25 October 2010

Patentability Issues in the Annual Report 2009 of German Federal Patents Court

The Annual Report 2009 of the German Federal Patent Court (Bundespatentgericht) has just been published. It covers the Court's most important rulings of 2009 regarding patents, utility models, designs
and trademarks, as well as an overview of its business situation. The (shortened) English version of the Report is given on pages 126 to 194.

In regard to one main focus of this blog, the section on computer-implemented inventions and the state of the debate on their patentability (i.e. the German "technical character" doctrine) appears to be the most interesting section of the Report.

On the Court level, this debate is mostly lead between the Federal Patent Court (BPatG) and the Federal Court of Justice (Bundesgerichtshof, BGH), especially between the BPatG's 17th Technical Board of Appeal under Chief Judge Dr. Fritsch and the BGH's Xth Civil Panel under Chief Judges Dr. Mellulis, Scharen and Prof. Meier-Beck. It is not a secret among practitioners that the second-instance BPatG follows a more restrictive approach on patent-eligibility and often rejects patent applications due to lack of technical character, while the third-instance BGH tends to be more liberal - especially in its latest decisions - and quite regularly reverses or remands BPatG decisions.

As the Report only covers BPatG case law from 2009, the BGH's current somewhat differing approach may be exemplified best by the latest decisions X ZB 22/07 of 20 January 2009 and Xa ZB 20/08  of 22 April 2010 (see my related posting here, and here, respectively).

Especially decision X ZB 22/07 ("contol device for examining modalities"), which reversed the BPatG's decision due to wrong reasoning, has been interpreted as a convergence towards the EPO’s approach of assuming that executing a computer program on a computer is sufficient to render the claim technical (see here, here, here, or, relating to this year's EBoA G3/08 opinion, here and here). In contrast to the BPatG, the BGH found that already the steps of processing, storing and transmitting data by a technical apparatus renders the rejected claim sufficiently technical to overcome the exclusions of § 1 I PatG. Theoretically, this decision of early 2009 should have been a guiding line for the below BPatG case law on patent-eligibility:

Here's the Report's section covering "technical teaching on procedure and definition of invention" (highlighting added): 

An invention within the meaning of patent law is a teaching on a systematic procedure of the claimed subject-matter which is technical in nature, implementable and repeatable, and which constitutes the solution of a task by technical considerations. The consequence of this is that patent protection is granted only for inventions in the field of technology. 

I.  Technical Problem

In accordance with the case-law of the Federal Court of Justice, a procedure which uses a program to bring about the success aspired to, with the aid of which a computer is controlled such that the desired success is achieved, is not eligible for patent protection solely because of the process of electronic data processing. Since the law rules out programs for computers as such from patent protection (§ 1 III Nos. 3, 4 PatG), the claimed teaching must, rather, contain instructions serving to solve a concrete technical problem by employing technical means. The situation is identical if it is a matter of whether, as an invention, a claimed teaching is to be regarded as a mathematical method (§ 1 III No. 1 PatG), as a rule or procedure for commercial activities (§ 1 III No. 3 PatG) or as a reproduction of information instructions are claimed with which a concrete technical problem is solved, it is not a matter of whether the patent claim is also based on the use of an algorithm, a purpose of the procedure lying in the commercial field or the information character of results of the procedure (17 W (pat) 123/05).

Subject-matter contained in claims proposing the use of data processing devices, and possibly also encompassing non-technical instructions, requires a differentiated treatment which depends on the evaluation of whether an “invention” exists in a technical field within the meaning of § 1 PatG or of Art. 52 EPC, or whether the invention is new and based on inventive activity ( §§ 3, 4 PatG or Art. 53, 54 EPC).

The 2nd board (2 Ni 30/07) summarised these questions in connection with a “procedure to create a printer’s copy using a central computer linked via a data network with users’ computers” claimed in accordance with the umbrella definition:
  1. The use of computers as intended cannot by itself give rise to the technical nature of the teaching of a patent claim.
  2. A patent claim is in a technical field if it teaches the solution of a concrete technical problem with technical means or measures, and is hence in principle eligible for patent protection.
  3. Not all instructions of the claim are to be taken into account when evaluating whether the teaching of a patent claim which proposes the use of data processing means is based on inventive step, but only those instructions which are technical in nature. Instructions which are in a non-technical field cannot constitute an inventive step.
II.  Programms for Computers:

A procedure for the configuration of a program system to be applied for a medical device is to be regarded as a program for computers “as such”, and is hence not eligible for patent protection if the teaching does not go over and above a program and is separated from a concrete implementation, and if simply stating the purpose “for application for a medical device” changes nothing as to its nature (17 W (pat) 112/08). The claimed use for a device of medical technology only constitutes one possible application which has no impact whatever on the teaching of the patent claim. This also applies to a procedure to localise switching deviation devices using a computer (17 W (pat) 7/06) or in a procedure to align a data compilation displayed on a client data processing device with a source data stock stored on a server computer which aims to allocate a characteristic value to each dataset stating its seniority, and reduces itself to the filtering of the data to be sent to the client using a characteristic comparison value which the server has received from the latter (17 W (pat) 7/06), since the procedure relates to a data organisation and administrative problem which, as a software measure pure and simple, does not solve a concrete technical problem, and hence is not eligible for patent protection. 

III.  Mental or Commercial Activities:

A teaching to use the surfaces of the housing of a coin-operated automated music device as advertising space is not within the technical field. The fact that the machine is a technical device is insignificant since it is based on neither a technical task, nor is a technical problem solved. The claimed teaching merely relates to commercial considerations according to which the device can be used commercially by paying a fee for the affixed advertising, as well as considerations to improve the outward appearance, such as the aesthetic design of the entertainment devices (19 W (pat) 301/09). The same applies to a self-service vending machine referred to as a “Reiseautomat” offering customers access to stored information such as videoclips on hotels or holiday countries, thereby facilitating simple selection among the videoclips available, since the claimed teaching does not contain any instructions serving to solve a concrete technical problem with technical means, but a commercial or informal problem (17 W (pat) 38/08).

