UK: Report Of Recent EPO Decisions – November 2008

Patentability (Article 52 EPC)

G 3/08: Patentability of programs for computers

Referral under Art. 112(1)b) EPC of 22 October 2008

President of the EPO: Alison Brimelow

In a somewhat unexpected turn of events, the President of the EPO has referred questions on the exclusion from patentability for computer programs under Article 52 EPC to the EBA. The Technical Board suggested in the much-reported decision in T 0154/04 that the principles applied to such issues by the EPO's boards of appeal had a sound legal basis in the EPC and were consistent, such that no referral was needed. On this basis, it refused to refer questions proposed by the English Court of Appeal in the Aerotel and Macrossan cases ([2006] EWCA Civ 1371).

Nevertheless, and citing a divergence in the decisions of the board of appeal as the reason for the referral, the President has referred the following questions:

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

2. (a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?

(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

3. (a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?

4. (a) Does the activity of programming a computer necessarily involve technical considerations?

(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?

Whilst these questions are quite different from those proposed by the English Court of Appeal, the referral (if answered) is expected to have a profound effect on the ambit of the exclusion. Indeed, the UKIPO recently announced that it would not appeal the recent decision in Symbian v Comptroller ([2008] EWCA Civ 1066) because it agreed with the Court of Appeal that it would be premature to seek a view from the House of Lords when European practice is likely to be settled shortly. Notably however, there have been suggestions that this is a little optimistic given the likely timescale of the EBA reference and the possibility that the referral might even be rejected on the basis of the requirements of Article 112 EPC not having been met.

T 0912/05: Recipient elected messaging services / Pitney Bowes Inc.

TBA Decision of 15 April 2008

Chairman: M. Ruggiu

Members: M. Rogoni and E. Lachacinski

This was the appeal of the Examining Division's refusal of an application relating to a method of mail delivery which included a step consisting of the carrier notifying the recipient of the mail item by e-mail and giving the recipient the option of choosing the method of delivery.

The patentee contended that mail delivery, although relevant to business, was essentially a technical process and thus not excluded from patentability under Article 52 EPC. The TBA held that mail delivery was essentially a commercial activity which per se need not involve any field of technology. Citing T 258/03, the TBA held that methods of mail delivery may or may not qualify a inventions under Article 52(1) or Article 52(2)(c) depending on whether they involve technical means. In the present case the TBA found that all the independent method claims contained a step which related to the transmission of information by email and such a step necessarily required the use of technical means. In accordance with T 258/03, the TBA therefore found that these methods could thus be regarded as inventions within the meaning of Article 52(1) EPC.

In assessing whether an alleged invention under Article 52(1) EPC involved an inventive step under Article 56 EPC, the TBA agreed with the decisions in T 641/00 and T 258/03 which stated that only those features which contribute to its technical character should be taken into account and features which make no such contributions should be ignored. Nevertheless, in the present case the TBA found that a person skilled in the art would necessarily have included the claimed combination of features in a method of mail delivery directed to achieving the non-technical object of the present invention. In the TBA's opinion, it was the claimed combination of method steps which should be taken into account in assessing inventive step. However, on the case before it, the TBA found that it would have been obvious to a skilled person, in implementing such a method for mail delivery, to arrive at the claimed combination of steps.

Novelty (Article 54 EPC)

T 0221/05: Halogen exchange

reactions and uses thereof / Albemarle Corporation

TBA Decision of 24 June 2008

Chairman: R. Freimuth

Members: J. Mercey and D. Rogers

In this case the appellant (opponent) appealed against the Opposition Division's decision to uphold a patent in amended form.

Claim 1 of the patent as amended concerned a reaction process comprising, inter alia, a metal fluoride having an average surface area of at least 0.20m2/g. The appellant argued the patent lacked novelty over a piece of prior art (D1) even though the document as a whole was silent as to the surface area of the metal fluoride disclosed. It was argued that the skilled person would have filled this gap in D1 by reading it in combination with two other documents cited in D1 which disclosed potassium chloride with a surface area covered by the claim.

The TBA dismissed the appeal on the grounds that D1 did not explicitly or impliedly disclose the claimed surface area of the metal fluoride. In reaching this decision the TBA observed that the disclosure of a particular prior art document must always be considered as it stands, i.e. it is only the actual content of the document, as understood by the skilled person, which destroys novelty. However, where there is a specific reference in a document to a second document, the presence of such specific reference may result in all or part of the disclosure of the second document being considered as part of the disclosure of the primary document when construing its content (T 153/85). In the present case, however, the cited documents were referred to in the background section of D1 that described the prior art. Accordingly, they could not form part of the disclosure of the invention of D1 and could not be used to destroy the novelty of the opposed patent.

