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SYSTEM FOR MANAGING A VEHICULAR MISSION OF A GOODS DELIVERY VEHICLE: T1806/20-3.5.01 (17 November 2023)

At the EPO, data relating to software-related inventions may, under certain conditions, be regarded as data of a technical character. This means that such data will be taken into account as a distinguishing feature in the examination of inventive step. Data may have a technical character if they are so-called “functional data”. A typical example of “functional data” is data intended to control a technical device. In the following decision T 1806/20, the appellant tried to present “cognitive data” as “functional data”. The appellant relied on the earlier decision T 1194/97, which identifies a type of test method that can be used to determine whether the data are “functional data”.

Object of the Invention

  • A parcel delivery system that seeks to prevent damage to water-sensitive parcels by avoiding delivery to rainy destinations.
  • Claim 1 differs from the closest prior art (CPA) inter alia by rescheduling of the delivery based on the parcels’ sensitivity to water and a rain forecast.

Appellant

  • The prevention of damage to physical objects was a fundamental technical problem that was addressed throughout various areas of technology.
  • The appellant did not dispute that delivering multiple parcels at different destinations and planing such delivery constituted a non-technical logistics scheme.
  • The rescheduling of the delivery based on the parcels’ sensitivity to water and the rain forecast do not form part of the non-technical logistic scheme.

Board

  • Contrary to the appellant’s view, the Board judges that the requirement to ensure that parcels do not get damaged by water forms part of the non-technical logistics scheme.
  • The Board is not convinced by the argument that information about a parcel’s water-sensitivity is functional technical data, because its loss would impair the technical operation of the system (cf. T 1194/97, reasons, point 3.3).
  • It is self-evident that if a piece, either technical or non-technical, of any invention is taken out, it would not work as designed.
  • In the Board’s view, what T 1194/97 is saying is rather that the loss of functional data would make the system inoperable at the technical level.
  • In contrast, if cognitive data is lost, the system would still work but possibly produce results that would be unintended for non-technical reasons.
  • Thus in T 1194/97, the loss of functional data prevented the system from generating any television picture, whereas the loss of cognitive data only resulted in a meaningless television picture resembling snow.
  • In the present case, the loss of water-sensitivity information would not cause the system to stop working; the vehicle would still be guided, and parcels would be delivered. However, it would result in leaving water‑sensitive parcels standing in the rain – an unintended operation comparable to producing a television picture that resembles snow. The reasons why these outcomes are unintended are non-technical. In T 1194/97, it was the cognitive meaninglessness of the television picture to a human viewer; in the present case, it is the prevention of rain damage to a parcel. Hence, judged by the consequence of its loss, the water-sensitivity data is equivalent to cognitive rather than functional data.

Conclusion

This decision deals with “functional data”. Such data is intended for controlling a technical device may be considered to have technical character because it has the potential to cause technical effects. In G1/19, reasons, point 94 the Enlarged Board of Appeal has generalized this as follow:

In the context of the problem-solution approach and the COMVIK approach, such potential technical effects may be considered if the data resulting from a claimed process is specifically adapted for the purposes of its intended technical use. In such cases:

  • either the technical effect that would result from the intended use of the data could be considered “implied” by the claim, or
  • the intended use of the data (i.e. the use in connection with a technical device) could be considered to extend across substantially the whole scope of the claimed data processing method.

Data is considered to be functional data when its loss would impair the technical operation of the system (cf. T 1194/97, reasons, point 3.3). This means, data is considered to be functional data, when the loss of the data would make the system inoperable at the technical level. In contrast, if cognitive data is lost, the system would still work but possibly produce results that would be unintended for non-technical reasons.

E.g. in T 1194/97, the loss of functional data prevented the system from generating any television picture, whereas the loss of cognitive data only resulted in a meaningless television picture resembling snow.

E.g. in T 1806/20, the loss of water-sensitivity information would not cause the system to stop working; the vehicle would still be guided, and parcels would be delivered. However, it would result in leaving water‑sensitive parcels standing in the rain – an unintended operation comparable to producing a television picture that resembles snow. The reasons why these outcomes are unintended are non-technical. In

T 1194/97, it was the cognitive meaninglessness of the television picture to a human viewer; in T 1806/20, it is the prevention of rain damage to a parcel. Hence, judged by the consequence of its loss, the water-sensitivity data is equivalent to cognitive rather than functional data.

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Computer-Implemented Inventions at the European Patent Office (Whitepaper)

The bar for patenting software is generally higher than for traditional technology. This is mainly due to the fact that “programs for computers” and “mathematical methods” are not considered to be inventions under a legal provision in the European Patent Convention (EPC). This is the intention of the legislator and a political decision. Nevertheless, it is possible to patent software. This whitepaper provides an insight into how software respectively computer-implemented inventions (CII) are dealt with at the European Patent Office (EPO). The information is mainly based on the decision G1/19 of the EPO’s Enlarged Board of Appeal issued 2021. This decision is an all-out attack on CII and provides a good basis for an inside view into the software patenting at the EPO.

You can download a PDF version of this whitepaper.

I. Provisions of the European Patent Office

The basic provisions for computer implemented inventions and all other inventions are set out in Articles 52 and 56 EPC (EPC = European Patent Convention). An issue for computer implemented inventions is that according to Articles 52(2) and Art. 52(3) EPC “programs for computers” as such are not regarded as inventions. In the following chapter, these Articles are examined in more detail, with the information is based on the Enlarged Board of Appeal decision G1/19, points 24 to 27.

The first basic article of the EPC re patentability

Article 52(1) EPC:
European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

“All fields of technology” and “Invention” of Art. 52(1) EPC

  • The reference to “all fields of technology” was introduced in the course of the EPC’s revision (EPC 2000) to bring Article 52 EPC into line with Article 27 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The amendment makes clear that patent protection is reserved for creations in the technical field (see OJ EPO Special edition 4/2007, 48).
  • The claimed subject-matter must have a “technical character”, or, more precisely, involve a “technical teaching”, i.e. an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means (Please see ANNEX I: Basic Proposal for the Revision of the EPC, document MR/2/00, page 43, no. 4). It is on this understanding of the term “invention” that the patent granting practice of the EPO and the jurisprudence of the Boards of Appeal are based. In other words, the “technical character” is an implicit requisite of an “invention” within the meaning of Article 52(1) EPC.
  • The term “all fields of technology” expresses the intent of TRIPS not to exclude from patentability any technical inventions, whatever field of technology they belong to, and therefore, in particular, not to exclude programs for computers as mentioned in and excluded under Article 52(2)(c) EPC (T 1173/97, OJ EPO 1999, 609, Reasons, point 2.3).
  • The Basic Proposal for the Revision of the EPC explicitly states that the above considerations on the technical character of inventions apply to the assessment of computer programs.

Non-exhaustive list of “non-inventions”

Article 52(2) EPC contains a non-exhaustive list of “non-inventions”, i.e. subject-matter which is not to be regarded as an invention within the meaning of Article 52(1) EPC (Please see ANNEX II: T 154/04, DUNS LICENSING ASSOCIATES, OJ EPO 2008, 46, Reasons, points 6, 8).

Article 52 EPC:
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(a)  discoveries, scientific theories and mathematical methods;
(b)  aesthetic creations;
(c)   schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
presentations of information.

The list includes “schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers” (Article 52(2)(c) EPC). Even though the “non-inventions” in Article 52(2)(c) EPC cover a broad range of exclusions, they have in common that they refer to activities which do not aim at any direct technical result but are rather of an abstract and intellectual character (T 22/85, OJ EPO 1990, 12, Reasons, point 2).

In other words, based on this list of “non-inventions”, additional conditions have to be fulfilled for patenting software-related inventions compared to inventions in, for example, electrical engineering or mechanical engineering.

