Patents in Europe

TRIPS

para 2-004. In a number of cases, it has been argued that Art.27 precludes any legislative measure that bans the patenting of computer programs. However, as both the EPO and English Court of Appeal have emphasised, it still needs to be shown that the computer invention is an "invention in technology" (see Symbian and T154/04 Duns Licensing). The requirement of "technical contribution" that exists in both jurisdictions before a computer program is patentable, in effect, embodies the same issue.

European Patent Convention

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

EPC and European Union

Para 2-052. In G2/06 WARF/Stem Cells, the EBA was asked to refer various questions on the meaning of the implementing regulations concerning the patentability of stem cells on the basis that such repeated the wording of Art.6(2)(c) of the Biotechnological Directive. The EBA dismissed such an application on the grounds that it had no power to do so. It said that the fact that the rules were implemented to correspond with that of the Directive could not be taken as imposing some new power to refer. Importantly, of course, not all EPC members are EU members. In that sense, the ECJ would be giving a ruling on a matter which would purportedly affect non-EU members.

However, the EBA held that it was right to take into account the directive and its travaux preparatoires when interpreting corresponding provisions in the EPC and its implementing regulations EPCr26(1) expressly said that the directive shall be used as a supplementary means of interpretation.

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".

In Symbian [2008] EWCA Civ 1066 , the Court of Appeal revisited the approach of the English courts to computer-related inventions. In dismissing an appeal from Patten J, the Court held that a patent for software which concerned a method for accessing data in a dynamic link library which it was claimed had the effect of speeding up and making more reliable many devices. The court held that such was a technical contribution to the art. It thus draw a distinction between computer programs for business methods, algorithms etc and computer programs which actually achieve a technical effect. The Court of Appeal declined not to follow Aerotel but held that in practice, the same solution is reached whether the EPO route is followed or the English approach but just at different stages.

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".

para 2-115. In G2/06 WARF/Stem Cells, the Enlarged Board of Appeal gave its decision on the appeal from the TBA mentioned in para 2-115 of the text. It thus had to consider issues relating to the patenting of stem cells and in aprticular whether such was contrary to r.23d(c) (now. Art.28(c)) which prohibits biotechnological inventions which concern the use of human embryos for industrial or commercial purposes. As a preliminary point, it held that these rules were applicable to all pending cases regardless whether they were filed prior to the rules coming into force.

On specific points relating to r.23d(c), it said that

• embryo should not be construed as meaning an embryo which was 14 days or older.
• it was not necessary for the objection to be a valid one for there to be a claim to a human embryo but rather "invention" should be construed as meaning "the technical teaching of the application as a whole as to how the invention is to be performed". Thus, if in carrying out such steps, one had to destroy human embryos, such was sufficient to engage r23d(c). In this regard, it did not matter that the use of human embryos itself was not for industrial or commercial purposes. As the EBA said, the destruction of human embryos is "an integral and essential part of the industrial or commercial exploitation of the claimed invention" and thus violated the requirement that the use be for "industrial or commercial purposes" (r.23d(c)). It further held that such interpretation did not render r.23d(c) ultra vires as extending beyond Art.53(a).
• It was irrelevant whether after the date of application, the invention could be performed without the destruction of human embryos (i.e. by derivation from human embryonic cell lines). It said that any other conclusion would lead to legal uncertainty and risk being to the detriment of any third party who discovered a way of carrying out the invention (as it would effectively "resuscitate" the patent).

The EBA emphasised that its decision was not concerned with the patentability in general of invention relating to human stem cells but only where the making of such stem cells involved destruction of human embryos.

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.

Appeals

para 2- 173 In R1/08, the EBA had the opportunity to rule on the application of Art.112a. The petitioner complained that there had been a fundamental procedural defect in appeal proceedings from the Opposition Division where the TBA ruled that an auxiliary request was not inventive. THe petitioner complained that it had not been given an opportunity to respond to any allegations of lack of inventive step in the request and were very surprised when it was revoked. The EBA held that Art.112a was very limited in its application and was meant to be "an extraordinary legal remedy". It held that the no provision of the EPC required that the party must be provided with all foreseeable arguments for or against a request in advance and not to do so was not a fundamental violation.

Products that qualify for protection

Para 2-219 In Gilead Science Inc [2008] EWHC 1902, the High Court was asked to reconsider its decisions in Takeda (cited at footnote 909),wherein it had been decided that the mere fact that a  combination of two active ingredients infringed a patent did not mean that it was protected by a patent. The High Court said that such would be contrary to the purpose of the regulation but said that such arguments raised a serious issue whether Takeda was right. However, it did say that in its view, one should identify whether in effect all the active ingredients of the product for which a SPC is sought were protected by the patent. Thus, it held that if only was so protected, then it failed the Takeda test. However, it held that a particular claim did in fact cover the combination of both ingredients, which were both expressly disclosed in the patent specification. The lesson thus is to ensure that the patent expressly includes combination claims.