EPO: please stop asking questions

The IPKat thanks James Heald for pointing out a recent important decision by the EPO board of appeal (T 154/04, recently commented on in German patentanwalt Axel Horns' blog), which has comprehensively rejected any possibility of referring the questions Lord Justice Jacob wanted to ask the enlarged board of appeal in his Aerotel/Macrossan judgment. The questions from the judgment were as follows (from paragraph 76):

(1) What is the correct approach to adopt in determining whether an invention relates to subject matter that is excluded under Article 52?

(2) How should those elements of a claim that relate to excluded subject matter be treated when assessing whether an invention is novel and inventive under Articles 54 and 56?

(3) And specifically:

(a) Is an operative computer program loaded onto a medium such as a chip or hard drive of a computer excluded by Art.52(2) unless it produces a technical effect, if so what is meant by 'technical effect'?

(b) What are the key characteristics of the method of doing business exclusion?

Attentive readers will remember that the President of the EPO had previously rejected these questions (as commented by the IPKat here), because he considered the EPO case law not to be so contradictory as to require the questions to be asked. Pretty much the same reasoning appears to apply in this case too (which makes the naturally sceptical IPKat wonder whether Alain Pompidou's words were in fact all his own).

In the decision, the board dismissed an appeal by the applicant, who was seeking patent protection for a new computerised method of handling market data. The applicant, who must presumably have guessed that such an outcome was likely, proposed Jacob LJ's questions to the board together with additional ones of their own, listed as questions 4, 5(a) and 5(b):

(4) Is a system for estimating product distribution for non-reporting outlets based on weighing factors that are a function of the distance between the nonreporting outlets and sample reporting outlets and the characterization, e.g. size, of the non-reporting and reporting outlets of a technical nature?

5(a) Are the exclusions of Article 52 to be treated differently from each other in the way that obviousness is assessed?

5(b) Are inventions alleged to be within Article 52 to have a different test for obviousness than other inventions not alleged to be within Article 52?

The board considered that, under their rules of procedure, questions would be referred if they considered it necessary to deviate from an interpretation or explanation of the Convention contained in an earlier opinion or decision of the enlarged board. In particular (at point 2 of the reasons),

"A decision deviating from an opinion given in another decision of a board of appeal, a diverging opinion expressed in decisions of different boards, or a deviation from some national jurisprudence -- for example, from the UK case law of the Court of Appeal to which the appellant referred in support of its case -- are not per se valid reasons for referral (see also Article 15 RBPA). Hence, the legal system of the European Patent Convention gives room for evolution of the jurisprudence (which is thus not "case law" in the strict Anglo-Saxon meaning of the term) and leaves it to the discretion of the boards whether to give reasons in any decision deviating from other decisions or to refer a point of law to the Enlarged Board. The President of the European Patent Office may intervene under Article 112(1)(b) EPC, in particular if the legal situation becomes unclear for first instance proceedings.

In the interest of the harmonisation of national and international rules of law, the boards of appeal will take into consideration decisions and opinions given by national courts in interpreting the law (see G 5/83 - Second medical indication/EISAI (OJ EPO 1985, 64), Reasons No. 6). Nevertheless, in the proceedings before the European Patent Office, such considerations do not exonerate a board of appeal from its duty as an independent judicial body to interpret and apply the European Patent Convention and to decide in last instance in patent granting matters. In addition, despite harmonised legal regulations it is not self-evident that their interpretation is also harmonised among different national courts, let alone courts of different contracting states, so that the boards of appeal would be at a loss as to which interpretation to follow if they did not exercise their own independent judgement."

For these reasons, the board then refused the request for referral, dismissing each question as follows:

"Question 3(a) concerns the patentability of computer programs loaded onto a medium, which is not the subject matter of any one of the claims requested. Hence, although possibly of general interest, this question is plainly irrelevant in deciding the present appeal on its merits.

Question 4 relates to a very specific subject matter, namely the patentability of a system for estimating product distribution for non-reporting outlets. This issue neither addresses an important point of law nor requires any answer from the Enlarged Board of Appeal to ensure the uniform application of law.

Questions 1, 2, 3(b), and 5(a) and (b), although concerning important points of law relevant to the present appeal, do not warrant a referral to the Enlarged Board of Appeal either since the Board has no doubts how to answer the questions on the basis of the Convention, following the established case law on patentability of inventions."

The board then reiterated the present position of the case law regarding the patentability of inventions having a mix of technical and non-technical features in a claim. They also discussed the reasons for arriving at the current position, with reference to the travaux preparatoires for the EPC and the revised form of Article 52(1) in the EPC 2000 (yet to come into force). Their unsurprising (and, in the IPKat's view, still very unhelpful) conclusion was that "an invention meeting all criteria of patentability, must provide a novel and inventive technical contribution to the prior art" (point 9 of the reasons).

With reference to Aerotel, the board considered the current UK approach to be inconsistent with the EPC, and further pointed out in no uncertain terms that Jacob LJ had got it completely wrong:

"The 'technical effect approach (with the rider)' applied in the Aerotel/Macrossan judgement is irreconcilable with the European Patent Convention also for the further reason that it presupposes that "novel and inventive purely excluded matter does not count as a 'technical contribution'" (Aerotel/Macrossan, e.g. paragraph No. 26(2)). This has no basis in the Convention and contravenes conventional patentability criteria; referring e.g. to mathematical methods and to discoveries, the Enlarged Board of Appeal said in decision G 2/88 (supra), Reasons No. 8:

"[...], as was recognised in Decision T 208/84 [...] (dealing there with a mathematical method rather than a discovery, but the same principle applies), the fact that the idea or concept underlying the claimed subject-matter resides in a discovery does not necessarily mean that the claimed subject-matter is a discovery 'as such'".

In fact, a non-technical feature may interact with technical elements so as to produce a technical effect, e.g. by its application for the technical solution of a technical problem (see for example Opinion G 1/04 (supra), Reasons Nos. 5.2 ff.). If this is true for some purely excluded matter, for example the intellectual exercise cited in the Opinion, then -- to the extent it contributes to the technical effect -- it must count as a contribution to the technical character."

The board also considered that Jacob LJ had "missed the point" of the approach taken by the boards of appeal in determining the technical features of a mixed type of claim, in making the comment (at para 27) that to deem new music or story part of the prior art was not intellectually honest.

In summary, it appears to the IPKat that the board, at least in the shape of Herr Steinbrener (the chairman of board 3.5.01), has established a firm stance against the persistent questioning of their approach, which has been arriving with increased frequency from across the Channel over the past few months. The IPKat wonders what can possibly happen now for the UK and EPO approaches to come back into line. Can Robin and Stefan ever agree?