Course of EPC 2000 deletion of programs for computers was considered

The negotiations leading up to the EPC 2000 are recorded in travaux préparatoires (= official record of the negotiation). The document „Basic Proposal for the Revision of the EPC (MR/2/00)“ of the travaux préparatoires forms the most important reference document. The document Basic Proposal for the Revision of the EPC (MR/2/00) was drawn up by the Administrative Council and addresses the Revision Conference for consideration. The document was issued on October 13, 2000. MR/2/00 is hence – as part of a subsequent agreement between the contracting states concerning the EPC – a valid instrument for construing the Convention according to the traditional rules of interpretation (see decision G 5/83 (supra), Reasons No. 5, rule (4), and the corresponding Article 31 of the Vienna Convention on the Law of Treaties of 1969; T 154/04, Reasons, point 8).

In the year 2007 an adapted version of the European Patent Convention (EPC) entered into force. This new convention is called EPC 2000. The EPC 2000 comprises inter alia amendments regarding Art. 52 EPC whereby this article, as you know, plays a significant role in computer-implemented inventions.

The „Basic Proposal for the Revision of the EPC (MR/2/00)“ was issued before the final conference of the contracting states to revise the 1973 EPC. In the MR/2/00 the Committee on Patent Law and the Administrative Council has advocated the deletion of programs for computers from Article 52(2)(c) EPC!

Nevertheless, in the final conference of the contracting states to revise the 1973 EPC it was decided that Art. 52(1) EPC has to be amended (introducing the term “all fields of technology”) but Art. 52(2) EPC (list of non-inventions, inter alia “programs for computers”) remains unchanged. The main argument for not deleting the term was that the possible regulation of patent protection for computer programs by EU law (rejected on 6 July 2005 by the European Parliament) should not be anticipated. At the end, the regulation of patent protection for computer programs was rejected on 6 July 2005 by the European Parliament.

Subject-matter or activities “as such”

Article 52(3) EPC limits the exclusion from patentability of the subject-matter and activities referred to in Article 52(2) EPC to “such subject-matter or activities as such”.

Article 52 EPC:
(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

This limitation is understood as a bar to a broad interpretation of the “non-inventions” listed in Article 52(2) EPC (G 2/12, OJ EPO 2016, A27, Reasons, point VII.2(3)(b), penultimate paragraph, referring to T 154/04, Reasons, point 6).

As soon as in a computer implemented inventions a technical feature is claimed, then it is no longer regarded as a non-invention “as such”. This is called the “any hardware approach”.

In other words, Art. 52(3) EPC provides the possibility to apply for a patent for software-related inventions.

Inventive step

Article 56 EPC gives a negative definition of the “inventive step” required under Article 52(1) EPC, by setting out that an invention shall be considered as involving an inventive step “if, having regard to the state of the art, it is not obvious to a person skilled in the art”. In order to assess inventive step in an objective and predictable manner, the so-called “problem-solution approach” was developed, consisting of the following stages:

(i) determining the “closest prior art”;

(ii) assessing the technical results (or effects) achieved by the claimed invention when compared with the “closest prior art” determined;

(iii) defining the technical problem to be solved, the object of the invention being to achieve said results; and

(iv) considering whether or not the claimed solution, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person (see, for example, Case Law of the Boards of Appeal, 9th ed. 2019, I.D.2).

II. Any Hardware Approach

According to Article 52(2) and (3) EPC, “programs for computers as such” are not an invention. To ensure that the door to a patent for a computer-implemented invention is not closed, there is the “any hardware approach”, which is discussed in this chapter. The information is based on the Enlarged Board of Appeal decision G1/19, points 28 to 29.

Avoiding exclusion under Article 52 EPC

  • In general, a method involving technical means is an invention within the meaning of Article 52(1) EPC.
  • This assessment is made without reference to the prior art (T 258/03, Hitachi, OJ EPO 2004, 575, Headnote I and Reasons, points 4.1 to 4.7; T 388/04, OJ EPO 2007, 16, Headnote I; T 1082/13, Reasons, point 1.1).
  • This approach has sometimes been described as the “any technical means” or “any hardware” approach (see reference in G 3/08, OJ EPO 2011, 10, Reasons, point 10.6).

According to the established case law, a claim directed to a computer-implemented invention avoids exclusion under Article 52 EPC merely by referring to the use of a computer, a computer-readable storage medium or other technical means (T 697/17, Reasons, point 3.4).

Example:

Claim 1: “A computer-implemented method comprising steps A, B, […]” 

Implicitly claimed technical means

A technical feature may be described at a high level of abstraction or functionally, and it may be implicitly evident that a certain claimed method is computer-implemented and hence technical (T 697/17, Reasons, point 3.3 and 3.5).

Example (T 697/17, Reasons, point 3.5):

Claim 1: “Method of updating values in a complex structured type column […] in a relational database system including steps performed by modules of a database system.”

On the other hand, the mere possibility of making use of an unspecified computer for performing a claimed method is not enough to establish the use of technical means for the purposes of Article 52 EPC (T 388/04, Reasons, point 3).

Conclusion

In practice, the feature “computer-implemented” in a claim is sufficient to involve a technical means. Therefore, such a subject matter is considered to be an invention according to Article 52(1) EPC. In other words, the use of the feature “computer-implemented” explicitly or at least implicitly in a computer implemented invention claim results in a computer implemented invention being considered an invention under Art. 52(1) EPC and therefore technical“.

III. COMVIK Approach

A computer implemented invention claim usually has at least one technical feature (to be considered an “invention” under Article 52(1) EPC) and non-technical features from the list of non-inventions under Article 52(2) EPC, e.g. features relating to “programs for computers”. This means that there is usually a mixture of technical and non-technical features in a computer implemented invention claim. The COMVIK approach – discussed in the following chapter – is now used to determine which features in such a computer implemented invention claim can contribute to inventive step. This chapter is based on the Enlarged Board of Appeal decision G1/19, points 30 to 34.

Summarized jurisprudence of the boards of appeal regarding subject-matter excluded from patentability

Decision T 154/04 – please see ANNEX II – summarised the jurisprudence of the boards of appeal on the application of Articles 52, 54 and 56 EPC in the context of subject-matter and activities excluded from patentability under Article 52(2) EPC in the following principles (T 154/04, Estimating sales activity/ DUNS LICENSING ASSOCIATES, Reasons, point 5):

(A) Article 52(1) EPC sets out four requirements to be fulfilled by a patentable invention: there must be an invention, and if there is an invention, it must satisfy the requirements of novelty, inventive step, and industrial applicability.

(B) Having technical character is an implicit requisite of an “invention” within the meaning of Article 52(1) EPC (requirement of “technicality”).

(C) Article 52(2) EPC does not exclude from patentability any subject matter or activity having technical character, even if it is related to the items listed in this provision since these items are only excluded “as such” (Article 52(3) EPC).

(D) The four requirements – invention, novelty, inventive step, and susceptibility of industrial application – are essentially separate and independent criteria of patentability, which may give rise to concurrent objections. Novelty, in particular, is not a requisite of an invention within the meaning of Article 52(1) EPC, but a separate requirement of patentability.

(E) For examining patentability of an invention in respect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention.

(F) It is legitimate to have a mix of technical and “non-technical” features appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features “as such”, do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step.

(G) For the purpose of the problem-and-solution approach, the problem must be a technical problem, which the skilled person in the particular technical field might be asked to solve at the relevant priority date. The technical problem may be formulated using an aim to be achieved in a non-technical field, and which is thus not part of the technical contribution provided by the invention to the prior art. This may be done in particular to define a constraint that has to be met (even if the aim stems from an a posteriori knowledge of the invention).

Different types of features

According to principle (F) above it is distinguished between:

  • Technical features.
  • Non-technical features: Features which, on their own, would be considered “non-inventions” under Article 52(2) EPC (whether such features contribute to the technical character of the invention has to be assessed in the context of the invention as a whole). This definition is from G1/19.
  • Non-technical features “as such”: (In addition to the definition re non-technical features mentioned before) they do not interact with the technical subject matter of the claim for solving a technical problem. And/or, they do not provide a technical contribution to the prior art, see T 154/04 above.

Principles (F) and (G) above were established in the COMVIK-decision

The Headnote of the COMVIK-decision (T 641/00) reads as follows:

  1. An invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features, which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step.
  2. Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met.

