Patents in Europe

European Patent Convention

para.2-043 Norway and Croatia are now members of the EPC.

Technical solution to a technical problem

para 2-070 & 2-07. See T-1227/05 Infineon Technologies/Circuit Simulation discussed below.

Requirement of technical effect

para.2-090 In an interesting decision, T-1227/05 Infineon Technologies/Circuit Simulation [2007] OJEPO 574, the TBA had to consider a computer-implemented simulation which modelled what would happen when an electrical circuit was subject to 1/f noise. At oral hearing, the Examining Division held that Art.52(2) could be overcome by claims for "computer-implemented method" which used the simulation mathematics taught in the patent description. However, the Division was concerned that it would not be able to take the inventiveness of the mathematical simulation methodology into account when considering inventive step because such did not have technical character. Thus, it was necessary to define with precision what aspects of the teaching in the patent had technical character so that they could be taken into account when assessing inventive step (see para 2-070&2-071). The TBA held,noting the increasing modern reliance on computer simulation methods, that all features contributing to the simulation including the formulae contributed to the technical character of the invention. In this sense, it distanced itself from T49/99 International Computer/Information modelling where a similar claim was rejected under Art.52(2). As the TBA in T-1227/05 said, the TBA's rejection in T-49/99 "was based on claim elements whose subject matter was more like a metalanguage for describing an abstract model than a description of technical features which implemented the model".

Computer-related inventions

para.2-092. In Astron Clinica and ors v Patent Office, the Patents Court of England revisited the issue of the patentability of computer-related inventions. In this case, there was no dispute about the technical nature of the inventions which had various diverse aims as generating bit masks for printers, the generation of skin topographical maps for cosmetic surgery etc. However, the technical nature of the invention came from a computer program. As the judge said, in each case, case "it is the computer program which confers the technical advance and over which the applicant is anxious to secure a monopoly". The Patent Office found method and apparatus claims e.g., respectively, "a method of doing X" and "a device for doing X". The method claimed was a method performed by running a suitably programmed computer and the apparatus claimed was a computer programmed to carry out the method. However, the Patent Office refuse claims to computer programme per se (which, as the Patent Office, identified led to real lacunae in protection).

Kitchin J reviewed the UK and EPO decisions including AerotelMacrossan and said that such decisions did not prevent patents for computer programs where the underlying method was patentable. As the judge said

"[51] In all these circumstances I have reached the conclusion that claims to computer programs are not necessarily excluded by Article 52. In a case where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable, then, in principle, a claim to the program itself should also be allowable. I say "in principle" because the claim must be drawn to reflect the features of the invention which would ensure the patentability of the method which the program is intended to carry out when it is run. "

Biotechnological inventions

para 2-113. The sentence "In Novartis/Transgenic Plant", the EBA held that genetic engineering is the same as microbiological processes should read "..the EBA held that genetic engineering is not the same as microbiological processes".

London Agreement comes into force on 1st May 2008

para.2-119 Following the ratification of the London Agreement by France, the London Agreement will now come into force on 1st May 2008. The EPO has now prepared draft regulations to put the London Agreement into force. Croatia, Denmark, Latvia, the Netherlands, France, Liechtenstein, Slovenia, Germany, Luxembourg, Switzerland, Iceland, Monaco and the United Kingdom gave ratified the London Agreement. Sweden, although not a signatory, has implemented its provisions into its national law.

For signatories to the London Agreement, the effect is to waive, entirely or largely, the requirement for translations of European patents to be filed in their national language. It is necessary to distinguish between countries which share an official language with the three official languages of the EPO (German, English and French). Where such is the case, then there is no need to translate the patent at all (even if the language of the patent is not the same as that of the country). These countries are France, Germany, Liechtenstein, Luxembourg, Monaco, Switzerland and the United Kingdom.

Where the country does not have English, French or German as a national language, then the country may insist upon translation of the claims into their national language. Thus, Croatia (Croatian), Denmark (Danish), Iceland (Icelandic), Latvia (Latvian), Slovenia (Slovenian), Sweden (Swedish) and the Netherlands (Dutch) require translation of the claims into their languages. Also, Croatia, Denmark, Iceland, Sweden and the Netherlands require translation of the description into English. They are entitled to do so under the London Agreement because they can require translation into a designated official language of the EPO (see Art.1(2) London Agreement [2001] OJEPO 549).

Amendments

para. 2-162. In M-Systems v Trek [2008] EWHC 102, the Patents Court of England confirmed that in England, following the implementation of EPC 2000, there is no discretion to refuse an application to amend a patent.