(Photo (C) 2006 via Wikimedia under the terms of a CC license)

24 October 2010

EPO Patent Law Committee Proposes Amending Recent Amendments to Implementing Regulations

According to an update of 29 September 2010 on the EPO website, the Committee on Patent Law, a sub-committee of the Administrative Council of the EPO, gave a favourable opinion on proposals for changes to the EPC Implementing Regulations, that will be presented to the Administrative Council for decision at its meeting on 26. to 28. October 2010 in The Hague.

I think it's save to assume that the proposals will be accepted by the Administrative Council and then quickly enter into force.  

The proposals of  the Committee relate to

  • amendment of Rule 36(1)(a) EPC by explicitly listing the substantive communications of the examining division triggering the twenty-four-month period for filing voluntary divisional applications, namely communications under Art. 94(3) and Rule 71(1), (2) or (3) EPC;
  • prolonging the time limit in Rules 161(1) and (2) EPC as well as in Rule 162 EPC from one month to six months;
  • amendment of Rule 71 EPC and addition of new Rule 71a EPC improving the last phase of the grant proceedings by introducing a second step for cases where the applicant requests amendments or corrections in response to the examining division's communication informing of its intention to grant the patent under Rule 71(3) EPC. The current streamlined procedure will be maintained for all other cases.
Especially the proposed amendments to Rules 36 and 161 EPC appear to be clear consessions to professionals and applicants in reaction to their harsh critisism expressed against the amendments of the Implementing Regulations that entered into force as recent as 1 April 2010 (see Decision CA/D 3/09 of the Administrative Council of 25 March 2009 and OJ 2009, 533 as well as my related postings here, here, and here).

While the strict regime of Rule 36 EPC to only allow divisional applications within a 24-months time window is not (yet) deregulated by the proposal, the far too short one-month time limits pursuant Rule 161 EPC will be prolonged to comfortalbe six months.

According to present Rule 161 EPC, applicants have to reply to the objections raised in a Written Opinion of the ISA or the IPRP issued by the EPO in Euro-PCT applications within one-month after a communication of the EPO, whereas otherwise the application is deemed to be withdrawn. This time limit has been considered far too short to thoroughly discuss the matter with an, e.g. oversees, applicant and preparing and filing a well-founded reply.

The fact that proposals for amending EPC rules that have entered into force only six months ago are published on the EPO website has to be considered truly remarkable, as expressed by the EPLAW blog:
First, such an information is given for the first time. It is an apparent attempt of the EPO under its new president Benoît Batistelli to make the legislative process more transparent and give the public at large the possibility to comment on pending legislative initiatives.

Second, the proposals show a reaction of the EPO to the manifold criticism voiced against details of the previous amendments which were part of the “raising the bar initiative” of the EPO.

European Patent Network Supports Filing of Search Results under Amended Rule 141 EPC

Illustration on the website of the Europen Patent Network 
According to a Notice dated 28 July 2010 of the Administrative Council, the permanent utilisation scheme (see CA/D 18/09 of 28.10.2009, OJ EPO 2009, 585) to be implemented by amended Rule 141 and new Rule 70b EPC will apply to EP/PCT applications that are filed on or after 1 January 2011.

The permanent utilisation scheme will enable the EPO to utilise work carried out on a first filing by a National or Regional Patent Office during the priority year. It is an outcome of the Utilisation Pilot Project conducted from April 2007 to August 2008 and part of the agenda of the European Patent Network in which National Patent Offices (NPOs) of the EPC member states agreed on "utilisation by the EPO of work done by NPOs". 

In brief, while amended Rule 141 (1) EPC requires that for an EP application claiming one or more priorities, copies of the related search results from the Office(s) of first filing have to be filed directly upon filing the EP application or upon entry of an PCT application into the European regional phase, amended Rule 141 (2) EPC relates to cases in which the search results are automatically included in the EPO's file, so that the applicant is releaved from the obligations to file copies of search results, e.g. if those search results were drawn up by the EPO itself.

At this point the "European Patent Network" comes into play as soon as the required electronic communication environment between NPO's and the EPO is set up that allows for automatic forwarding of such search results from an NPO to the EPO.

Now, in the Decision of the President of the EPO on the filing of copies of search results under Rule 141(1) EPC dated 5 October 2010 it is clarified that, according to amended Rule 141 (2) EPC, the EPO shall automatically include into the file of an EP application copies of the following search reports drawn up by the EPO itself:
The President's Decision further documents that the European Patent Network appears to work properly already in connection with the national Offices of Belgium, Cyprus, France, Greece, Italy, Luxembourg, Malta, Netherlands, and Turkey, so that in cases of priority applications in theses countries the applicant is exempted from filing a copy of the search results under amended Rule 141(1) EPC.

For more information on wording and regulations of amended Rule 141 EPC (Information on prior art) new Rule 70b EPC (Request for a copy of search results) you may refer to this earlier posting.

More information on the EPN can be found here and here. Recently, in an interview with the Staff Union of the EPO (SUEPO), former President of the German Patent Bar Association Dr. Eugen Popp expressed a strongly opposing point of view towards the idea that the EPO may not only receive search results drawn up by NPOs but may especially outsource its own search to the NPOs via the EPN framework:
I am very much against [the EPN idea to giving EPO work to national offices]. If I, as an applicant in Europe, pay filing and examination fees, then I want the work done by the EPO. Mutual assistance with search work is fine, but a European search must not be replaced by one from the Swiss or Danish office. No applicant minds their search results being used to improve quality; that happens anyway, so we don't need an EPN for it. These days the first thing an examiner does on a European filing is conduct a family search to see which parallel applications have been filed and whether search reports on them already exist. That is relatively easy these days, and gives examiners a head start with their own search and examination of the application. 