In other words, according to principle 1 all features of the claim (both technical and non-technical features) which contribute to the technical character of the invention are considered for inventive step.

Further explanations to principle 2 are given in the discussion of the decision T 154/04, see ANNEX II.

The principles set out in the principles 1 and 2 above for dealing with non-technical features in the assessment of inventive step for computer-implemented inventions will be referred to in the following as the “COMVIK approach”.

What is the technical character?

Above, the term technical character has appeared in T 154/04 and in the Basic Proposal for the Revision of the EPC. In summary, the following definitions are used for the term technical character in G1/19:

  • an implicit requisite of an “invention” within the meaning of Article 52(1) EPC,
  • a requirement of “technicality”,
  • a “technical teaching”, i.e. an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means.

More about features

Features which can be considered to be technical per se do not necessarily contribute to the technical solution of a technical problem. An invention may have

(i) technical features which contribute,

(ii) technical features which do not contribute,

(iii) non-technical features which contribute and

(iv) non-technical features which do not contribute (non-technical features “as such”)

to the technical solution of a technical problem and thereby potentially to the presence or not of an inventive step.

While (i) and (iv) are self-evident, features according to (iii) have been established by the case law described above (principle (F): non-technical features interacting with the technical subject matter of the claim for solving a technical problem).

Case (ii) occurs if features that per se qualify as technical cannot contribute to inventive activity because they have no technical function within the context of the claimed invention, see e.g. below T 619/02 (OJ EPO 2007, 63, Reasons, points 2.2, 2.6.2) concerning perfumes.

Example:
The T619/02 is in regard to a claimed odour selection method in which the resulting odour has not been properly processed or transformed, but merely selected from among a series of existent odours. These features are not excluded by Art. 52(2) and (3) EPC. Nevertheless, the claimed method relies on no more than the perceptional assessment of odours and stimuli for the purpose of evaluating their aesthetic evocation attributes. Since beyond a purely perceptual evocative inducing effect no technical information, i.e. no technical quality or technical significance can be attributed to the selected odour, the result of the claimed method constitutes a non-technical selection. Accordingly, no technical effect is achieved by the claimed method.

In other words, in the mentioned example, the claim features seem at first glance to be excluded according to the non-invention list of Art. 52(2) EPC. However, in the view of the Board, none of the claimed features in the mentioned example is mentioned in this list. Therefore, the features are considered to be technical features. Nevertheless, the technical features have no technical effect and therefore are technical features according to (ii) above which are not considered regarding inventive step.

Even before the COMVIK approach was established, technically non-functional modifications (even if they could per se be considered technical) could be considered irrelevant in the assessment of inventive step (see T 72/95, Reasons, point 5.4).

Why was the COMVIK approach developed?

The COMVIK approach was developed as a means of applying the problem-solution approach to computer-implemented inventions that encompass non-technical features (see principle (F) mentioned above). Subsequent cases noted that the COMVIK approach does not contradict the problem-solution approach; rather, it is a special application of the problem-solution approach to inventions that contain a mix of technical and non-technical features (T 1503/12, Reasons, point 3.3).

Illustration of the COMVIK approach

A summary of the COMVIK approach is illustrated in the figure below:

summary of the COMVIK approach
  • The blue block (1) in the figure shows a CII claim having technical features and non-technical features. Technical features are e.g. the feature “computer implemented” (please see chapter II “any hardware approach”) and/or “functional data” (please see chapter IV “Potential technical effects”) and/or other technical features.
  • Non-technical features are disclosed in the list of Art. 52(2) EPC, marked with (2), e.g. features regarding “programs for computers”.
  • According to the COMVIK approach, non-technical features can contribute to the technical character. For this, they have to interact with the technical subject matter of the claim (a technical subject-matter may consist, at least in part, of non-claimed technical features, please see Chapters VIII and IX). This is represented by the two arrows (3) which meet in the conical flask (in which a chemical reaction takes place).
  • These non-technical features and the technical features then give technical teaching considered for inventive step, see mark (4) in the figure.
  • If the non-technical features do not interact with the technical subject matter, then they are considered to be “non-technical features as such” and they are not taken into account in the inventive step.

Example regarding the application of the COMVIK approach

The following example for the COMVIK approach is based on the “Guidelines for Examination of the EPO” G-VII-5.4.2.5.

Claim 1: 

A method for coating a workpiece using a thermal spray coating process, the method comprising:

(a) applying, using a spray jet, a material to the workpiece by thermal spray coating; 

(b) monitoring the thermal spray coating process in real time by detecting properties of particles in the spray jet and supplying the properties as actual values; 

(c) comparing the actual values with target values; 

and, in the event that the actual values deviate from the target values,

(d) adjusting process parameters for the thermal spray coating process automatically by a controller on the basis of a neural network, said controller being a neuro-fuzzy controller which combines a neural-network and fuzzy logic rules and thereby maps statistical relationships between input variables and output variables of the neuro-fuzzy controller. 

Background: The invention relates to the control of an industrial process, i.e. thermal spray coating of a workpiece. The material used for the coating is injected with the help of a carrier gas into the high-temperature jet, where it is accelerated and/or molten. The properties of the resulting coatings are subject to great fluctuations, even with seemingly constant parameters of the coating operation. The spray jet is monitored visually with a CCD camera. The image picked up by the camera is sent to an image processing system, from which the properties of particles in the spray jet (e.g. velocity, temperature, size, etc) can be derived. A neuro-fuzzy controller is a mathematical algorithm which combines a neural network with fuzzy-logic rules.

Application of the steps of the problem-solution approach according to COMVIK:

Step (i): The method is directed at thermal spray coating, i.e. a specific technical process, comprising various concrete technical features, e.g. particles, workpiece, a spray coating device (implicit).

Step (ii): Document D1 discloses a method for the control of a thermal spray coating process by applying material to a workpiece using a spray jet, detecting deviations in the properties of the particles in said spray jet and adjusting process parameters automatically on the basis of the outcome of a neural network analysis. This document represents the closest prior art.

Step (iii): The difference between the method of claim 1 and D1 concerns the use of a neuro-fuzzy controller combining a neural network and fuzzy logic rules as specified in the second part of step (d).

Computational models and algorithms related to artificial intelligence are, on their own, of an abstract mathematical nature. The feature of combining results of a neural network analysis and fuzzy logic defines a mathematical method when taken on its own. However, together with the feature of adjusting the process parameters, it contributes to the control of the coating process. Hence, the output of the mathematical method is directly used in the control of a specific technical process.

Control of a specific technical process is a technical application. In conclusion, the differentiating feature contributes to producing a technical effect serving a technical purpose and thereby contributes to the technical character of the invention. Therefore, it is taken into account in the assessment of inventive step.

Defining the object of the invention using aim of non-technical features as such (COMVIK decision Headnote No. 2)

In the previous chapters we discussed Headnote 1 of COMVIK T 641/00 regarding mixed inventions having technical and non-technical features. Below you will find information about Headnote 2 (which you will find above) of COMVIK T 641/00. Headnote 2 deals with the formulation of the subject-matter of mixed-type inventions. Below you will find explanations based on decision T 154/04 Estimation of sales activity/DUNS LICENSING ASSOCIATES, reasons point 16:

For the purpose of the problem-and-solution approach developed as a test for whether an invention meets the requirement of inventive step, the problem must be a technical problem (see the COMVIK decision T 641/00 (supra), Reasons Nos. 5 ff.). The definition of the technical problem, however, is difficult if the actual novel and creative concept making up the core of the claimed invention resides in the realm outside any technological field, as it is frequently the case with computer-implemented inventions. Defining the problem without referring to this non-technical part of the invention, if at all possible, will generally result either in an unintelligible vestigial definition, or in an contrived statement that does not adequately reflect the real technical contribution provided to the prior art.

