oral hearing". The opponent asks:

1) How is the proviso in G 2/98 [point 6.7] that "The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2), second sentence, EPC is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" to be applied?
2) What is the test in law for a "limited number of clearly defined subject matters"?

The question, similar to that raised in my last post, goes to the heart of the partial priority issue on which a significant part of the appeal depends, and on which there is now a clear discrepancy in the case law of the EPO Boards of Appeal. Although it would obviously delay resolving the issue for quite a while, a referral to the Enlarged Board would seem to me to be a necessary next step so that this issue can be properly addressed.

Given that the Board of Appeal will issue a decision at the hearing, but which will not appear in writing for a while, any information on how the case goes would be gratefully received, either as comments to this post (anonymous if necessary) or by email to me at tuftythecat@gmail.com.

UPDATE 11 October: According to a press releases here, picked up by the WSJ here, the Board of Appeal has revoked the patent. This presumably means that the Board did not consider it worth referring a question to the Enlarged Board on the partial priority issue. This could perhaps be because the patent was invalid for other reasons, but we will not know for sure until the Board issue their written decision.

2.5 Million UK Patents? I don't think so.

The UK IPO recently announced in their IPO Facto blog (archive version here) the "2.5 Millionth Patent!", on the occasion of publication of GB2500000. The IPO have also added it to their history section here, and the story has been picked up here, here, here, here, here and here. The immediate impression that any reader might get from this is that 2.5 million patents have now been granted since the Patent Office started. Great, you might think, and a vindication of the inventiveness of UK inventors punching far above their weight. After all, the much bigger USA only passed the 8 million mark a couple of years ago.

This impression would, unfortunately, be completely false. The Patent Office has not granted 2.5 million patents. It has, however, published 2.5 million patent applications (for the time being let's ignore what happened prior to the 1977 Act*). This is a very different thing. Under UK patent law, every patent application in the UK has to first be published before it is granted, unlike in the US where a patent number is only given once a patent issues. UK applications are, once a search has been done, first given a publication number ending in 'A', which is currently what GB2500000A is, and normally published 18 months after the earliest priority date. Only once the application has been through examination can it be granted. The same number is then used for publication of the granted patent, but with a 'B' at the end instead.

Given that not all patent applications proceed to grant, there will certainly be a lot fewer than 2.5 million patents granted by the UK Patent Office. I don't have the figures easily to hand (does anyone know?), but I would hazard a guess that the number will probably be somewhere around half to two thirds of that. There might have been two million patents granted, but I doubt it has got quite that far yet.

Currently, patent applications cannot be granted until at least 3 months from the date of publication. Therefore, even if GB2500000 is viewed by the examiner as being allowable (and it isn't at the moment), it cannot be granted until after 11 December 2013.

I should say, in case anyone is thinking I am being overly negative, that I think the invention defined in GB2500000 seems pretty neat. The application describes a monitoring method using microwaves, where electrically conductive fibres embedded in fabric are used to generate signals by reflection of microwave radiation. This could, the application says, be used for remote monitoring of personnel in hazardous environments, for patient monitoring or for monitoring athletes during training or performance. Very clever (if it actually works, of course). The search results look pretty promising too, with only citations of background relevance. If the applicant, Liverpool John Moores University, can overcome the various clarity objections raised by the examiner, it looks like they would be able to get themselves a granted patent. This will, however, not happen until after 11 December 2013, and it certainly won't be the 2.5 millionth UK patent.

*UPDATE 4/10/13: There is an interesting quirk here, for those interested in what happened before the 1977 Act came in. Since numbering restarted at GB2000001 under the 1977 Act (as mentioned in the IPO's history section), there are quite a lot of numbers that were not used, leaving a hole of nearly 400,000 that has not been filled. The total number of GB applications published is therefore at most about 2,100,000. 

Lantana: Mind your language!