23 October 2010

Status of Amazon's Controversial "One-Click" Patent in Canada, the US, and Europe

According to Amazon's well-known and controversally discussed "1-click" invention entitled "method and system for placing a purchase order via a communication network", easy internet shopping is enabled in that a customer visits a website, enters address and payment information and is given an identifier stored in a "cookie" in his client computer. A server is able to recognize the client by the cookie and to recall the purchasing information which is now stored in the vendor’s computer system. The customer can thus purchase an item with a "single click" – the order is made without the need to 'check out' or enter any more information.

Below I briefly sketch the legal situation of Amazon's 1-click patents in Canada, the US, and Europe, all of which went through at least a second review, e.g. reexamination in the US or opposition proceedings in Europe. As Amazon is propably not unhappy with the situation in Canada and the US, where a patent with reasonable scope may still be obtained (Canada) or has been upheld (US), they will certainly not be satisfied about Europe.

One reason might be the rather pragmatic European approach towards business methods and computer-implemented inventions, according to which a claim has technical character (and thus represents patentable subject-matter purusant Art. 52 EPC) as soon as a computer or network is mentioned, whereas non-technical (e.g. purely business-related or organisational) features must not be considered for assessing inventive step (cf. T 641/00 "COMVIK"). Thus, a claim whose innovative contribution exclusively relates to business issues can immediately be rejeced per definitionem. On the other hand, business method claims with one or two novel technical features regularly turn out to be obvious, since their non-technical (business-related) features, that almost always provide the problem and solution of the "invention", are publicly known per legal definition, so that the skilled artisan would be directed towards the novel (and mostly trivial) technical features by considering the known non-technical feature.

In the end, however, the patent-eligibility requirements of "technical features" (Europe), "practical embodiment" (Canada), "machine or transformation / no abstract idea" (USA) or "physical effect" (Australia) all relate to same core issue of an eligible subject-matter, namely to its tangible technical implementation

Canada: On October 14, 2010, the Federal Court of Canada issued its (third-instance) Amazon.com vs. Canada appeal decision and ruled that Amazon's so called "1-click" e-commerce patent comprises patentable subject-matter. The Commissioner of Patents' (second-instnace) decision on appeal of 2009 was thus reveresed and the case was remanded to the Patent Office for "expedited re-examination" (see also here, here, here, and here).

In opposition to the Commissioner's grounds for rejection, the Court not only held that there was no basis in Canadian law to exclude business methods from patentability but also critisised the Commissioner for extending into policy-making:
The absolute lack of authority in Canada for a “business method exclusion” and the questionable interpretation of legal authorities in support of the Commissioner’s approach to assessing subject matters underline the policy driven nature of her decision. It appears as if this was a “test case” by which to assess this policy, rather than an application of the law to the patent at issue (cf. § 78 of the decision).
The Court indicated that a "mere business scheme" or "disembodied idea" is not patentable because of the lack of an "practical embodiment" but held that "a business method can be patented in appropriate circumstances", i.e. if a practical embodiment is defined by the claims.  In this respect, Amazon's invention qualifies for "art" under the Canadian Patent Act because
  1. the system claims require a machine as an essential element of the invention and 
  2. the method claims are "put into action through the use of cookies, computers, the internet and the customer’s own action" and result in a "physical effect" on those elements.
Alltogether, the Federal Court of Canada took a fairly liberal approach towwards patenting of business methods. Interestingly, this approach was (also) substantiated by referring to the recent Bilski v. Kappos opinion of the US Supreme Court and motivated by historic parallels between the present "Information Age" and the previous "Industrial Age":
Jurisdictions with patent regimes similar to our own have also struggled to pin down what is required to bring an idea or a discovery beyond simply that. As mentioned above, the US Supreme Court delivered the decision in Bilski/USSC quite recently, squarely addressing patentable processes. While the decision does not answer all questions of US patentability of business processes, it appears that the US Supreme Court rejected the “machine or transformation” test as in violation of the expansive interpretation which should be given to §101 (the equivalent to our s. 2) – they saw nothing in the statute or in the plain meaning of language which would require “process” to be tied to a machine or an article. In essence, they rejected the type of physicality advocated by the Commissioner. The majority called it “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101” (slip op. At 8). Four of the justices went on to discuss the changing nature of technology and the limitations posed by this type of thinking (cf. § 55 of the decision):

The machine-or-transformation test may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age – for example, inventions grounded in a physical or other tangible form. But there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age. 
The Court went on to argue that the majority of the US Supreme Court affirmed in Bilski to not exclude business methods from patentability (cf. § 64 of the decision): 
We further reject calls for categorical exclusions beyond those for fundamental principles already identified by the Supreme Court. We rejected just such an exclusion in State Street, noting that the so called "business methods exception" was unlawful and that business method claims (and indeed all process claims) are "subject to the same legal requirements for patentability as applied to any other process or method" (cf. Bilski v. Kappos, § 1396).
United States: Amazon's 1-click patent US 5,960,411 has survived a reexamination essentially unscathed, since, according to the reexamination certificate dated March 2, 2010, the USPTO confirmed the patentability of original independent apparatus claims 6 (client system for ordering an item) and 9 (server system for generating an order) and amended independent method claims 1 (method of placing an order for an item) and 11 (method for ordering an item using a client system), whereas the independent method claims were limited so that the one-click system operates as part of a "shopping cart model" (see also here, here, and here).

After the reexamination, Missouri Law Professor Dennis Crouch, editor of the famous Patently-O blog, added that "the modified patent is still quite broad — especially since the leading retail ecommerce model still uses shopping carts. [...] To infringe the new version of the patent, an eCommerce retailer must use a shopping cart model (presumably non-1-click) alongside of the 1-click version. Because most retail e-commerce sites still use the shopping cart model, the added limitation appears to have no practical impact on the patent scope. [...] This case may be a public relations boon for supporters of patent reform that have been calling for an overhaul of the reexamination system."

In the past, Amazon has used the 1-Click patent to sue competitor Barnes & Noble and license the technology to Apple. The US patent will expire in 2017.