The Board, therefore, allowed in COMVIK an aim to be achieved in a non-technical field to appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that is to be met (Reasons No. 7). Such a formulation has the additional, desirable effect that the non-technical aspects of the claimed invention, which generally relate to nonpatentable desiderata, ideas and concepts and belong to the phase preceding any invention, are automatically cut out of the assessment of inventive step and cannot be mistaken for technical features positively contributing to inventive step. Since only technical features and aspects of the claimed invention should be taken into account in assessing inventive step, i.e. the innovation must be on the technical side, not in a non-patentable field (see also decisions T 531/03 – Discount certificates/CATALINA (not published in OJ EPO) Reasons Nos. 2 ff., and T 619/02 (supra), Reasons No. 4.2.2), it is irrelevant whether such a non-technical aim was known before the priority date of the application, or not.

Example re defining the object of the invention using aim of non-technical features as such (COMVIK decision Headnote No. 2)

The following example for the COMVIK approach is based on the “Guidelines for Examination of the EPO” G-VII-5.4.2.3.

Claim 1:

A system for the transmission of a broadcast media channel to a remote client over a data connection, said system including: 

(a) means for storing an identifier of the remote client and an indication of an available data rate of the data connection to the remote client, said available data rate being lower than the maximum data rate for the data connection to the remote client;

(b) means for determining a rate at which data is to be transmitted based on the indication of the available data rate of the data connection; and

(c) means for transmitting data at the determined rate to said remote client.

Claim 1 - A system for the transmission of a broadcast media channel to a remote client over a data connection

Document D1, which discloses in the figure below a system for broadcasting video over an xDSL connection to the set-top boxes of subscribers, is selected as the closest prior art. The system comprises a database storing identifiers of subscribers’ computers and, in association with them, an indication of the maximum data rate for the data connection to each subscriber’s computer. The system further comprises means for transmitting the video to a subscriber’s computer at the maximum data rate stored for said computer.

Document D1, which discloses a system for broadcasting video over an xDSL connection to the set-top boxes of subscribers

The differences between the subject-matter of claim 1 and D1 are:

(1) Storing an indication of an available data rate of the data connection to the remote client, said available data rate being lower than the maximum data rate for the data connection to the remote client. 

differences between the subject-matter of claim 1 and D1

(2) Using said available data rate to determine the rate at which the data is transmitted to the remote client (instead of transmitting the data at the maximum data rate stored for said remote client as in D1). 

The purpose served by using an “available data rate” which is lower than a maximum data rate for the data connection to the remote client is not apparent from the claim. Therefore, the relevant disclosure in the description is taken into account. In the description, it is explained that a pricing model is provided which allows a customer to choose from several service levels, each service level corresponding to an available data-rate option having a different price. A user may select an available data rate lower than the maximum data rate possible with the connection in order to pay less. Hence, using an available data rate which is lower than the maximum data rate for the connection to the remote client addresses the aim of allowing a customer to choose a data-rate service level according to that pricing model. This is not a technical aim, but an aim of a financial, administrative or commercial nature and thus falls under the exclusion of schemes, rules and methods for doing business in Art. 52(2)(c). It may thus be included in the formulation of the objective technical problem as a constraint to be met.

The features of storing the available data rate and of using it to determine the rate at which the data is transmitted have the technical effect of implementing this non-technical aim.

The objective technical problem is therefore formulated as how to implement in the system of D1 a pricing model which allows the customer to choose a data-rate service level.

IV.  Two-hurdle Approach

In order to be patentable, an invention must pass the eligibility test under Article 52 EPC (i.e. it must not be one of the “non-inventions” referred to therein) and must also satisfy the other criteria listed in that Article (novelty, inventive step, etc.). For computer-implemented inventions, the twofold test for patent eligibility and for inventive step (using the COMVIK criteria) is often referred to as the “two-hurdle approach”, which will be discussed below on the basis of decision G1/19 of the Enlarged Board of Appeal, points 37 to 39.

The first hurdle is easier to overcome

It may be that a shift has taken place in the relative level of each of these two hurdles in the sense that it has become easier to clear the eligibility hurdle of Article 52 EPC and more difficult to pass the inventive step hurdle of Article 56 EPC. As result of this shift, it could be said that there is now in effect an additional intermediate step to assess the “eligibility of the feature to contribute to inventive step”.

The two-hurdle approach for computer-implemented inventions actually entails three steps:

(i) assessing the invention’s eligibility under Article 52 EPC,

(ii) establishing whether a feature contributes to the technical character of the invention as an intermediate step,

(iii) assessing whether the invention is based on an inventive step vis-à-vis the closest prior art.

Filter for features contributing to the technical character

This additional intermediate step serves as a filter for features contributing to a technical solution of a technical problem in view of the closest prior art. Only those distinguishing features can contribute to inventive step, see figure below.

Filter for features contributing to the technical character

V.  What is technical?

The German Federal Court of Justice defined the term “technical teaching” in the 1960s, with which the Court agrees in G1/19. The technical teaching is implied in the term “invention”. The following chapter gives a brief overview of the above-mentioned definition and builds a bridge to data regarding technicality, which is an essential part of computer-implemented inventions. This information is based on the decision of the Enlarged Board of Appeal G1/19, points 75 to 77.

Red dove decision

The EPC, like national patent laws, does not define “invention” or “technical”. However, from Article 52 EPC, it can be concluded that only “technical” inventions are patentable (“in all fields of technology”, see also G 2/07, OJ EPO 2012, 130, Reasons, point 6.4.2.1).

In G 2/07, which concerned a referral in the field of biotechnology, the Enlarged Board cited the definition of an invention given by the German Federal Court of Justice (“Bundesgerichtshof”) in the latter’s “Rote Taube” decision of 27 March 1969 (Case X ZB 15/67). According to this decision, the term “invention” implied a technical teaching, characterised as

a teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result” (“eine Lehre zum planmässigen Handeln unter Einsatz beherrschbarer Naturkräfte zur Erreichung eines kausal übersehbaren Erfolgs”),

see the German original in GRUR 1969, 672, point 3, and the English translation published in 1 IIC (1970), 136).

EBoA refrains from putting forward a definition for “technical”

In G 2/07, the Enlarged Board held that this standard “still holds good today and can be said to be in conformity with the concept of ‘invention’ within the meaning of the EPC” (G 2/07, Reasons, point 6.4.2.1, fourth paragraph). The “Rote Taube” decision predates the non-exhaustive list of exclusions from patentability in Article 52(2) EPC. However, the Enlarged Board, when referring to “Rote Taube”, must have considered that the negative definition resulting from the list of exclusions in the EPC did not contradict the findings in “Rote Taube”. In accordance with its earlier case law and with the approach chosen by the legislator, the Enlarged Board in G1/19 refrains from putting forward a definition for “technical”.

Cognitive content of data

It is generally recognised in the case law of the boards of appeal that the cognitive content of data is not technical in nature (see e.g. T 1000/09, Reasons, point 7). The idea of treating information as part of the concept of “forces of nature” did not take root (see Zech in “Methodenfragen des Patentrechts” (Mohr Siebeck, Tübingen 2018, 137, 140)). The fact that the list of “non-inventions” in Article 52(2) EPC was discussed but not changed in the course of the EPC 2000 revision project supports the position that the term “technical” must remain open, not least in anticipation of potential new developments.

VI.  Technicality of Computer-Implemented Inventions using the two-hurdle Approach

This chapter examines the two-hurdle approach in more detail, wherein this information is based on the Enlarged Board of Appeal decision G1/19, points 78 to 84.

First and second hurdle

Patent eligibility, the first hurdle, is to be assessed under Article 52 EPC without considering the prior art, i.e. without regard to whether computers existed at the priority date of the invention. The use of a computer in the claimed subject-matter therefore makes it eligible under Article 52 EPC.

For the second hurdle, the prior art is to be considered. Inventive step is based on the difference between the prior art and the claimed subject-matter, please see figure below.


The requirement that the features supporting inventive step contribute to a technical solution for a technical problem means that the invention, understood as a teaching based on existing prior art, has to be a “technical invention”. The use of a general-purpose computer always constitutes prior art in this context, please see figure above.

Hence, the invention to be assessed under this provision needs to be “technical” beyond the use of a general-purpose computer. For this assessment, the definition of a technical invention in Article 52 EPC, in particular the list of “non-inventions” in Article 52(2) EPC, can be useful for determining whether specific features contribute to inventive step (see G 3/08, Reasons, point 10.13.1).