A definition of insanity, at least according to some (and credited to various famous figures including Benjamin Franklin, Mark Twain and Albert Einstein), is doing the same thing over and over again but expecting a different result. This is the impression I sometimes get from reading decisions on patentability from the UK Intellectual Property Office. There are, of course, some cases where the applicant manages to pull a patentable rabbit out of their application hat when faced with a hearing, but in most cases the applicant is on a hiding to nothing. This is certainly borne out by the numbers: according to the IPO's decisions database, only 37 decisions in the area of excluded matter over the past 15 years have resulted in an application being allowed or remitted to the examiner, while 371 have resulted in refusal. A hit rate of just over 9% does not sound particularly promising. I suspect the number of applications that have simply been abandoned rather than pursued further at a hearing is much greater.

[Right (Figure 21 from the application): does this look technical enough?]

One tactic often used in such cases that has always struck me as being strange, not least because it never seems to work, is where the applicant (or more probably their patent attorney) rewrites the claims to sound more 'technical' without apparently changing the substance of the invention at all. The reasons for doing this might be more to do with wanting to be seen to be doing something than a belief that such changes might give the application more of a chance. A judgment from the newly-appointed Patents Court judge Mr Justice Birss, Lantana's Application [2013] EWHC 2673 (Pat), illustrates this point quite well. Claim 1 of the application (which admittedly from the outset was quite technical-sounding anyway) was rewritten during prosecution to read as follows:

An electronic data retrieval system comprising a local station, a remote station, a packet switched network to provide a transmission path between the local station and the remote station, and a machine-readable data storage device storing retrievable data files including machine-readable data representing at least one of a visual product and an audio product,
wherein said local station includes:
a data store storing a plurality of machine-readable data retrieval criteria identifying data files among said retrievable data files stored at said machine-readable data storage device to be retrieved;
a packet switched network interface connected to said packet switched network;
a user interface co-operable with said data store and interactable with a user, to enable selection by the user of one or more machine-readable data retrieval criteria; and
an electronic processor configured to produce, in response to the selection by the user of the one or more machine-readable data retrieval criteria, a first e-mail message including the selected one or more machine-readable data retrieval criteria together with a machine-readable instruction for retrieving data files, among said retrievable data files stored at said machine-readable data storage device, using the selected machine-readable data retrieval criteria, and to send the first email message to the remote station via said packet switched network interface and said packet switched network;
wherein said remote station includes:
a packet switched network interface connected to said packet switched network to receive the first e-mail message from the packet switched network;
a filter adapted to parse the first e-mail message to determine whether the first e-mail message includes any machine-readable instruction and any data retrieval criteria; and
an electronic processor to execute the first machine-readable instruction, and upon execution of the machine-readable instruction and in accordance with the selected machine-readable data retrieval criterion, retrieve the one or more required data files among said retrievable data files stored at said machine-readable data storage device from the machine-readable data storage device, produce one or more second e-mail messages, the one or more second e-mail messages including the retrieved one or more data files as one or more attachments, and send to said local station, via the packet switched network interface of the remote station, and the packet switched network, the one or more e-mail messages and one or more attachments.

A total of 378 words seems like a lot to define what is in essence a system with two computers arranged so that one computer could retrieve files by sending an email asking for a file stored on the other computer, which would then send an email back with the file attached. Justice Birss seemed to think so too (see paragraph 8). The rest of the decision is fairly standard, at least to anyone familiar with the UK case law on patentable subject matter, leading up to the Court of Appeal judgment in HTC v Apple earlier this year (see here for my comments). Unsurprisingly, the appeal was dismissed on the basis that Birss J could not see that the contribution made by the claimed invention had any kind of technical effect.

The question I have from this case is not whether the decision was correct (I think it probably was), but whether there are any reasons why the type of technical obfuscatory approach to claim drafting used in the case can be in any way useful. The only one I can think of is that it might sometimes sufficiently bamboozle an examiner into thinking there is more to the application than a more concise claim might suggest. Can anyone think of any other reasons?