Europe: During the 'hot phase' of the debate on patentability of computer-implemented inventions in Europe, Amazon's European Patent EP 0 927 945 has been revoked by the EPO Opposition Division due to new matter (Art. 123(2) EPC 1973) and lack of inventive step (Art. 56 EPC 1973). The three oppositions were filed by Fleurop Interflora AG and, for mainly political reasons, by the German Computer Society (Gesellschaft für Informatik e.V.) and the anti-patent activist group FFII.

Amazon then lodged an appeal in which the Board of Appeal set aside the appealed decision and remitted the case back to first instance Opposition Division for examining the claims of the third auxiliary request (T 1616/08). The original claims were rejected by the Board of Appeal because of lack of inventive step:
The Board agrees that the subject-matter of claim 1 is obvious [, since] [t]echnical is [...] only the computer system itself and the means for communicating with the recipient, namely e-mail. But these technical means were well known at the priority date, and the invention simply uses them in a straightforward, conventional manner. The Board does not deny that, as the appellant has pointed out, the claimed system is new (over the notorious prior art) and involves technical considerations. This is however not enough. Novelty is not denied and technical considerations do not necessarily have inventive quality. The only relevant criterion for inventive step is the one stated in Art. 56 EPC 1973, namely whether the invention is obvious to a person skilled in the art. Since in accordance with established jurisprudence this 'art' cannot be a field of business or administration, only elements of the solution falling within the competence of a technically skilled person [...] can be taken into account.
The independent claim of the third auxiliary request to be examined by the Opposition Division is much more detailed and its scope is, thus, quite narrow. Further details can be found on IPJur.

Meanwhile, divisional application EP 1 134 680 has been rejected by the Examining Division and has been appealed as well. Oral proceedings are scheduled on January 27, 2011.

17 October 2010

Computer-Implemented B2B Information System not Inventive Due to Comvik and Despite TRIPS

Electronic components shops in Guangzhou, CN, supplying local companies
Case T 528/07, decided by the EPO’s Technical Board of Appeal 3.5.01 on 27 April 2010 is exceptionally interesting since it relates to not less than three interesting issues, namely the influence of the TRIPS agreement on the EPC, the examination of claims having both technical and non-technical features, and the exclusion of “presentation of information” from patentability according to Art. 52 (1) d EPC.

The applicant (Accenture Global Services GmbH) of EP application  02800218 appealed the EPO’s decision that the invented computer system for providing a computer-supported Business-to-Business (B2B) portal is found not inventive over prior art document US 5 893 091 A. Claim 1 of the refused application reads:

A computer system for providing a business-to-business relationship portal presenting business opportunity information to permissionned users comprising:
  1. a network of computers including a server and a plurality of client computers capable of communicating with said server;
  2. said server being programmed to send files to create a graphical user interface on a display of at least one of said client computers via browser software executing on said at least one client computer;
  3. said graphical user interface including a login page to identify permissionning that the user will have within the system;
  4. said graphical user interface including a briefing page having a plurality of channels with links to respective portal applications; wherein the channels contain substantially real-time data from the portal applications, wherein the user selects a specific timeframe for content retrieval and sees new items added to the portal within the selected time-frame;
  5. said briefing page including a link to a create opportunities application enabling the entry of information related to new business opportunities, said server being programmed to restrict use of said create an opportunities application to a createopportunity set of permissionned users;
  6. said portal applications including an opportunities application that displays business opportunities based on user permissionning;
  7. said portal applications including a catalog application that displays catalog content related to the business opportunities based on user permissionning;
  8. said portal applications including at least one communication application that displays communication items related to the business opportunities based on user permissionning;
  9. said server being programmed so as to enable an administration set of permissionned users to set user permissionning related to said business opportunities.
The TRIPS agreement and inventiveness:
Claim 1 relates to a computer system (a so called “business-to-business relationship portal”) facilitating the exchange of information between business parties by presenting “business opportunity information” to permissioned users, e.g. company background information or financial information. The information is displayed in boxes (“channels”) appearing on the user’s screen, that my contain links to application programs or summaries of aggregated data from the applications.

Assessment of inventive step and the TRIPS agreement: The Board of Appeal agreed with the Examining Division in that the claimed subject-matter is defined by both technical and non-technical features, the latter features relating to the “business-to-business relationship portal”, i.e. an entity arranged to provide new businesses with business-related information resources.

According to the pertinent “Comvik approach” (cf. T 641/00 "COMVIK"), the Board is not allowed to consider non-technical features when assessing inventive step. However, the appellant argued the opposite way and explained that since revised Art. 52 (1) EPC 2000 had been brought into line with Art. 27 (1) TRIPS it has to be interpreted in the light of the object and purpose of the TRIPS agreement, such that the identical wording of Art. 52 (1) EPC and Art. 27 (1) TRIPS ("patents shall be granted for any invention, in all fields of technology") implies not only that there could be no exclusions of the enumeration in Art. 52 (1) EPC, but also that the examination for inventive step had to be handled in a way to ensure that patents were indeed "available and patent rights enjoyable", as required by Art. 27 (1) TRIPS. The appelant concluded that it is therefore not be permitted to treat features involving non-technical aspects as part of the object to be achieved but, instead, all features of a claim contribute to an inventive step, although it was permissible to attach more weight to the technical ones.

The Board did not share the appellant's opinion that the Comvik approach has to be modified in view of TRIPS, since Art. 27 (1) TRIPS does not give a definition of the term "technology" but leaves it to the member states and their jurisdiction to define and apply this concept. Moreover, Art. 27 (1) TRIPS only requires that
[...] patents shall be available for any inventions [...] in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. [...] Patents shall be available and patent rights enjoyable without discrimination as to [...] the field of technology [...].
TRIPS, however, does not stipulate how these requirements are to be applied. The Board explained that Art. 27(1) TRIPS only reflects, on the one hand, a minimum consensus and, on the other hand, the member states’ unreadiness to uniformly define the patentability requirements. Therefore, the TRIPS member states are free to adopt different standards for each patentability requirement, e.g. inventive step, and the Comvik approach is one facet of the standard applied by the EPO.

