Patent Office Opinions - s73 Revocations

Since 1 October 2014 it became possible for a request for a Patent Office Opinion under Section 74A to result in revocation, as a result of Section 73 being amended to include subsections 1A-1C, which state:

(1A) Where the comptroller issues an opinion under section 74A that section 1(1)(a) or (b) [novelty or inventive step] is not satisfied in relation to an invention for which there is a patent, the comptroller may revoke the patent.

(1B) The power under subsection (1A) may not be exercised before

(a) the end of the period in which the proprietor of the patent may apply under the rules (by virtue of section 74B) for a review of the opinion, or

(b) if the proprietor applies for a review, the decision on the review is made (or, if there is an appeal against that decision, the appeal is determined).

(1C) The comptroller shall not exercise the power under subsection (1A) without giving the proprietor of the patent an opportunity to make any observations and to amend the specification of the patent without contravening section 76.

Regular readers will know that I have been keeping an eye on the outcomes of Opinions for the past few years, and have written a few posts on the subject. It has now been nearly six years since the amendment came into force, and it seems a good time to provide an update on where things are now. 

Out of around 90 Opinions that have issued to date, 43 have found the patent in question to be invalid for lack of novelty and/or inventive step. Of these, a final decision has been made in 36 cases, whether this is to take no action, maintain the patent as amended or to revoke. The IPO has indicated that revocation will only be done in 'clear cut' cases. In practice this means that if an Opinion finds a patent invalid and the proprietor does nothing about it, there is a strong chance that the decision will be to revoke. In cases where the proprietor contests the Opinion's finding, however, the chances of getting the patent revoked, based on the information to date, reduces to zero. In some cases the proprietor will want to amend their patent, while in others they might contest the finding by filing arguments or requesting a review under section 74b. In all cases so far this has resulted in the IPO deciding not to proceed with revocation. 

The chart below summarises the 36 cases where a decision has been made. In half of them, no action was taken, i.e. the Comptroller decided that the patent was not sufficiently clearly invalid to justify being revoked. Of the other half, 12 have resulted in the patent being amended, either via post-grant amendments under section 27 or central limitation via Article 105a EPC. In only 6 cases has the patent been revoked. The details of each of these cases are provided in the table below, with links to the Opinion, patent register and the decision. In each case the proprietor did nothing in response to the initiation of revocation proceedings under section 73(1A). 

It is perhaps not surprising that the IPO decide in the great majority of cases not to proceed with revocation following a negative Opinion, given that the procedure under section 74a is strictly time-limited and decided only on the papers after a single round of correspondence with the patent proprietor. The opportunity to provide evidence that would normally be possible during court proceedings is not available under section 74a so the benefit of any doubt, whether reasonable or not, is clearly given to the proprietor. Anyone who might think that the Opinion service could be a quick and cheap way to get rid of a troublesome patent is therefore very likely to be disappointed if the patent proprietor decides to put up any level of resistance. However, given that there are no estoppel issues that would prevent similar, or expanded, arguments being put later in revocations proceedings, the Opinions service could be seen as a useful way of trying out a case to see what might work without committing to any particular aspect, the only downside being that the proprietor will then be forewarned and ready next time. This seems to have been used in only one case so far though, based on the information available from the IPO Ipsum register. 

What is surprising, to me at least, is how little the Opinions service has been used. Is this due to a general reluctance to put arguments on the public record, or is it something else? Are enough people even aware of the possibility of requesting an Opinion when an issue of validity or infringement comes up? Could it be a factor that those who are experienced in litigation proceedings are unwilling to advise their clients to use it? It is still a puzzle to me. 

 

Opinion	Proprietor	Patent No.	Opinion Result	Status (23/7/20)
04/15	Fujifilm Corporation	EP1837182	Lack of novelty	Revoked
14/15	Albertus Abraham Petrus de Groot	GB2508152	Lack of novelty	Revoked
02/16	Shane Kelly	EP2160936	Lack of novelty	Revoked
22/16	De La Rue International	EP2493707	Lack of inventive step	Revoked
18/17	IMMOSPA AG	EP2700769	Lack of novelty	Revoked
21/18	Spectrum Technologies Plc	EP1641572	Lack of novelty	Revoked

Patenting Simulations - Is Making it More Real the Key?

It is a long time since I last got into the issue of software patents (a.k.a. computer-implemented inventions, CIIs) at the EPO. The last major event on this front was when the decision of the Enlarged Board in G 3/08 issued in May 2010, which I wrote about for the IPKat here. The decision did not, however, change the law in any respect because the referral, made by the EPO President, was decided by the EB to be inadmissible (which I, along with others, predicted would happen). There was, at the time, apparently no contradictions in the case law from the Boards of Appeal on the subject of CIIs, with the leading case being Comvik (T 641/00). Since then, the law has been remarkably stable, with no significant divergence or change of direction. The established law in the UK has also been pretty stable. In 2013 I summarised the main features and differences between the UK and EPO approaches here. Nothing much has changed since then.