Self-Represented Applicants at the UK IPO again

I have written before about self-represented applicants at the UK IPO, commenting that the IPO tend to much more accommodating with such applicants than with those represented by agents. I mentioned at the time that I was not sure this was necessarily a good thing, as we all have to follow the same rules regardless of who we are. Going the extra mile for applicants who have difficulty following the rules may be very admirable from a public service point of view, but in the end is it really worth it? This thought was prompted again by a recent decision from the IPO relating to a request for reinstatement under section 20A, BL O/305/13 (Roy Henry Booker).

Mr Booker filed his application, GB1014537.3, on 1 September 2010, claiming an invention relating to hazard warning lights being made separate from indicator lights so that both could be used. Mr Booker paid the application and search fees, and a search report issued in January 2011, citing several documents (this one, for example, pictured left), suggesting that the invention was not new. The search report also, rather unusually (and possibly a taster of things to come), indicated that exploitation of the invention would appear to be contrary to UK legislation, specifically Schedule 8 of the Road Vehicles Lighting Regulations 1989.

Mr Booker called the Office to query the search results, and was advised by the examiner that it might be best to abandon the application rather than requesting substantive examination. The application then proceeded along its normal course, publishing on 8 February 2012 as GB2482567A. As usual, the Office sent a letter reminding the applicant of the need to request examination, which was due by 8 August 2012. No request was filed, with the result that the Office sent a letter on 28 November 2012 informing the applicant that the application had lapsed. Nevertheless, Mr Booker continued calling the examiner who, after several calls, eventually gave in and sent a letter on 29 January 2013 with a fairly detailed assessment of the application, indicating that it basically had no hope of being granted and that Mr Booker should therefore give up (I paraphrase somewhat). Mr Booker nevertheless requested reinstatement, but not until 15 April 2013. The Office offered its preliminary view on 3 May 2013 that the case for reinstatement had not been met, giving Mr Booker the opportunity of a hearing.

The main issues the hearing officer had to deal with was whether the reinstatement request was made in time, and if it was whether the failure to comply with the examination request deadline was unintentional. Mr Booker's explanation was that he was wrongly advised by the examiner not to proceed, and he spent such a long time researching why his application was viable that he missed the deadline. The hearing officer accepted that Mr Booker had been confused by the letters from the Office, and considered that he only really became aware of what needed to be done when he telephoned the Office on 19 February 2013 and was told by a formalities officer what needed to be done and by when. The two month deadline under Rule 32(2)(a) was therefore considered to be met. As for whether the failure to comply was unintentional, the hearing officer accepted that Mr Booker did not file the examination request because he simply forgot to do so. The failure was therefore unintentional. As a result, the hearing officer accepted the request and ordered the application to be reinstated.

This case seems to me to illustrate why it is not necessarily a good thing for the IPO to be so accommodating with self-represented applicants. The examiner clearly thought he was trying to help by going way beyond what was actually required, but ended up creating more problems for himself and others in doing so. My opinion, for what it is worth, is that examiners should really stick to the task of searching and examining applications and not get too involved in trying to help out applicants.

Partial priority - a referral to the Enlarged Board?

Following my earlier post here about the (in my view) flawed judgment of Arnold J in the Nestec v Dualit coffee machine case, there have been further interesting developments on the corresponding European patent EP2103236 (register: 09007962.5). The matter is currently waiting to be heard before the EPO Board of Appeal in case T 1674/12, after a decision by the opposition division upholding the patent in amended form was appealed by the opponents. The points to be considered are similar to those that were considered in the Patents Court, and there is certainly now a large amount of overlap between the cases. Oral proceedings in the European case are scheduled for 9 October 2013 which, if the information here is correct (confirmation here; thanks to Joe) will happen before the UK Court of Appeal gets to hear the arguments on the appeal from Arnold J's judgment.

Each side in the European case have now submitted their arguments, the latest being those from Nestec, provided on 15 July 2013 countering those of the opponents. In brief, as for the EP(UK) case, the arguments primarily concern whether the claims of the patent are entitled to priority, and whether they are valid over an alleged prior public use. The main point, at least as far as I am concerned, is that concerning priority, as regular readers of this blog will already know.