At that occasion, the Board clarified that the Comvik approach does not imply or result in that an invention involving non-technical aspects merely solves a trivial problem. A frequent case is, however, that technical features which are known as such (e.g. the client-server system in the present case) are used for a non-technical purpose (e.g. the present B2B platform). The Board explained further that the Comvik approach only divides claimed features into either a mere expression of a non-technical “framework” (not contributing to inventive step) or a technical feature contributing to an inventive step, whereas the notion of a “(non-technical) framework” covers those features that cannot be considered as contributing to the solution of any technical problem by providing a technical effect (cf. T 641/00, Reason 6).

While a claimed subject-matter is, as a whole, considered not patentable in the sense of Art. 52 EPC if no technical problem can be derived from that claim at all (cf. T 641/00, Reason 5), the individual features not contributing to the derived technical problem are part of the “non-technical framework”. 

When a patentable – i.e. sufficiently technical – claim (also) addresses a non-technical problem, this problem may well be considered in the formulation of the objective technical problem as required by the problem-solution approach for assessing inventive step. At this point the Comvik decision assumes that the person skilled in the art would receive knowledge of those non-technical features as part of the objective technical problem (cf. T 641/00, Reasons 13, 14).

That is, since non-technical features usually define the context of an “invention“, e.g. the features defining the B2B platform in the present case, and a skilled person would (per definitionem) be able the immediately implement such features (since they are not technical) these features cannot support inventive step of the claim.

Presentation of information:
As a further approach, the appellant refered to T 717/05 (LABTRONIX) to argue that the display of data can have technical character since
any display of information of the internal state of an apparatus conveys a cognitive content to the user, as this is the fundamental reason for its existence. To exclude all such systems from patent protection cannot be seriously envisaged (cf. T 717/05, item 5.4)
The Board agreed that if the display of information about the outcome of games played on a computer has technical character, as held in T 717/05, then it may well follow by analogy that the information displayed in present claim 1 contributes to an inventive step.

To clarify this question, the Board then reviewed T 115/85 and T 833/91, whereas T 717/05 relied for authority to the former and was cited by the latter, and found that
[on the one hand side,] giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem (cf. T 717/05, item 5.5) [while]

[on the other hand side,] even though T 115/85 does not specify said ‘event’ or ‘condition’ by way of examples, it is therefore to be concluded that they were basically of a technical nature such as, for instance, an event calling for an error message (cf. T 833/91, item 3.1)
and concluded that 
two different interpretations of decision T 115/85 exist in the jurisprudence: either the visual indications must concern technical conditions of the system in order to relate to a technical problem (T 833/91), or they may also concern non-technical conditions (T 717/05).
The Board then followed the more restrictive approach according to which only technical conditions of a system can be taken into account, since this line has also been taken in other decisions of the Boards of Appeal and the clear character of exception of this approach appears to be more consistent with the exclusion of “presentations of information” pursuant to Art. 52 (2) d EPC. The thus regarded features that indicate non-technical conditions of the claimed system, such as data relating to a business undertaking, as not contributing to an inventive step.

Inventive step:
Features (a) and (b) of above-sketched claim 1 as well as those features that related to the permissioning were regarded sufficiently technical but known in the art. The remaining features (e to h) were regarded to owe their existence to the underlying business model, while feature (i) was considered as relating to an administrative effect only.

The Board therefore could no see any feature making a inventive technical contribution to the prior art. (cf. T 528/07, items 5.1 to 5.6).

As a conclusion it was stated unter item 5.7 that
The appellant has argued that the overall combination of the features has a synergistic effect because they cooperate to solve the technical problem of facilitating the exchange of information and supporting rapid information sharing […]. The Board is not convinced that there is an (unexpected) synergistic effect since features do not interact merely because they have a common goal. But even if there was such an effect it could only exist on a business level. On a technical level nothing in the claim is surprising: the use of a client-server system facilitates the exchange of information and support information sharing (that is what it is for); and the kind of information displayed or transmitted (opportunities, catalogues) has nothing to do with the rapidity with which signals travel from user to user. Furthermore, if the invention has the effect of reducing the traffic load on the net - as has been argued - this is due to user restrictions rather than, say, a protocol determining how the computers transmit data packets over the communication channel. In other words, the load is reduced by non-technical rather than technical means.

(Photo (C) 2008 by Vladimir Mekov via Wikimedia under the terms of a CC license)

12 October 2010

Belgian Compromise not Sufficient to Remove Deadlock on EU Patent Language Regime (updated)

Refering to an article on the well informed EurActiv network, the meeting of the Competitiveness Council held in Luxembourg on 11 and 12 October 2010 did not bring any improvement to the deadlock between the trilingiual language regime proposed by the EU Commission, as supported by e.g. France and Germany, and alternative solution, such as a monolingual (exclusively based on English) or multilingual (additionally based on Spanish and Italian) language system, as supported e.g. by Spain and Italy. It appears that the latest compromise as suggested by the Belgian EU Presidency has been reamed between this opposing poles and national interests:
France and Germany want to maintain the privileged status reserved for their respective languages in the current system, which is run by the European Patent Office (EPO), a pan-European body which is not part of the EU.

Italy is the most vocal country against a trilingual regime. The minister in charge of the dossier, Andrea Ronchi, continued to threaten yesterday at the EU Council that Rome would not hesitate to use its veto power on the issue. [He] described as "absolutely incompatible" the trilingual regime proposed by the Commission and de facto backed by the Belgian Presidency. "It hampers the internal market. It discriminates against languages and does not reduce costs sufficiently," he said at the end of the Council.

Spain is also very critical and has proposed a system based on English and a second language, to be chosen at will by applicants.

Poland is said to have voiced criticism at the last Council. Warsaw is clearly against the idea that a possible solution could involve a five-language regime, where Italian and Spanish would join English, French and German as official languages for EU patents, leaving out Polish.

Slovakia, the Czech Republic and Cyprus are also sceptical about the three-language proposal made by the Commission last July.
The commissioner in charge of the dossier at the EU executive, Frenchman Michel Barnier, faced accusations that he was pursuing his national interest in proposing a trilingual system during a press conference after the Council had ended yesterday.