Technical features per se may not contribute to inventive step

In general terms, features that can be considered technical per se may still not contribute to inventive step if they do not contribute to the solution of a technical problem, please see also the example in chapter III. “COMVIK approach”. In line with this principle, a technical step within a computer-implemented process may or may not contribute to the problem solved by the invention.

Example:
In case T 1670/07, the claim was directed to a “method of facilitating shopping with a mobile wireless communications device to obtain a plurality of purchased goods (…) from a group of vendors located at a shopping location”. The board found that the intrinsic technical nature of a computer-based implementation was not enough to make the whole process technical since the “selection of vendors” presented to the user in the course of the claimed method was not a technical effect, and the transmission of the selection no more than the dissemination of information (Reasons, point 9).

While Article 52 EPC is taken as the framework for determining whether there is a technical invention, the COMVIK approach applies the same criteria in the examinations whether the claimed subject-matter fulfils the provisions of Article 52 EPC and whether any distinguishing features may be considered for the analysis under Article 56 EPC. If, for the inventive step analysis, only those differences from the prior art are to be considered which contribute to solving a technical problem, then this requirement serves as a filter through which the features distinguishing an invention from the prior art must first pass, please see figure below.

Technical features per se may not contribute to inventive step

Specific effect has to be achieved over the whole scope of the claim

It is a general principle that the question whether a feature contributes to the technical character of the claimed subject-matter is to be assessed in view of the whole scope of the claim.

Using the problem-solution approach, the analysis under Article 56 EPC may reveal that a specific problem is not solved (i.e. a specific effect is not achieved) over the whole scope of the claim. In such cases, the aforementioned specific problem may not be considered as the basis for the inventive step analysis unless the claim is limited in such a way that substantially all embodiments encompassed by it show the desired effect (see, for example, T 939/92, OJ EPO 1996, 309, Reasons, point 2.6, where the board was not satisfied that substantially all claimed chemical compounds were likely to be herbicidally active). Such limitation is typically achieved by narrowing one or more features (e.g. a temperature or concentration range within a chemical process) and/or by adding one or more limiting features. The above principle, as it was elaborated in the often-cited decision T 939/92, just specifies the further general principle that the entire or substantially the entire claimed subject-matter must fulfil the patentability requirements.

Likewise, a computer-implemented invention may have technical character and a feature may contribute to the technical character of the invention with respect to only parts of the claimed subject-matter.

Example:
An increased speed for an inventive data transmission method (constituting the technical effect) can only be achieved if the size of transmitted data packets exceeds a certain minimum size. In such a case, it may be necessary to limit the size of the data packets accordingly in the corresponding claim feature. Otherwise, there will be possible embodiments falling under the claimed subject matter which achive the effect of increased speed (embodiments having the data packets exceeding the certain minimum size) and possible embodiments falling under the claimed subject matter which do not achieve the effect of an increased speed (embodiments in which the data packets do not exceed the specified minimum size).

The limitation of the claimed subject-matter to a scope for which a technical effect may be acknowledged can be achieved by adding further limiting features, such as steps establishing an interaction with external physical reality.

Claimed invention has to be technical over the whole scope of the claim

Following the COMVIK approach, a feature is only considered for inventive step if and to the extent that it contributes to the technical character of the claimed subject-matter. A pre-requisite for meeting the requirement that the claimed invention is inventive over the whole scope of the claim is that it is also technical over the whole scope. Consequently, the requirement is not met if the claimed feature in question contributes to the technical character only for certain specific embodiments of the claimed invention, see example above.

VII.  Aspects of Technicality of Computer-Implemented Inventions

In chapter “III COMVIK approach” we saw that there must be a technical interaction between non-technical features and the technical subject matter of the claim for the non-technical features to be considered for inventive step. Now we will discuss what kind of technical interactions are possible in computer-implemented inventions, basing this chapter on the Enlarged Board of Appeal decision G1/19, points 85 to 86.

Technical interactions in computer implemented inventions

The below figure shows – in a simplified, non-exhaustive form – how and when “technical effects” or “technical interactions” may occur in the context of a computer-implemented process.

The figure shows – in a simplified, non-exhaustive form – how and when “technical effects” or “technical interactions” may occur in the context of a computer-implemented process.

The arrows in the figure above represent interactions that are different from abstract data input, data output or internal data processing or transfer. This means, the shown arrows do not represent abstract data.

Features that may contribute to inventive step

Technical input may consist of a measurement; technical output may exist as a control signal used for controlling a machine. Both technical input and technical output are typically achieved through direct links with physical reality. Adaptations to the computer or its operation, which result in technical effects (e.g. better use of storage capacity or bandwidth), are also examples of features that may contribute to inventive step. You can find a a list of examples and references to the relevant board decisions in ANNEX III: T 697/17, Reasons, point 5.2.5.

In sum, technical effects can occur within the computer-implemented process (e.g. by specific adaptations of the computer or of data transfer or storage mechanisms) and at the input and output of this process. Input and output may occur not only at the beginning and the end of a computer-implemented process but also during its execution (e.g. by receiving periodic measurement data and/or continuously sending control signals to a technical system).

Certain features can be technical or non-technical per se

It is self-evident that the input and output are always nothing other than data, if only the data processing within the computer is considered, see figure below.

It is self-evident that the input and output are always nothing other than data, if only the data processing within the computer is considered.

Computer-implemented processes, however, often include featureswhich could be technical or non-technical per se – that reflect the interaction of the computer with the external world, see figure below.

it is not possible to exhaustively describe (or represent in graphical form) every type of feature of a computer-implemented invention that may contribute to the invention’s technical character.

As explained above, it is not possible to exhaustively describe (or represent in graphical form) every type of feature of a computer-implemented invention that may contribute to the invention’s technical character.

VIII.  Direct link to physical reality

A direct link between the claimed subject-matter and (external) physical reality is not necessary in every case, as will be shown below. This chapter is based on the Enlarged Board of Appeal decision G1/19, points 87 to 88.

Direct link to physical reality

The decision T 0489/14 (Reasons, point 31), starting from G 3/08, discussed whether a claimed feature must cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim. In G 3/08, this question was found to be inadmissible pursuant to Article 112(1)(b) EPC because it could not be established that two boards of appeal had given differing decisions on this issue. Quoting decisions beyond those considered in G 3/08, the board in T 0489/14 identified cases apparently requiring a technical effect directly linked to physical reality, but also others which suggested that a potential technical effect, i.e. an effect achieved only in combination with non-claimed features, was taken into account (Reasons, points 36 and 37).

Following existing case law and taking into account the relevant legal provisions, the Enlarged Board in G1/19 does not see a need to require a direct link with (external) physical reality in every case:

  • On the one hand, technical contributions may also be established by features within the computer system used.
  • On the other hand, there are many examples in which potential technical effects – which may be distinguished from direct technical effects on physical reality – have been considered in the course of the technicality / inventive step analysis.

A direct link with physical reality is usually sufficient regarding technicality

While a direct link with physical reality, based on features that per se are technical and/or non-technical, is in most cases sufficient to establish technicality, it cannot be a necessary condition, if only because the notion of technicality needs to remain open.

Background: “Direct link” means that features of the physical reality are claimed which cause the technical effect..

IX.  Potential Technical Effects

The previous chapter VII “Aspects of technicality of computer-implemented inventions” considered possible interactions between non-technical features and technical features in computer implemented inventions. This chapter discusses, inter alia, possible output interactions and interactions occurring within the computer. The question of whether data based on them can have a technical character and therefore be considered for inventive step is clarified. This information is based on the EBoA decision G1/19, points 89 to 96.

Interactions in computer implemented inventions

The figure below illustrates that this chapter deals mainly with interactions/ technical effects regarding technical output and adaptations to the computer or its operation (following the figure in chapter VII regarding the interactions).

interactions/ technical effects regarding technical output and adaptations to the computer or its operation

Such interactions/technical effects play a significant role in inventive step, see also chapter III COMVIK approach.