The main issue over priority is whether a broader definition of a feature in the patent claims is entitled to priority and, if not, whether this would make the claim anticipated by the published priority application. The feature relates to whether a housing for receiving a capsule is located in a first or second part of the device. The application claimed the housing without stating where it was located, disclosing that it could be in either or both, whereas the priority application only disclosed that the housing was in the second part. The question is then whether the claim is entitled to partial priority for embodiments where the housing is in the second part, or if the claim is not entitled to priority at all. Arguments have been provided by the opponents for the latter case (of course), whereas Nestec have argued that the claim would be entitled to partial priority. Interestingly, both arguments derive from different interpretations of G 2/98, leaving open the distinct possibility of a further referral to the Enlarged Board.

G 2/98, which has been raised many times in the various discussions relating to the Nestec case and the more general poisonous priority/divisionals issue, considered the question of whether a claim could be entitled to more than one priority date. The board referred to a memorandum that led to the introduction of Article 88 EPC, which explicitly allows a single claim to have more than one priority. The relevant parts of G 2/98, which are worth repeating in full to avoid any confusion, are points 6.5 to 6.7:

6.5 According to the memorandum, in evaluating whether there is any justification for claiming multiple priorities for one and the same claim of an application, a distinction has to be made between the following situations: (i) "AND"-claim (ii) "OR"-claim

6.6 As regards the "AND"-claim (point 6.5(i) supra), it is held in the memorandum that where a first priority document discloses a feature A, and a second priority document discloses a feature B for use together with feature A, "then a claim directed to A+B cannot enjoy a partial priority from the first priority date, because the invention A+B was disclosed only at the date of the second priority document". From this it clearly follows that, according to the legislator, multiple priorities cannot be claimed for an "AND"-claim. Hence, the application of the so-called "umbrella"-theory (according to which the feature A in the claim directed to A+B would enjoy a partial priority from the first priority date, with the result that the feature A could under no circumstances become state of the art in relation to the claimed invention A+B) is to be disregarded. Besides, the application of the "umbrella"-theory would manifestly be at variance with Article 88(4) EPC.

6.7 As regards the "OR"-claim (point 6.5(ii) supra), it is held in the memorandum that where a first priority document discloses a feature A, and a second priority document discloses a feature B for use as an alternative to feature A, then a claim directed to A or B can enjoy the first priority for part A of the claim and the second priority for part B of the claim. It is further suggested that these two priorities may also be claimed for a claim directed to C, if the feature C, either in the form of a generic term or formula, or otherwise, encompasses feature A as well as feature B. The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2), second sentence, EPC is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters.

The argument in this case is all about point 6.7, in particular whether a broader claim can be considered to be of the "OR" type if it encompasses a narrower priority disclosure. On the face of it, it seems obvious that it would, given that the examples in the memorandum include broadening ranges and applications. There have, however, been decisions by the EPO Boards of Appeal that have taken opposing views on what is meant by "a limited number of clearly defined alternative subject-matters".

T 1877/08, which was cited by the opponents, says that a broader claimed range cannot be given priority to a narrower range, even partially, because G 2/98 requires "separable alternative embodiments" (point 2.4).

T 1222/11, cited by Nestec, says that a broader generic formula can have partial priority because the clearly defined alternatives are the narrow formula and the rest of the scope of the claim (point 11.5.5).

Nestec have therefore argued that, based on T 1222/11, the claim is entitled to partial priority for the housing being in the second part, whereas the opponents argue, based on T 1877/08, that the claim is not entitled to priority at all.

In my view, the interpretation based on T 1222/11 is clearly the right one, not least because the memorandum referred to in G 2/98 includes examples of this type as ones where partial priority would apply. It would also avoid the (also in my view) absurd outcome that the patent would be found to lack novelty over its own priority document. The EPO board in this case will clearly have to decide one way or the other and they are led in two opposing directions by previous T decisions. I therefore see a referral to the Enlarged Board being a distinct possibility, unless the Board consider T 1877/08 (or T 1222/11 of course, as pointed out by the first commenter below) to be a 'rogue' decision that should be ignored. The question to be referred might be of the following form (thanks to the commenter "Joe", who seems to have already thought of it):

“Can a generic term in a claim, encompassing species having multiple priority dates, be regarded as defining clearly defined alternative subject-matters (as defined in G2/98) so as to be compliant with Art. 88(2), second sentence?”