The EU commissioner for industry, Italian Antonio Tajani, said he supported a solution based on multilingualism, with five languages rather than three. "However, instead of a monolingual regime, I would go for a trilingual system," he added after the Council.
In this situation the compromise proposed by the Belgian Presidency was "not considered sufficient to remove the deadlock", since it apparenty does not meet any of the above-skeched national interest. 

However, the Belgian Presidency is still confident that the next Competitiveness Council in November can find a fair compromise on the EUpatent, as expressed by the Belgian minister in charge of the dossier, Vincent Van Quickenborne, underlining that a compromise is still possible.

Also refering to the EurActiv piece, Joff Wild of the IAM blog comments on the more (socio and business) cultural aspects of that intense discussion:
Language goes to the very heart of how a country views itself. As we can see from the above, it is not just Spain and Italy that feel strongly about this, but also France, Germany and many other countries. Logically, a system that is based solely on English probably makes the most sense, which is why the Commission originally suggested this all those years ago. But, as it then found out, emotionally, culturally, socially and politically, such a system is impossible in Europe. [...]

Of course, if the EU is ever to be a proper single market it has to have a single patent right. But maybe member states would be better off concluding that absolute purity really is not worth the bother. And were that to happen, they could then give more time to addressing the real reasons why so many European companies do not show any interest in patents. [...] This has much less to do with cost than it has to do with them not seeing the point of obtaining protection. After all, if they did see the point and felt it was important, the price would not be an issue in the first place.
UPDATE: The provisional conclusion of the Competitiveness Counsil has been published today. Therein it is stated that "the outcome of the [...] debate provides guidance and good basis for continuing work with a view to achieving an agreement as soon as possible on this long-standing file", which basically means that a stable compromise was not yet found.

Besides well-known phrases on the drawbacks of the current (EPC-) system and completion
of the internal market for innovative products, the paper summes up the essential parts of the discussions as follows:
  • A very large majority of delegations supports the compromise proposed by the Presidency in document 14377/10, which should serve as basis for further discussions;
  • Several delegations stressed the importance of the accompanying measures being made available by the time the EU patent system becomes operational, namely: a high quality system for machine translations of patent documentation into and from any EU language and the full compensation of the costs related to the translation of a patent application drafted in an EU language other than one of the EPO languages;
  • A large majority of delegations underlined that the red lines for finding a final compromise are that no significant costs should arise from additional translations and that the new system should not result in legal uncertainty.
  • The Presidency has received sufficient encouragement to intensify and accelerate work on this file with a view to reaching a successful outcome before the end of this year.
  • Several member states mentioned the possibility of considering an enhanced cooperation, but the Presidency's ambition remains to find an acceptable compromise for all 27 member states.
  • The Presidency plans to organise another ministerial meeting next November with a view to reaching an agreement."
That is, the enhanced cooperation, which is clearly opposed to the community idea of the European Union, has been discussed as a possible solution to the current deadlock and thus may indeed appear to be the only way a "EU" patent could be realised. We shall wait an see as this saga will certainly be enriched by some more twists.

11 October 2010

EU Committee Gives Political Orientation With Regard to Belgian Presidency's Proposal for EU Patent Language Regime (updated)

Blessing Madonna, stained glass window in
Strasbourg Cathedral featuring the twelve EU stars.

As reported earlier, the Belgian EU Presidency put a non-paper on the table at the informal Competitiveness Council of 29 September 2010 to seeks a break-trough in the negotiations for the EU patent and the unified European Patent Court (EEUPC). Therein it has been suggested that English French and German would remain the official languages for filing EU patents, while English would be the only language into which patents are translated, however, only for a transitional period until the performances of translation machines have reached a sufficient level.

The EU Competitiveness Council will meet today and tomorrow in Luxembourg to, inter alia, discuss the EU Commission's proposal on translation arrangements.

Now it has been reported on Document 14377/10 of the Committee of Permanent Representatives' meeting of 6 October 2010 related to the compromise suggested by the Belgian EU Presidency. The document tells us that at the informal Council of 29 September 2010 "almost all delegations expressed the need of finding a solution for the translation arrangements for the EU patent in short term, preferably during the Belgian presidency" and that "a large majority of the delegations made clear that this solution would need to respect certain red lines, namely that significant additional costs resulting from additional translations and legal insecurity resulting from giving legal effect to translations would not be accepted.

Document 14377/10 aims at giving a "political orientation" by the Permanent Representatives Committee on the compromise text by the Belgian Presidency in that

the Council is invited to agree on the elements for a political orientation concerning the draft Council Regulation on the translation arrangements for the European Union patent as set out in the Annex to this note.

According to the Annex of Document 14377/10, the key measures needed to achieve substantial simplification and significant cost reduction as compared to the present EPO language regime (and the proposal of the EU Commission) are:

Machine translations: In order to improve access to technical information on patents in local languages for all users of the patent system in Europe, the timely availability and high quality of machine translations into all EU languages is an indispensable element of the translation arrangements of the European Union patent. In order to achieve this, the Commission shall establish a cooperation programme with the EPO in order to ensure the timely availability of machine translations. The Commission shall provide all possible support, in particular financial support for the development and functioning of the system of machine translations at the EPO. It should be included in the draft Regulation on the translation arrangements for the European Union patent that the establishment and the functioning of the machine translation system should be subsidised from the EU budget.

Compensation of costs: In order to facilitate access to the EU patent for applicants from EU Member States that have a language other than English, French or German among their official languages, applicants shall continue to have the possibility to file applications in their own language. The costs of the translation into the language of proceedings of the EPO will be eligible for additional compensation, beyond what is currently already in place for European patents, including financial and technical assistance for preparing these translations. These measures should help applicants to apply for patents at the EPO with equal opportunities by compensating for the costs of translations into the language of procedure from the very beginning of the procedure at the EPO. The necessary arrangements shall be established by the Member States through the Select Committee of the Administrative Council of the EPO.