Potential effects of a computer program

Some of the amicus curiae briefs in G1/19 cited decision T 1173/97 – please see ANNEX IV – in support of the argument that it is sufficient for a computer-implemented invention to have the potential to produce a technical effect. That decision acknowledged that a computer program product may have the potential to cause a predetermined further technical effect, i.e. a technical effect going beyond the technical effects within the computer that necessarily occur when a program is run on a computer (Reasons, points 6 and 7). The claims underlying this decision included claims to a “computer program product directly loadable into the internal memory of a digital computer” and to a “computer program product stored on a computer usable medium”. The only question to be decided was whether these claims were excluded from patentability under Article 52(2) and (3) EPC (Reasons, point 9.1). In that context the board found that, since any (technical or non-technical) effect of a computer program can only be achieved when the program is run on a computer, a program only possesses the “potential” to produce any effect (Reasons, point 9.4). Nonetheless, the board found that “[a] computer program product which (implicitly) comprises all the features of a patentable method” is “in principle considered as not being excluded from patentability under Article 52(2) and (3) EPC” (Reasons, point 9.6).

Potential effects of a computer program

Software is treated as software running on a computer

The acknowledgment of a “potential” to produce an effect in T 1173/97 meant that the effect of a computer program when run on a computer had to be considered in the patentability analysis, or, in other words, that the condition “when run on a computer” was implied in the claim to a computer program product. Based on this conclusion, the case was remitted to the department of first instance for further prosecution, “in particular for examination of whether the wording of the present claims avoids exclusion from patentability under Article 52(2) and (3) EPC” (point 2 of the order).

Software is treated as software running on a computer

The T 1173/97 did not address the question whether the claimed invention had technical character, but it made clear that the physical modifications deriving from the execution of the instructions given by the program could not per se constitute the technical character of the invention (Reasons, point 6.6).

Potential further technical effect

The principle developed in T 1173/97 that software (which in itself may only have “potential effects”) is treated as software running on a computer is still applied, while the further analysis (i.e. whether the software causes further technical effects) is now carried out according to the COMVIK approach.

When run on a computer, the combination of the claimed features must establish a technical invention. In the COMVIK analysis, the features have to be assessed as to their contribution to the technical character of the invention.

Decision T 1173/97 did distinguish between the effects produced by every computer program when run on a computer and the “further technical effect” possibly resulting from the running of the program on the computer (Reasons, point 9.4).

Potential further technical effect

Of course, such “further technical effect” too may only be achieved when the program is running on the computer, i.e. the program may have the potential to cause such further technical effects which thus could be referred to as “potential further technical effects”.

Background: In the case of a genuine computer program claim, the physical changes occurring in the hardware when the program instructions are executed cannot per se establish technical character. This is because technical character cannot be derived solely from the features common to all computer programs. Otherwise, the prohibition of patenting would become completely meaningless. The technicality of the subject matter of a genuine computer program claim thus presupposes that the underlying teaching goes beyond the normal physical interaction of program and computer, see T 1173/97.

“Potential” technical effects always treated as “real” technical effects?

However, T 1173/97 did not establish whether the claimed computer program was related to any further technical effect but only made clear that a computer program product is not inevitably excluded from patentability (Reasons, point 12.2). In particular, the decision does not imply that, once the software is running on a computer, “potential” technical effects can always be treated as “real” technical effects for the purposes of the analysis according to the COMVIK approach.

This means, the T 1173/97 does not teach that potential further technical effects are considered regarding the COMVIK approach. The decision left this open.

Potential technical effect is an effect achieved in combination with non-claimed features

The decision T 0489/14 – referring decision of G1/19 – cites other decisions which have suggested “that a potential technical effect, i.e. an effect achieved only in combination with non-claimed features, can be taken into account in assessing inventive step” (Reasons, point 37).

Example (please see also ANNEX V):
In T 1351/04 – in the context of the COMVIK approach – a method for creating an index file and the resulting index file were considered to be technical means, since they determined the way the computer searched information, which search was a technical task (T 1351/04, Catchword and Reasons, point 7), see figure below. In other words: An index file containing management information to be used for searching a file – e.g. an Excel csv-file – and the method for producing the index file are technical means when they determine the way the computer searches information, which is a technical task. The management information e.g. includes starting positions of records in the csv-file.

This decision T 1351/04 (ANNEX V) referred to “functional data, intended for controlling a technical device”, which were “normally regarded as having technical character” (Reasons, point 7.2).

Potential technical effect

Further example: In T 110/90 (OJ EPO 1994, 557) the subject matter concerns control signals for a printer, which were considered technical features of the text-processing system in which they occurred (see Reasons, point 4).

Data intended for controlling a technical device

The appellant in G1/19 and the President of the EPO, and others too, referred to decision T 208/84 (VICOM, OJ EPO 1987, 14) – see ANNEX VI – as another example of data processing being considered to have a technical effect. This case distinguished a method of digitally processing images from a mathematical method as such (Reasons, points 5 and 6).

Here, T 163/85 (OJ EPO 1990, 379) can also be mentioned, please see ANNEX VII. It concerned claims to a colour television signal adapted to generate a picture on specific television receivers. The deciding board found that the TV signal as claimed inherently comprised the technical features of the TV system in which it was being used (Reasons, point 2).

Data intended for controlling a technical device may have technical character

The older case law referred to above appears to confirm that data intended for controlling a technical device may be considered to have technical character because it has the potential to cause technical effects.

In the context of the problem-solution approach and the COMVIK approach, such potential technical effects may be considered if the data resulting from a claimed process is specifically adapted for the purposes of its intended technical use. In such cases:

  • either the technical effect that would result from the intended use of the data could be considered “implied” by the claim, or
  • the intended use of the data (i.e. the use in connection with a technical device) could be considered to extend across substantially the whole scope of the claimed data processing method.

Data should not have relevant uses other than the use with a technical device

On the other hand, the arguments mentioned in the last paragraph cannot be made if claimed data or data resulting from a claimed process has relevant uses other than the use with a technical device (such as for controlling a technical device). In this case, the analysis under Article 56 EPC may reveal that a technical effect is not achieved over substantially the whole scope of the claimed invention (see also chapter VI).

Downstream effects

In the Enlarged Board’s view, the above-mentioned potential technical effects (which may be considered to be technical effects subject to certain conditions) have to be distinguished from the potential effects discussed in T 1173/97. The latter include all (technical and non-technical) effects resulting directly from the running of a program on a computer, i.e. effects occurring within the computer and relating to the hardware which executes the program. By contrast, the former are “downstream” effects which may or may not be caused by said data output.

Of course, numerical data output from a computer is a necessary pre-condition for any effects that are caused, and the “downstream effects” can be seen as a potential effect of the software.

However, the necessarily technical nature of some effects inside the computer does not mean that the “downstream” effects caused by the data output of the computer are necessarily of a technical nature. In T 1173/97 such effects – if considered as technical – were referred to as “further technical effects” (see Reasons, point 9.4).

Conclusions

According to T1173/97 the condition “when run on a computer” was implied in the claim to a computer program product. Furthermore, T1173/97 teaches that a computer program product is not inevitably excluded from patentability.

Further, in this chapter, information regarding a potential technical effect have been given. A potential technical effect is an effect achieved only in combination with non-claimed features. A potential technical effect can be taken into account in assessing inventive step and the COMVIK approach if the data resulting from a claimed process is specifically adapted for the purposes of its intended technical use.

Furthermore, we learnt in this chapter, that functional data is data intended for controlling a technical device. Functional data may be considered to have technical character because it has the potential to cause (further) technical effects and can therefore be considered as a technical feature/ technical means. The (further) technical effect that would result from the intended use of the functional data could be considered “implied” by the claim. Therefore, output-data intended for controlling a technical device may be considered to have technical character.

X.  Virtual or Calculated Technical Effects

This chapter discusses whether virtual effects, such as those occuring in a digital twin, can be considered as potential technical effects. This chapter is based on the Enlarged Board of Appeal decision G1/19, points 97 to 99.