Would this resolve the issue? I hope so.

Nestec v Dualit - a seriously flawed judgment?

A lot has been written about the recent case of Nestec v Dualit, which seems to have brought the idea of "poisonous priority" to UK patent law in a similar way to the "poisonous divisionals" idea in European patent law. The issue centres around whether an application that claims more broadly than its priority application discloses can be anticipated under Article 54(3) / Section 2(3) if the priority application itself publishes. This concept has been much discussed, and I have written about my own solution to the problem here.

What has not been discussed much, however, is whether the conclusion arrived at by Mr Justice Arnold in the case was actually correct. Having looked in more detail at the judgment, I have come to the conclusion that it is seriously flawed on the priority point.

Claim 1 of the patent, as sought to be amended (by the underlined parts) by Nestec, and as broken down into integers by Arnold J, reads:

[1A] Extraction system comprising a device for the extraction of a capsule and a capsule (16) that can be extracted in the device; 

[1B] the capsule (16) comprising a guide edge in the form of a flange, the device comprising

[1C] - a first fixed part (2),

[1D] - a second part (3) which is moveable relative to the first part, 

[1E] [-] comprising a housing (4) to receive the capsule and defining, in the closed position of the moveable part against the fixed part, a position for extracting the capsule on an axis (25) in said housing, 

[1F] - a part for insertion and positioning comprising guide means (6,7) for the capsule arranged so as to insert the capsule by gravity and position said capsule in an intermediate position; 

[1G] the guiding edge being received in the guide means (6,7); 

[1H] said guide means being insertion slides permitting the engagement of said flange; 

[1I] - a beverage-delivery system (19, 53), 

[1J] said second moveable part (3) being configured to displace the capsule (16) from the intermediate position to the extraction position when the device is closed, characterised in that 

[1K] the guide means (6, 7) comprise stop means (20) configured to retain the capsule (16) in an intermediate position, in a manner which is offset to the axis of the capsule in the extraction position; 

[1L] the flange bearing against said stop means in the intermediate position, and in that 

[1M] the second, moveable part (3) receives the capsule to displace it from the intermediate position to the extraction position on the axis (25) of the capsule in the extraction position in said housing (4) 

[1N] so that, when moved, the moveable part acts on the capsule to move it downwards, 

[1O] the flange of the capsule passing below the stop means (20), 

[1P] and to push it along the axis (25) of said moveable part into its extraction position.

The key part of the judgment relating to the priority question is in paragraphs 95 to 104. In this, Arnold J notes that claim 1 of the patent covers certain arrangements, outlined as: i) the housing receiving the capsule being contained in either the second part (integer 1D) or the fixed first part (integer 1C); and ii) the capsule being offset, inclined or both relative to the extraction axis. Arnold J's view was that, because the priority document did not disclose these different arrangements, which were only found in the later application, claim 1 lacked a valid claim to priority.

On the face of it, this seems to be plausible. However, as any first year trainee will know, there is a huge difference between what a patent claim covers and what it states. The claim in question makes no mention of the housing being in either of the parts [perhaps not: see update below], nor does it require the capsule to be anything other than being offset to the extraction axis. The possibilities of the different ways in which the housing and the capsule could be arranged were therefore only additional possibilities that were added in the later filing. In normal circumstances this would not affect any priority claim at all, as it is perfectly normal practice to add features that might provide further fall back positions in a later priority-claiming filing. Arnold J, however, seems to think otherwise. If correct, this would be extremely worrying as it would result in a substantial proportion of existing patent applications and patents lacking a valid priority claim merely because additional options were added in the later filing, even if claim 1 was left entirely unchanged. Am I missing something, or has Arnold J got it very very wrong?