A language regime following these central claims would certainly be attractive especially for those countries that currently oppose the EU Commission's proposal. However, as always, the devil is in the details. Under the headline "transitional arrangements" the Annex of Document 14377/10 clarifies that

During a transitional period, for EU patents which are not granted in the language customary in the field of international technological research and publications a translation into this language has to be provided by the applicant. Such translations would be important as long as high quality machine translations are not available from all of the three EPO languages into all other EU languages. This translation would be included in the publication of the EU patent specification. It would be for information purposes only and would have no legal effect.

The Council is of the view that even though such an additional translation would result in supplementary costs for certain proprietors of EU patents, these translations would be of interest for those companies and third parties who work only in the language customary in the field of international technological research and publications, as long as the quality of machine translations from all three EPO languages into all other EU languages is not fit for patent information purposes.
That is, as long as high-quality of machine translations from all three EPO languages into all other EU languages are not available, applicants may file a EU patent application in their language and would then have to provide a - legally not binding - translation into the "language customary in the field of international technological research and publications", whatever language that might be.

At this point, however, it remains questionable whether or not a translation provided by the applicant is of any worth for the public and competitors at all. In more pronounced words, the IPJur blog comments:  

No legal effect? Then surely applicants might be tempted to just include some error-prone machine translation into the description. But, wasn't this measure thought to be valid as long as high quality machine translations are not available from all of the three EPO languages into all other EU languages? Strange games, here.

Another problem might be the demanded "timely availability" of high-quality machine translation. I don't think that the opposing EU members (e.g. Spain and Italy) would agree on such a compromise without any concrete (and rather short) time horizon as to when the machine translations are available, which would have to be provided by the EPO.

According to the EU Council's background note on machine translations of 3 September 2010, the EPO's machine translation programme is currently, after six years of work, capable of providing "reasonable-quality translations" from and to English to and from German, French, Spanish, and Italian, respectively. According to IPR helpdesk, tailor-made electronic machine translation dictionaries may be purchased on the EPO website also for English/Portuguese/English.

UPDATE: In a yesterday's article on EurAktiv the Belgian compromise proposal is described as "a small step forward in comparison to the previous [Commission's] proposal, but critics still consider it insufficient". Apparently, this issue is addressed at yesterday's and today's EU Competitiveness Council meeting in Luxembourg, whereas "it is unlikely to strike a deal", since two more meetings are scheduled before the end of the year in order to reach a compromise:

The system could indeed establish a competitive advantage for British, German and French companies, by allowing them to file applications in their own language that would become instantly legally-binding in all other EU member states. Moreover, they would also benefit from translations into their language of patents initially filed in another tongue. [...] This would trigger extra costs, especially when the filed language is not English. Patents in this language are indeed more easily understandable due to the widespread use of English among the scientific community, which is not the case for German and French.

The crucial question remains: How can Spain and Italy be convinced without losing the support of others, especially France and Germany?. At the negotiations front, the situation is described like this:

However, the compromise proposed by the Belgians does not touch upon the heart of the issue, which is guaranteeing the status of a legally-binding language to German and French in addition to English.
This is what Rome and Madrid are mainly fighting against. As an alternative, they are requesting a monolingual system based on English or the inclusion of their own languages among the official tongues of the EU patent.

The latter proposal would trigger similar requests from other countries and it is thus less likely to find unanimity. Although the monolingual system is backed by many member states, it is profoundly opposed by two heavyweights – Germany and France.

"The route to a compromise is very narrow," explained a Belgian delegate, stressing that 25 countries had showed their backing for the proposal made by the Commission based on English, French and German.

Should the Begian compromise fail, a possible last resort appears to be an enhanced co-operation, i.e. an EU legislative agreement among a small group of EU members. Although such a mechanism has been permitted already in the Amsterdam Treaty of 1999, it has not yet been used since it is considered somewhat against the EU philosophy. In fact, the Schengen agreement and the EURO, which also are in force only in certain member states, have not been implemented by an enhaced co-operation but by other legal mechanisms. But there is also an obstacle to this option. While only nine member states have to agree to take part in the enhanced co-operation, it needs to be authorised by a qualified majority of member states, whereas it is unknown if that can be achieved. That is, one cannot be overly enthusiastic about the prospect of success of this option.

08 October 2010

EU Commission presents "Innovation Union" Initiative as Belgian Presidency seeks Break-Through in EEUPC Language Issue (updated)

According to a recent press release, the European Commission published a Communication entitled “Europe 2020 Flagship Initiative Innovation Union”, which identifies ten key points required for turning Europe into a true "Innovation Union". 

Beside a number of structural and financial points to fostering innovation, the Commission also aims at improving Europe's IP infrastructure, especially with regard to patents:
Europe's intellectual property regime needs to be modernised. Agreement on the EU Patent would save business €250 million a year. The Commission will in 2011 make proposals for a European knowledge market for patents and licensing.
More precisely, the framework conditions for business to innovate shall be improved by
  • creating the unified EU Patent and a specialised Patent Court (EEUPC), 
  • modernising the framework of copyright and trademarks, 
  • improving access of SMEs to Intellectual Property Protection, 
  • speed up setting of interoperable standards; 
  • improve access to capital and make full use of demand side policies, e.g. through public procurement and smart regulation.
Under the headline "A single market for the 21st century" (section 3.1 of the paper), it is especially noted that the single market must remain an open market and that competition policy has to ensure that markets provide the right environment for innovation which, for instance, may be achieved by preventing anticompetitive agreements and ensuring that patents and property rights are not abused.

The paper and the measures suggested therein will be discussed at the Competitiveness Council of 12  October and at the European Council in December this year.

Meanwhile, it has been reported that the current Belgian EU Presidency seeks a break-trough in the negotiations for the EU patent and the unified European Patent Court by a non-paper put on the table at the informal Competitiveness Council of 29 September 2010.

The non-paper suggests an alternative language regime to overcome the opposition of especially Spain and Italy, which are the most vocal critics of the Commission's latest proposal. According to the compromise of the Belgian Presidency, English French and German would remain the official languages for filing EU patents, while English would be the only language into which patents are translated, however, only for a transitional period until the performances of translation machines have reached a sufficient level.