Technical effects which are not achieved through an interaction with physical reality

It was argued during the referral proceedings of G1/19 that technical effects which are not achieved through an interaction with physical reality, but are calculated in such a way as to correspond closely to “real” technical effects or physical entities, should be treated as technical effects for the purposes of the COMVIK approach. In the Enlarged Board’s view, virtual or calculated technical effects should be distinguished from potential technical effects which, for example when a computer program or a control signal for an image display device is put to its intended use, necessarily become real technical effects.

Calculated status information

Calculated status information or physical properties concerning a physical object are information which may reflect properties possibly occurring in the real world. However, first and foremost, they are mere data which can be used in many different ways. There may exist exceptional cases in which such information has an implied technical use that can be the basis for an implied technical effect.

Still, in general, data about a calculated technical effect is just data, which may be used, for example, to gain scientific knowledge about a technical or natural system, to take informed decisions on protective measures or even to achieve a technical effect. The broad scope of a claim concerning the calculation of technical information with no limitation to specific technical uses would therefore routinely raise concerns with respect to the principle that the claimed subject-matter has to be a technical invention over substantially the whole scope of the claims (see chapter VI, referring to T 939/92).

Example of calculated status information or physical properties concerning a physical object implies technical use that can be the basis for an implied technical effect

The calculation of the physical state of an object (e.g. its temperature) is typically part of a measurement method. It is generally acknowledged that measurements have technical character since they are based on an interaction with physical reality at the outset of the measurement method.

Measurements are often carried out using indirect measurements, for example, the measurement of a specific physical entity at a specific location by means of measurements of another physical entity and/or measurements at another location (see e.g. T 91/10, Reasons, point 5.2.1; T 1148/00, Reasons, point 9). Even though such indirect measurements may involve significant computing efforts, they are still related to physical reality and thus of a technical nature, regardless of what use is made of the results (for a combination of measurements and simulations see e.g. T 438/14).

Following chapter VII “Aspects of technicality in computer-implemented inventions”, the above explanation is thus an input-side interaction, see figure below.

Conclusions

  • A virtual technical effect is calculated in such a way as to correspond closely to “real” technical effects or physical entities.
  • Potential technical effects which, for example when a computer program or a control signal for an image display device is put to its intended use, necessarily become real technical effects.
  • Calculated status information or physical properties concerning a physical object are mere data which can be used in many different ways.
  • In general, data about a calculated technical effect is just data.
  • The calculation of the physical state of an object (e.g. its temperature) is typically part of a measurement method. It is generally acknowledged that measurements have technical character.

XI.  Criterion of a “Tangible Effect”

This chapter deals with the question of whether an effect is a requirement for patentability. The information is based on the Enlarged Board of Appeal decision G1/19, points 100 to 101.

Pulse sequences could be likened to control signals having potential further technical effects when put to their intended use

In support of the technical nature of calculated (technical) data, it was argued by the President of the EPO in the case G1/19 that the case law of the boards of appeal does not require a “tangible effect” for an invention to be patentable. The representatives of the President of the EPO referred in particular to T 533/09. This decision held claims to a defibrillation pulse sequence (see patent 11) to be allowable.

This decision held claims to a defibrillation pulse sequence (see patent 11) to be allowable.

Defibrillation pulses are electric shocks delivered by a defibrillation device to a patient (see paragraph [0069] and Fig. 1 above of said patent). In the context of Article 57 EPC (industrial applicability), the board in T 533/09 held that the notion of a patentable invention was not linked to a “caractère tangible, au sens de matériel” (Reasons, point 7.2). Referring to the travaux préparatoires, the board found that the EPC did not limit patentability to certain categories of inventions (e.g. products and processes).

The decision emphasised the difference from U.S. law, which, unlike the EPC, limited patentable inventions to “any new and useful process, machine, manufacture, or composition of matter” under 35 U.S.C. § 101 (Reasons, point 7.2). Even though T 533/09 was not limited to computer-implemented inventions, the claimed pulse sequences could be likened to control signals having potential further technical effects when put to their intended use (see chapter IX “Potential technical effect”, in particular with respect to T 163/85 – colour television signal).

Tangible effect is not a requirement under the EPC

Many cases referring to “tangible” effects use their absence as an argument against patentability (see, as a recent example, T 215/13, Reasons, points 5 and 6 – no tangible technical problem solved). However, the Enlarged Board fully supports the view expressed in T 533/09 (Reasons, point 7.2) that a tangible effect is not a requirement under the EPC.

Moreover, it is unclear to what extent the notions of “tangible effect” and “further technical effect” overlap. A criterion based on tangibility – in addition to the requirement of technicality – thus cannot contribute to a more precise delimitation of patentable inventions.

ANNEX I. Travaux préparatoires for the EPC 2000

In the year 2007 an adapted version of the European Patent Convention (EPC) entered into force. This new Convention is known as the EPC 2000. The EPC 2000 includes, among other things, amendments to Art. 52 EPC, which, as you know, plays an important role in computer-implemented inventions. In the end Art. 52(1) EPC was amended (introduction of the term “all fields of technology”) but Art. 52(2) EPC (list of non-inventions, inter alia “programs for computers”) remains unchanged. In particular, it was discussed whether the term “programs for computers” should be deleted from the list in Art. 52(2) EPC. The main argument for not deleting the term was that the possible regulation of patent protection for computer programs by EU law (rejected by the European Parliament on 6 July 2005) should not be anticipated. Below you will find an overview of the travaux préparatoires and of the decisive document.

Travaux préparatoires consist of a plurality of documents

The negotiations leading up to the EPC 2000 are recorded in travaux préparatoires (= official record of the negotiation). The travaux préparatoires consist of the following documents:

  • 80 documents prepared by the European Patent Organisation (EPO), national delegations, and user groups. These documents form the basis of the preparatory work which took place mainly in the Administrative Council and in the Committee on Patent Law (body of the Administrative Council). The Administrative Council is one of the two organs of the EPO, the other being the EPO. The Council acts as the Office’s supervisory body and is composed of the representatives of the EPO member states.
  • 50 documents submitted for discussion during the 10 days of the Diplomatic Conference in November 2000.
  • Minutes of the meetings of the Administrative Council and the Committee on Patent Law.

In the figure below you see an overview about the negotiation process regarding Art. 52 EPC:

negotiation process regarding Art. 52 EPC

The decisive document is disclosed in the following in more detail. The document „Basic Proposal for the Revision of the EPC (MR/2/00)“ of the travaux préparatoires forms the most important reference document.

“Basic Proposal for the Revision of the EPC” regarding Art. 52 EPC

The document Basic Proposal for the Revision of the EPC (MR/2/00) was drawn up by the Administrative Council and addresses the Revision Conference for consideration. The document was issued on October 13, 2000.

MR/2/00 is hence – as part of a subsequent agreement between the contracting states concerning the EPC – a valid instrument for construing the Convention according to the traditional rules of interpretation (see decision G 5/83 (supra), Reasons No. 5, rule (4), and the corresponding Article 31 of the Vienna Convention on the Law of Treaties of 1969; T 154/04, Reasons, point 8).

The following is an extract from this document MR/2/00, page 43, wherein in the Explanatory remarks all the relevant preparatory documents are listed, thus enabling you to retrieve the legislative history of the provision. The documents of the Explanatory remarks are discussed further below.