Update 27 June 2013: To pre-empt any eagle-eyed readers, I have noticed that I may indeed have missed something, although it doesn't affect my conclusion. The addition of the word "comprising" to the start of integer 1E indicates that the housing is part of the second part, not the first part. This would only raise an issue of priority if this could not be unambiguously derived from the priority application, and it was agreed that this arrangement was in fact disclosed in the priority application (see paragraph 96). However, the other point relating to the capsule being possibly also inclined is, I think, still valid.

HTC v Apple - A broader signpost for patentability

Patentability under UK and European law has been something of an ongoing theme of mine for a few years, particularly in relation to patents for software or business methods (although I have been known to occasionally stray into other areas such as stem cells). The last time I visited the issue in any great detail was in May 2010 when the EPO Enlarged Board decision in G 3/08 was issued (see here), a few months after I summarised the position in the UK and Europe in a 'where are we now' style here, and correctly predicted the outcome of G 3/08. Since then, the issue has been largely left for the EPO to get on with what they were doing already (principally based on the reasoning in Comvik, T 641/00), while the UK approach has developed from the flawed Aerotel/Macrossan judgment, followed and augmented by Symbian, both from the UK Court of Appeal. There have been other judgments in the UK that have tinkered with how the Aerotel four step test should be viewed and how to judge whether something is technical, such as Halliburton (see here for my comments) and AT&T/CVON (see here for some interesting comments), but nothing that has significantly altered the way patentability is assessed according to UK law.

As a result of the case law in the UK not really evolving beyond Symbian, reading through the decisions from the IPO relating to Section 1(2) each month (which I do for the CIPA Journal out of the goodness of my heart) has become something of a mind-numbing process. Seeing the same reasoning and the same relentless refusals time and time again can become a bit boring, so I try to avoid reporting too many of them. Something that seems to turn up every time in a decision relating to patentability is the list of 'signposts' from AT&T/CVON. These were intended to be used as a check to see whether there was any relevant technical effect (bearing in mind the fourth step of the Aerotel test, which Symbian indicated should be taken together with the third), and were of course not meant to be exhaustive, let alone binding. They have, however, been used fairly systematically by the UK IPO to determine the presence of anything technical. The signposts, as set out by Lewison J (see paragraph 40 of the judgment) are as follows:

i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; 

ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run; 

iii) whether the claimed technical effect results in the computer being made to operate in a new way; 

iv) whether there is an increase in the speed or reliability of the computer; 

v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

The fourth signpost is often used by applicants (or more usually their attorneys) claiming a technical effect, where there is at least an arguable case for an improvement in efficiency obtained as a result of a new computer program. UK IPO hearing officers, however, tend to view this signpost quite narrowly, and usually only allow such efficiencies to be relevant if they are somehow tied to something outside the normal operation of software. Simply making a piece of software more efficient is usually not enough to point towards an increase in the speed or reliability of the computer, despite what Symbian might have suggested.

A recent judgment from the UK Court of Appeal, in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 might help in allowing arguments relating to the fourth signpost to be given more weight. The case related to European patents EP2098948 (application number 09154313.2) and EP1964022 (application number 06846405.6), both of which were found by Floyd J in the Patents Court to be invalid (see here). EP1964022 related to the well-known "slide to unlock" feature (shown in the drawing on the right, taken from the patent) used in Apple's iPod, iPad and iPhone products. This was found by Floyd J to be either not novel or to lack an inventive step over the prior art.