Frankly, this doesn't sound like a break-through acclaimed by Spain and Italy.

Update: I just received another press release announcing that the EU Competitiveness Council will meet in Luxembourg on Monday and Tuesday, 11 and 12 October under the Belgian Presidency in order to discuss a number of issues, among which is the proposal on translation arrangements for a future EU Patent tabled by the European Commission on 1 July 2010.

The Commission's propoal suggests that EU Patents will be examined and granted in one of the official languages of the EPO (EN, FR, DE) and the granted patent will be published in this (legally binding) language including translations of the claims into the remaing two EPO official languages. Further translations to be provided by the proprietor are only required in case of a legal dispute, e.g. into the language of an alleged infringer or into the language of the court proceedings when this is different from the language of the patent.

However, this propsal is not given much chance to be adopted due to a strong opposition of mainly Spain and Italy advocating either a multilingual or monolingual regime, but not one based exclusively on the EU's (or the EPO's) three working languages.

04 October 2010

EPO Enlarged Board of Appeal Says EP Application is Pending Until Expiry of Appeal Period (G 1/09)

Rule 25(1) EPC 1973 (and equally Rule 36(1) EPC) states "The applicant may file a divisional application relating to any pending earlier European patent application".

In the EP patent application 01102231.6 the question arose whether or not for an application that has been refused in oral proceedings a divisional application can still be filed until the lapse of the two-months time limit for filing a notice of appeal according to Art. 108 EPC.

I think that a fair understanding of the basic principles of procedural law should lead to the conclusion that any legal case is pending until a final decision enters into effect - i.e. until no remedies are given any more. Quite to the contrary, the Examination Division took the position that upon refusal of the application its pendency ended and no division could be filed after that point in time. However, as already sketched by the IPKat, this understanding would lead to the strange situation that "if an appeal is then filed against the decision the application miraculously becomes pending again" such that "an application could be considered to have been pending only in retrospect.

The Enlarged Board of Appeal had to decide this issue in case G 1/09, after the following question has been referred to the Board in decision J 2/08:
Is an application which has been refused by a decision of the Examining Division thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?
Quite naturally, the Enlarged Board's decision referred to the above-referenced basic principles of procedural law and found the concept that it is “accepted that the final (res iudicata) character of a first-instance decision (Rechtskraft) will only ensue upon expiry of the time limit for filing an appeal” indeed well-established in the Contracting States - e.g. in the Code of Civil Procedure of Germany (§ 705, Zivilprozessordnung) and of France (Article 500, Code de Procédure Civile) - which in essence provides that decisions do not become final until the expiry of the respective period for seeking ordinary means of legal redress, such that there is no reason to deviate from this generally accepted principle in the context of Art. 67(4) EPC 1973 (cf. § 4.2.2 of G 1/09).

Consequently, the Enlarged Board of Appeals ruled that
In the case where no appeal is filed, a European patent application which has been refused by a decision of the ED is thereafter pending within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal.
In contrary to the situation of an appealable refusal of an application, in the case of a grant the pending status of the application normally ceases on the day before the publication of the grant, which, according to an obiter dictum (cf. § 4.3 of G 1/09), follows from the fact that from the date of publication of the grant the substantive rights are no longer derived from the application but from the patent.

For further coverage please refer to Oliver Randl's great K's Law blog and the EPLAW blog.

02 October 2010

Today at Midnight the Last Patent of Former German Democratic Republic (GDR) Expires

The history of the German Democratic Republic (GDR) ended twenty years ago on October 03, 1990 with the entering into force of the "Einigungsvertrag" (Unification Treaty) between the Federal Republic of Germany (FRG) and the German Democratic Republic, according to which the GDR declared its accession to the FRG. The treatment of the GDR's intellectual property rights has been coded in the Unification Treaty of 31 August 1990 and laid down in the "Erstreckungsgestetz" (Act on the Extension of IP Rights) of 23rd April 1992.  

On the day before, 42 patent applications were filed with the Patent Office of the GDR, the "Amt für Erfindungs- und Patentwesen der DDR", in East Berlin. From those of the 42 applications that were granted only two are stillin force, namely, based on a french priority, DD 299 263 ("laser marking of cheese products") of french inventor Rocco Pilierot and DD 298 536 ("apparatus for VI modification for a screw compressor with combined VI and partial load adjustment") of GDR engineers Dieter Mosemann, Otto Knodel, Peter Kolberg, Ottmar Neuwirth, and Horst Meier, who at that time were with the "VEB Kühlautomat Berlin", a comparably successful people-owned enterprise of the GDR that produced cooling equipment.

Today at midnight, when the day of 20th aniversary of the German reunification begins, the Mosemann patent will expire after the regular patent term of 20 years according to § 6a ErstrG (Extension Act) as the last true GDR patent. On that occasion, technology writer Max Rauner recently published the article "Der letzte Erfinder" (the last inventor) featuring Dieter Mosemann, who was one of the most successful inventors of the GDR and managed to be successful in unified Germany as well.

Also, on the occasion of the 20th aniversary of the take over of the GDR Patent Office and its 13.5 million patent documents by the German Patent and Trademark Office (DPMA), a recent press release recalls the demanding process of merging the two independent German patent offices, during which 450 of the 600 employees of the GDR Patent Office, including 105 patent examiners, have been integrated into the DPMA offices in Berlin and Munich. 

Since the GDR was member of international IP law organizations, the legal regulations for IP protection were almost identical in the two German states. There were, however, differences in the rules for commercialising and exploiting patents. While the patents of the Federal Republic of Germany gave the holder the right to exclude anyone from using and the invention, the GDR had (fewer) such exclusion patents ("Ausschließungspatent") and much more so called economy patents ("Wirtschaftspatent"), which could be used by any state-owned enterprise upon payment of a compensation. All in all, the IP heritage from the German communist era included 110.000 effective GDR patents, among which were 14.000 exclusion patents and 97.000 economy patents.