The TBA also confirmed that, if a document discloses particles without disclosing their size, a specific size range is not implicitly disclosed if it is common general knowledge among persons skilled in the art that particles whose size lies outside the range may also be used for the same purpose (T 99/85).

Inventive Step (Article 56 EPC)

T 1391/05: Use of glucosylceramide synthesis inhibitors in therapy / Actelion Pharmaceuticals Ltd

TBA Decision of 1 July 2008

Chairman: U. Oswald

Members: J. Riolo and P. Mühlens

Like T 0221/05 this decision also concerned whether documents are incorporated by reference, but this time in the context of inventive step.

In this case, the application under consideration concerned the use of a glucosylceramide inhibitor in the manufacture of a medicament for the treatment of Niemann-Pick type C disease. The closest prior art (D1) disclosed the use of such inhibitors for the treatment of Gaucher disease, which is characterised by elevated levels of plasma chitotriosidase. D1 also disclosed that a beneficial effect of glucosylceramide inhibitors might also be observed in other diseases characterised by elevated plasma chitotriosidase, such as the Niemann-Pick disease. Another document was referenced in connection with this statement and disclosed that Niemann-Pick type C disease (like the other types of Niemann-Pick disease) was associated with elevated levels of plasma chitotriosidase.

Starting from D1 the technical problem to be solved was that of providing a new application for glucosylceramide inhibitors. Having identified this problem, the TBA was convinced that the proposed solution claimed in the application under consideration was obvious over D1 and the cited document, which it considered would be read together by the skilled person and disclosed the use of the claimed inhibitors for treatment of the claimed disease type.

The appeal was therefore rejected and the application refused.

EPO Procedure

T 0246/08: Coupling aid for seismic cable / Services

Pétroliers Schlumberger

TBA Decision of 14 August 2008

Chairman: R. G. O'Connell

Members: V. L. P. Frank and T. Bokor

This was an appeal from a decision of the Examining Division, which had refused an application for an invention comprising a coupling device, made up of a collar coupled to the ground through which a seismic sensor could pass, with the collar able to rotate around it.

One of the main points during examination was the meaning of the term "collar". The Examining Division had considered the invention to lack novelty but the applicant contended that the term "collar" had been misunderstood. The examination was characterised by several exchanges of correspondence with the applicant, a hearing that the applicant did not attend and the Examining Division then giving the applicant one more chance to submit arguments. Ultimately, the application was refused on the basis of Art 78(1)(c) EPC.

The Board declined to consider the substantive issues and dealt only with procedural matters. It found that the Examining Division had made no less than 4 substantive procedural violations:

1. despite the extensive correspondence the Examining Division had failed to consider the meaning of the term "collar". This contravened Art 113(1) EPC on the right to be heard;

2. the Examining Division had exercised its discretion pre-emptively by refusing consent for further amendment to the claims before the amendment was actually submitted, in contravention of Rule 137(3) EPC;

3. This second violation was then compounded by being used as the basis for the Examining Division's decision to refuse the amended claim request when made; and

4. the Examination Division gave only 1 month for the applicant's last chance submissions, when Rule 132(2) EPC is clear that time periods specified by the EPO must never be less than 2 months.

The Board commented that considering the aforementioned features of the Examination, it was odd that the violations should have occurred (principally because there were so many opportunities to consider the meaning of the term "collar"), but that such violations can occur despite best intentions. It remitted the case for further prosecution and refunded the appeal fee on grounds of equity (Rule 103 EPC).

T 0529/08: Anti-static additives for hydrocarbons / Baker Hughes Incorporated

TBA Decision of 18 August 2008

Chairman: P. Bracke

Members: P. Ammendola and A. Pignatelli

This was an appeal from an Opposition Division decision, which was filed unsigned by the opponent. As the appeal contained no statement of grounds, the TBA had written to the parties informing them that it was expected to be rejected as inadmissible. In response to this, the opponent informed the board that the appeal should actually be considered as never having been filed because it had not been signed, and requested reimbursement of its appeal fee.

Considering Article 108 EPC, and applying Rules 50(3) and 99(3) EPC, the TBA held that a notice of appeal that is not signed in due time shall be deemed not to have been filed – the payment of the appeal fee could not alone be considered to make the filing of an appeal valid. It held that the proceedings before the Board should therefore never have been commenced.

Whilst the opponent achieved its desired objective in this case, with the appeal fee being reimbursed, the decision underlines the need to comply with formalities and highlights the sorts of issues that could arise if documents are filed unsigned.