EP2098948 was also found to be invalid, although for relating to excluded subject matter, in particular for being a computer program as such. This patent related to how multi-touch gestures were processed so that recognised multi-touch gestures could be directed accordingly to software elements in the device. Apple argued that the invention met all the signposts of AT&T/CVON, meeting the fourth one because the invention simplified application coding. Floyd J disagreed, and considered that the invention was concerned with the way in which software operated on the data relating to touch events, which did not make the computer operate in any new way and there was no evidence of an increase in speed or reliability. On appeal, however, both Kitchin LJ and Lewison LJ (as he now is) considered that the narrow interpretation placed on the fourth signpost was too restrictive. Lewison LJ reflected on the signposts that he formulated and thought that they "may have been expressed too restrictively", preferring the judgment of Mann J in Gemstar-TV Guide v Virgin Media, who said "It would be a relevant technical effect if the program made the computer a better computer in the sense of running more efficiently and effectively as a computer" (paragraph 42). Kitchin LJ also considered that they were "useful signposts, forming as they do part of the essential reasoning in many of the decisions to which we must look for guidance. But that does not mean to say they will be determinative in every case. I have also had the benefit of reading in draft Lewison LJ's judgment in this case. I respectfully agree with that too, including his observation that, in the light of Mann J's judgment in Gemstar-TV Guide International Inc v Virgin Media Ltd [2009] EWHC 3068 (Ch), [2010] RPC 10, he would adopt as his fourth signpost the less restrictive question whether a program makes a computer a better computer in the sense of running more efficiently and effectively as a computer. Indeed, this is, to my mind, another illustration of the still broader question whether the invention solves a technical problem within the computer" (paragraph 51).

I now eagerly await the first decision from the IPO where this newly broadened signpost has been properly taken into account. Although the change will probably not have a great effect on extending the boundary of what is considered patentable for computer-implemented inventions, it will certainly result in some greater consideration at the IPO of what constitutes a technical effect according to UK law.

Faster patents from the UK IPO but not the EPO

Last month the UK IPO announced a consultation on a new "superfast service" for processing patent applications, proposing that a patent could be granted as quickly as 90 days from filing if the applicant paid a fee in the region of £3.5 to £4k. Apart from the new fee, the only real differences over existing ways of accelerating applications (for example by using the Green Channel) are that: i) no reason would be required for acceleration; and ii) the usual 3 month period for third party observations after publication would be shortened to 1 month. As far as the UK goes, these proposals are not particularly ground-breaking, and the only objection I would have is that the high fee will probably put most applicants off, resulting in very little use of the service. There may, however, some cases where applicants really do need to get a patent granted quickly and cannot afford to wait for the application process to take its usual course.

If the UK IPO is happy to grant applications quickly, then why not the EPO? After all, the end result as far as protection in the UK is concerned is (or should be) the same. This is where one of the differences between the UK Patents Act 1977 and the European Patent Convention comes into play, and it comes down to that pesky Article 54(3) EPC again (corresponding to Section 2(3) in the UK Act).

If an application is searched and examined earlier than 18 months from its filing date, there is a possibility that some prior art might be missed, because Article 54(3) / Section 2(3) prior art will only make itself fully known after this date. Under UK law, this does not need to hold up grant because any missing prior art  can be searched for by the examiner doing a 'top up' search after grant. If anything relevant does come up, the examiner can offer the proprietor the opportunity to comment and amend as required, under Section 73(1) (although the downside is that by that stage the only amendments allowed are narrowing ones). The EPC, however, has no corresponding provision because, once a patent has been granted, it is no longer the responsibility of the EPO, except if an opposition is filed or in the limited circumstances of a request by the proprietor for limitation or revocation. Therefore, even though Article 93(2) suggests that grant might occur earlier than 18 months from the date of filing this does not in practice happen. I would, incidentally, be very interested to be pointed towards anything that would disagree with this.

This difference in the ability to speed up prosecution has been confirmed by T 1849/12 (in German only; see K's Law here for an English summary and discussion), in which the EPO board of appeal agreed with the examining division's decision to refuse the applicant's request to have their application granted earlier than the 18 month publication date. Their reason was that the examining division was required to come to a decision on grant based on all the requirements of the EPC, i.e. including Article 54(3). Only when the ED was of the opinion that all requirements were fulfilled could the application proceed to grant.

The conclusion seems to be that, at least as far as choosing between getting a patent from the UK IPO and EPO goes, you can either have slow and sure or fast and loose. Which would you prefer?