The decision in T 489/14, however, issued in February 2019, attempted to put the cat among the pigeons in the field of CIIs by questioning whether the development of the case law in T 1227/05 (Infineon) was correct, or at least to what extent. As a quick reminder, the cases leading up to T 1227/05 involved methods of designing things such as integrated circuits and drill bits, with big players IBM and Halliburton respectively leading the way. There was initially resistance to patenting methods of designing things but, as the case law developed, both the EPO and the UK courts decided that in some cases it was possible to patent a method of designing without having to tie it to actually making the thing. This was expected to be of help to companies involved heavily in designing complex products but where the article being designed would be manufactured by others. The decision in T 1227/05 then went further and established that it was in principle possible to patent a method of simulating an article (in this case an electronic circuit), provided the invention was limited to that specific purpose. It was not necessary to include fabricating the article itself because specific computer-implemented simulations were themselves to be regarded as patentable and not dismissed as non-inventions for being mere computer programs. 

The application leading to T 489/14 also related to a simulation method, but in this case related to simulating movement of people in a building, rather than electrons in a circuit. Figure 2 shown here shows people moving along a corridor and taking steps according to factors such as whether there was something in the way (e.g. another person or an obstacle). The application was refused because it was considered to be obvious over a general purpose computer, following the usual practice in T 641/00, although the application did cite prior art relating to previous techniques for modelling pedestrian flow in buildings. The applicant appealed, and argued that the aspects of the simulation that were based on human behaviour were modelled by equations similar to those describing the laws of physics and the application should be patentable for similar reasons as in T 1227/05. The Board saw that the applicant had a good argument but was still reluctant to allow the appeal because the simulation only assisted an engineer in the cognitive process of designing something, whether this was a circuit or a building. Instead of following T 1227/05, the Board decided that they would rather ask the Enlarged Board whether simulation methods were actually patentable. The questions put before the EB were:

1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation's implementation on a computer, if the computer-implemented simulation is claimed as such?

2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

The oral proceedings in G 1/19 were held yesterday (15 July 2020), attended in person by the Enlarged Board, the applicant's representative and representatives of the EPO President. I, along with an unknown number of others, attended virtually via a video stream. The proceedings were not particularly enlightening regarding the thinking of the EB, but we did at least get an idea that they thought question 1 was at least admissible, while there might be some doubt about whether question 2 was. The appellant, of course, argued that the bounds of what was patentable should be maintained as in T 1227/05 and should cover modelling pedestrians in buildings as well as electrons in circuits. The EPO President seemed to agree, and argued that methods of simulation were becoming increasingly important and in some cases provided alternative ways to taking measurements in the real world. The boundaries of what was considered patentable should therefore be allowed to develop over time. The only significant push back from the EB seemed to be to emphasise that they were the ones who were to decide whether any question was admissible. Just because they were asked a question did not mean that they were obliged to answer it (as of course we already know from G 3/08). 

An interesting example put forward by the EPO President was a method of simulating natural phenomena by ray tracing, in order to generate a more realistic image. Computer rendering by ray tracing could be considered patentable because it allowed for a more realistic representation of reality, even though the output was not actually real. This made me think that this is, in essence, the problem relating to the issue of whether computer simulations are patentable or not. What exactly is it about a particular computer simulation that would make it patentable? Is it to do with the type of thing that the simulation models, i.e. whether the thing is an electronic circuit or movement of people in a building? Both, of course, are real physical things and it is possible to get patents for buildings as well as for circuits. That can't be it then. Instead, looking back at why the application in T 1227/05 was considered allowable, the reason for allowing it was, in my view, to do more with the way in which the circuit was simulated that allowed a more realistic representation of noise. A link between the simulation features and the corresponding article in the real world could be established, resulting in a plausible reason for establishing an inventive step. In the case of modelling pedestrian flow in a building, however, even though the argument was made that the way the flow was modelled made the simulation more accurate, this seemed to be a mere assertion without any real backing. More, I think, could have been made about why the particular way the flow was modelled made it more accurate, backed up with evidence as to how this was the case. This was not possible on the basis of the original application, which contains lots of detail about how the model is set up but nothing about how the resulting simulation matched reality. With a circuit this could easily be done. This could also have been done with real people in a real building (or at least a corridor with obstacles, as in the above drawing) but it wasn't. Could it have made the patent application more likely to be granted? I think perhaps it could, but then we wouldn't have had the opportunity to have the Enlarged Board consider the issue. 

While the EB is deliberating, we will for now just have to guess what they think about the issue. Having heard the arguments, however, I think that the key to getting a computer simulation patentable is to show in the application how the way in which the simulation is set up produces a result that is closer to reality. Whether this is the way in which 1/f noise is simulated using random number to model a circuit, how light rays are traced to produce more realistic images or the way in which people are modelled by way of various parameters, it should be possible to show how certain specific features of the claimed invention provide a more realistic representation of reality. That way, I think, is where the path lies in getting simulation methods patented. Whether I am right or not we will just have to wait and see.

PS. A prize for anyone who can spot what word I have deliberately avoided using (with the exception of the quote from T489/14) in this post. Is it any less clear as a result?