UK: Report Of Recent EPO Decisions – August 2008

Last Updated: 23 October 2008
Article by Ewan Nettleton and James Boon

EPO DECISIONS

Notes:

Technical Board of Appeal (TBA) Decisions are available on the EPO website at http://legal.european-patent-office.org/dg3/updates/index.htm and similarly decisions of the Enlarged Board of Appeal (EBA) can be downloaded from http://www.european-patent-office.org/dg3/g_dec/index.htm. EBA decision R 0001/08 can be obtained from the online file for EP 0 916 347 via the EPO's Register Plus database. A list of the matters pending before the Enlarged Board is included at http://www.european-patent-office.org/dg3/g_dec/pending.htm.

Recent notices and press releases of the EPO are published at http://www.european-patent-office.org/news/info/index.htm and http://www.european-patent-office.org/news/pressrel/index.htm respectively, and recent issues of the Official Journal can be downloaded from http://www.european-patent-office.org/epo/pubs/oj_index_e.htm.

 

Patentability and Inventive step (Articles 52(2)(c) and 56 EPC)

 

T 0859/07: Method and apparatus for multi player bet auxiliary game / Deq Systemes Corp.

TBA Decision of 27 November 2007

Chairman: M. Ceyte

Members: A. de Vries

and C. Heath

This was an appeal against the decision of the Examining Division to refuse an application on the grounds of lack of inventive step. The application claimed a system for playing an auxiliary casino game, and amounted to a "mixed" invention, having both technical and non-technical features. While the game was excluded under Article 52 (2) EPC as non-technical, the system itself possessed overall technical character by virtue of technical features such as the central controller in communication with the receivers, display and processing means.

The TBA set out the correct approach to be taken for such "mixed" inventions. The inventive step requirement of Articles 52 (1) and 56 EPC is assessed using the well-established problem-solution approach, which is fundamentally technical in nature and must necessarily differentiate between an invention's technical and non-technical features. An invention which as a whole falls outside the exclusion zone of Article 52 (2) EPC (i.e. is technical in character) cannot rely on excluded subject matter alone, even if novel and non-obvious (in the colloquial sense of the word), for it to be considered to meet the requirements of inventive step. In other words, the mere fact that excluded subject-matter is technically implemented cannot per se form the basis for inventive step.

It is therefore necessary to ask how the per se excluded subject-matter (e.g. a game or business method) is implemented. In the context of the problem-solution approach this can be rephrased as a fictional technical problem in which the per se excluded subject-matter appears as an aim to be achieved. This fiction has been referred to by Lord Justice Jacob of the English Court of Appeal as "simply not intellectually honest". The TBA acknowledged the problem of apparent "hindsight" reasoning, but emphasised the basic tenet that excluded subject-matter cannot form the sole basis for a patentable invention, however much genuine ingenuity or creative effort it may embody.

The TBA went on to state that a consideration of the particular manner of implementation must focus on any further technical advantages or effects associated with the specific features of implementation over and above the effects and advantages inherent in the excluded subject-matter.

The TBA held that a software engineer faced with the task of computer implementing the auxiliary side betting game would arrive, in a straightforward manner, at the claimed system and architecture, having taken the various tasks and functions involved in playing the game as a starting point. Any differences in system architecture between the application and the closest prior art derived from the game rules (i.e. excluded subject-matter). The TBA therefore upheld the Examining Board's decision that the application lacked inventive step.

This approach to "mixed" inventions, now well established in the EPO, is at odds with the approach of the English Court. In practical terms, the EPO approach is based on the fact that the non-excluded, technical subject-matter is obvious (in this instance the central controller in communication with the receivers, display and processing means). In substance at least, this is not different to the English approach, which discounts such features of the claim in its assessment of patentability since they are considered not to form part of the contribution. The EPO approach imports a consideration of patentability into inventive step, whereas the UK approach imports a consideration of inventive step into patentability. In this instance at least, it is reasonably clear that the English Court would have reached the same decision as the TBA.

EPO Procedure (Article 112a EPC 2000)

 

R 0001/08: Pharmaceutical injectable solutions containing paracetamol and combinations of paracetamol with other active substances / Uni-Pharma Kleon Tsetis A.B.E.E.

EBA Decision of 15 July 2008

Chairman: P. Messerli

Members: J-P. Seitz and U. Kinkeldey

This was a decision of the EBA that could easily have been overlooked, as it did not appear amongst the decisions of that Board on the EPO website. It is thought to be the first decision on a petition for review of the decision of a lower Board by the EBA under new Article 112a of EPC 2000.

The appeal concerned a patent relating to pharmaceutical injectable solutions containing paracetamol and combinations of paracetamol, which, though maintained by the Opposition Division after grant, had been revoked on appeal for want of inventive step. Notably, the opponent had decided not to attend the oral appeal hearing, and the day before the hearing took place, the proprietor had filed an auxiliary request of amended claims along with a main request corresponding to the claims as granted.

The petition for review of the appeal decision was made on the following grounds:

  1. Under Article 112a(2)(c), that fundamental violations of Article 113 EPC had occurred. This was on the basis that the non-attending opponent had not raised any objection to either of the proprietor's requests, and whilst the TBA had commented on the main request, it had not expressed any opinions or objections to the auxiliary request. Therefore, the proprietor argued, it had not been given the opportunity to reply to the Board's negative assessment of the auxiliary request;

  2. Under Article 112a(2)d), that a fundamental procedural defect had occurred in the appeal proceedings. In this regard, the proprietor argued that the lack of reasoning given in the decision with respect to the auxiliary request was contrary to Rule 111 EPC; and

  3. The Proprietor also asserted that a further procedural violation arose out of the Board's refusal to consider an argument made in the oral proceedings when the opponent was absent. This, the proprietor argued amounted to an extension or prolongation of the rights of a voluntarily-absent party which, in its view, was not supported by G 4/92.

When considering whether the petition was allowable, the EBA made very clear that Article 112a EPC provides an "exceptional" means of redress, and is to be applied strictly. In its words:

"...it is not the purpose of Article 112a EPC that a case be decided upon by a third instance, but rather, it provides the right for a judicial review founded on a limited number of grounds that have been exhaustively defined by the legislator (Article 112a(2) EPC in conjunction with Rule 104 EPC)."

Turning to the grounds raised, the EBA did not consider that the first was very convincing. The TBA's reasoning on the auxiliary request was directly related to written arguments put forward by the proprietor, and (with reference to G 6/95) there was no provision in the EPC requiring an Appeal Board to provide a party with all foreseeable arguments in favour or against a request.

On the second ground, the EBA felt it did not need to enter into a review of the merits of the TBA's decision, noting that by alleging that "The reasoning is contradictory..." the proprietor had itself acknowledged that the decision was reasoned. The third ground was also rejected, because the passage of the TBA's decision complained of related to the main request rather than the auxiliary one, and even if it could be considered to apply to the auxiliary request, there was no indication that non-attendance of the opponent was the only reason for rejecting the proprietor's argument.

Underlining the strict nature of the provision, the EBA therefore found that the petition was "clearly not allowable". Perhaps unsurprisingly, this first decision under new Article 112a EPC 2000 seems designed to set a trend towards a very limited application of the provision that will prevent parties seeking to challenge decisions on this basis as a matter of right.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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