Imaginary claims and conflicting divisionals

After my last post about the "poisonous divisionals" hypothesis, I have been thinking about the issue a bit more, helped by some very useful comments on the post, as well as on other articles about the issue. I now have what I think is an answer that may make the problem go away.

For anyone who is not yet aware (and for those who are, simply skip to the next paragraph), the issue relates to a European patent application having a claim that is broader than anything in the priority application becoming invalid through lack of novelty once a divisional application is filed and published, because the divisional application becomes prior art under Article 54(3) EPC as a result of the claim not being entitled to priority. This strange result comes from a literal interpretation of the wording of Article 54(3), which makes no distinction between applications that may be related to the one in question and other applications (or indeed, as might be argued, the application itself).

My solution to the problem relates not to some unwritten rule that divisionals and priority documents should not be considered to be prior art (which some would argue), but to Article 88(2) EPC, which states:

"(2) Multiple priorities may be claimed in respect of a European patent application, notwithstanding the fact that they originated in different countries. Where appropriate, multiple priorities may be claimed for any one claim. Where multiple priorities are claimed, time limits which run from the date of priority shall run from the earliest date of priority".

The simplest way of thinking about a claim having more than one priority would be where the claim contains alternatives, in which case it can be easily divided into two or more separate claims. Some alternatives might have a valid claim to priority, while others might not. Let's say a claim is directed to a widget made of copper or iron, and the priority document discloses only copper. The claim is entitled to priority only for the copper widget, but the claim can be rewritten anyway to: i) a widget made of copper; and ii) a widget made of iron. The first claim would be entitled to priority, and therefore not at risk if a divisional is filed, while the second lacks a valid priority claim but is novel over the priority disclosure, so would also not be at risk.

No distinction in Article 88(2) is made regarding the form the claim takes. More complicated forms of claims can therefore also have multiple claims to priority, although separating them out may be more tricky. To take a slightly more complicated example, let's say claim 1 is directed to a widget made of metal, and the priority document only discloses widgets made of copper. The claim cannot easily be divided into two from the wording alone, but can at least theoretically be considered to be two claims: i) a widget made of copper; and ii) a widget made of a metal other than copper. These claims together have the exact same scope as the original claim. As before, the first claim is entitled to priority and is therefore not at risk if a divisional is filed, while the second claim is novel over the priority disclosure and is therefore also not at risk.

Some of the discussions about how to tackle the conflicting divisionals problem focus on what kinds of disclaimers might be used to get around the problem in this kind of way. In my view this misses the point, although the idea does get part of the way there. The concept that a broad claim can theoretically be divided into two parts, one of which is entitled to priority and the other which is inevitably novel over the priority disclosure, is itself sufficient to overcome the problem even if the exact form of wording is not easily derived from the application. This is because the collective scope of the resulting two imaginary claims would be exactly the same as the original claim, and Article 88(2) EPC indicates that there is no need to actually rewrite the claim to be two separate claims. There is therefore no need to find the right form of wording to satisfy added matter requirements because no amendment is needed.

I see a nice parallel here with mathematics, where imaginary numbers are of great use in solving real problems, for example in finding the roots of a cubic function or in modelling electrical circuits in response to time-varying signals. Just because there is no real solution to the square root of -1 does not mean that an imaginary solution (usually termed i) cannot be a useful way of looking at a particular problem where this might arise. In the same way with problematic claims, just because there may not be a way of rewriting the claim as two parts, each of which would be valid for different reasons, does not mean that considering such imaginary claims cannot be a useful way of solving the problem of conflicting divisionals.

As usual I may, of course, be wrong. Any thoughts on the issue would be welcome.

Update 25 May: A commenter has pointed me to T 1222/11, which seems to support the idea. See point 11.5.5 in particular.

Update 15 June: There is an interesting discussion on the IPKat here on the related issue in the Nestec v Dualit case.

Update 31 November 2016 / 7 February 2017: I have been proved right! See my posts on the outcome of G 1/15 here and here.