MR/2/00: ARTICLE 52 EPC

Explanatory remarks (Preparatory documents: CA/PL 6/99; CA/PL PV 9, points 24-27; CA/PL PV 14, points 143-156; CA/100/00, pages 37-40; CA/124/00, points 12-16; CA/125/00, points 45-73)

  1. Article 52(1) EPC has been brought into line with Article 27(1), first sentence, of the TRIPs Agreement with a view to enshrining “technology” in the basic provision of substantive European patent law, clearly defining the scope of the EPC, and making it plain that patent protection is available to technical inventions of all kinds.
  2. In light of the new wording of Article 52(1) EPC, it may be queried whether the provisions of Article 52(2) and (3) EPC, which enumerate subject-matter or activities not to be regarded as inventions, are still needed.
  3. The Committee on Patent Law and the Administrative Council have advocated the deletion of programs for computers from Article 52(2)(c) EPC. The EPO and the Boards of Appeal have always interpreted and applied the EPC in such a way that this exception in no way excludes appropriate protection for software-related inventions, ie inventions whose subject-matter consists of or includes a computer program. Indeed, more recent decisions of the Boards of Appeal (see T 1173/97 – Computer program product/IBM, OJ EPO 1999, 609) have confirmed that computer programs producing a technical effect, as a rule, are patentable subject-matter under the EPC.
  4. Nevertheless, the point must be made that patent protection is reserved for creations in the technical field. This is now clearly expressed in the new wording of Article 52(1) EPC. In order to be patentable, the subject-matter claimed must therefore have a “technical character” or to be more precise – involve a “technical teaching”, ie an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means. It is on this understanding of the term “invention” that the patent granting practice of the EPO and the jurisprudence of the Boards of Appeal are based. The same considerations apply to the assessment of computer programs. Thus, it will remain incumbent on Office practice and case law to determine whether subject-matter claimed as an invention has a technical character and to further develop the concept of invention in an appropriate manner, in light of technical developments and the state of knowledge at the time.
  5. Article 52(4) EPC is deleted and transferred to Article 53 EPC (see explanatory remarks to Article 53(c) EPC).

In T 154/04, Reasons, point 8 it is inferred from point 4 above: “The Basic Proposal clearly confirms that patent protection should be available to technical inventions of all kinds (MR/2/00e, page 43, No. 1) and that the technical character is a mandatory requirement for any patentable invention.

ANNEX II.   T 154/04 Estimating sales activity/ DUNS LICENSING ASSOCIATES

In this decision the jurisprudence of the Boards of Appeal on the application of Art. 52, 54 and 56 EPC in the context of subject-matter and activities excluded from patentability under Article 52(2) EPC is summarized. The appellant explicitly disagreed with the “COMVIK approach” applied by the Board for assessing inventive step as it used hindsight to determine the prior art. Furthermore, the Board answers the question whether “methods of business research” are excluded “as such” from patentability under Article 52(2)(c) and (3) EPC.

Summarized jurisprudence of the boards of appeal regarding subject-matter excluded from patentability (reasons, point 5)

(A) Article 52(1) EPC sets out four requirements to be fulfilled by a patentable invention: there must be an invention, and if there is an invention, it must satisfy the requirements of novelty, inventive step, and industrial applicability.

(B) Having technical character is an implicit requisite of an “invention” within the meaning of Article 52(1) EPC (requirement of “technicality”).

(C) Article 52(2) EPC does not exclude from patentability any subject matter or activity having technical character, even if it is related to the items listed in this provision since these items are only excluded “as such” (Article 52(3) EPC).

(D) The four requirements – invention, novelty, inventive step, and susceptibility of industrial application – are essentially separate and independent criteria of patentability, which may give rise to concurrent objections. Novelty, in particular, is not a requisite of an invention within the meaning of Article 52(1) EPC, but a separate requirement of patentability.

(E) For examining patentability of an invention in respect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention.

(F) It is legitimate to have a mix of technical and “non-technical” features appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features “as such”, do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step.

(G) For the purpose of the problem-and-solution approach, the problem must be a technical problem which the skilled person in the particular technical field might be asked to solve at the relevant priority date. The technical problem may be formulated using an aim to be achieved in a non-technical field, and which is thus not part of the technical contribution provided by the invention to the prior art. This may be done in particular to define a constraint that has to be met (even if the aim stems from an a posteriori knowledge of the invention).

Technical character (reasons, point 7)

Taking into account object and purpose of the patentability requirements and the legal practice in the contracting states of the EPO, the boards of appeal considered the technical character of the invention to be the general criterion embodied in paragraphs 2 and 3 of Article 52 EPC (see, for example, decisions T 22/85 – Document abstracting and retrieving/IBM (OJ EPO 1990, 12), Reasons No. 3, Pension Benefits T 931/95 (supra), Reasons No. 2, and more recently decisions T 619/02 – Odour selection/ QUEST INTERNATIONAL (OJ EPO 2007, 63), Reasons No. 2.2 and T 930/05 – Modellieren eines Prozessnetzwerkes/ XPERT (not published in OJ EPO), Reasons No. 2). By having technical character, any product, method etc., even if formally relating to the list enumerated in paragraph 2, is not excluded from patentability under paragraphs 2 and 3 of Article 52 EPC.

Defining the object of the invention (reasons, point 16)

For the purpose of the problem-and-solution approach developed as a test for whether an invention meets the requirement of inventive step, the problem must be a technical problem (see the COMVIK decision T 641/00 (supra), Reasons Nos. 5 ff.). The definition of the technical problem, however, is difficult if the actual novel and creative concept making up the core of the claimed invention resides in the realm outside any technological field, as it is frequently the case with computer-implemented inventions. Defining the problem without referring to this non-technical part of the invention, if at all possible, will generally result either in an unintelligible vestigial definition (DE: unverständliche Rumpfdefinition), or in an contrived statement that does not adequately reflect the real technical contribution provided to the prior art.

The Board, therefore, allowed in COMVIK an aim to be achieved in a non-technical field to appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that is to be met (Reasons No. 7). Such a formulation has the additional, desirable effect that the non-technical aspects of the claimed invention, which generally relate to nonpatentable desiderata, ideas and concepts and belong to the phase preceding any invention, are automatically cut out of the assessment of inventive step and cannot be mistaken for technical features positively contributing to inventive step. Since only technical features and aspects of the claimed invention should be taken into account in assessing inventive step, i.e. the innovation must be on the technical side, not in a non-patentable field (see also decisions T 531/03 – Discount certificates/CATALINA (not published in OJ EPO) Reasons Nos. 2 ff., and T 619/02 (supra), Reasons No. 4.2.2), it is irrelevant whether such a non-technical aim was known before the priority date of the application, or not.

Requirement of inventive step (reasons, points 23-28)

Point 23: For assessing inventive step, the system claims 7 of the main request an auxiliary request 1, and the system claims 1 of auxiliary requests 2 and 3 may be considered together since the technical subject matter of these claims is only marginally different.

Point 24: The claimed system essentially consists of a central station connected to a plurality of first (reporting) sales outlets providing sales data to the central station for estimating sales (product distribution, sales volume) of at least one other (nonreporting) sales outlet. Regarding such a system, there is general consent that document D1 is a relevant piece of prior art and an appropriate starting point for assessing inventive step.

Requirement of inventive step

Point 25: In the terminology of the present application, document D1 discloses a system comprising a plurality of first sales outlets (figure 1: store 1,…, store N) which generate sales data/ volume/distribution (identification of the retail store, date of transaction, universal product code UPC, quantity purchased etc. enabling a “market basket” analysis, see column 7, lines 19 to 45). This prior art system further comprises a central station (“central site 24”, see figures 1 and 7) receiving these sales data via a data receiver (“telephone 102”) from each of the first sales outlets (see column 11, lines 14 to 23, and column 16, lines 19 to 35). A memory stores a database including data for each of the sales outlets (“very large direct access storage device DASD 112”, see in particular column 16, lines 40 to 45). This database stores data required for market analysis, for example characteristic data and geographic data (see column 7, lines 21 f. and column 19, lines 66 ff.). A central processor/processor (“central processor 110”, “central processor 114”, see figure 7 and column 16, lines 49 to 55) processes the data, for example by “perform[ing] statistical calculations necessary in producing output reports for customers of the market research system”.

Point 26: The claimed system according to the present requests is distinguished therefrom by the following features:

  • There is at least one other sales outlet not generating sales data/product distributionand/or not coupled to the central station.
  • The system provides a different market analysis; the sales, geographic, and other characteristic data are processed to estimate sales/product distribution/sales volume at the at least one other sales outlet on the basis of a method and algorithm specifically disclosed in the present application.

Point 27: The contribution to the prior art is the use of the known system for performing a new market analysis different from the statistical calculations disclosed in document D1 and hence requiring the implementation of a new algorithm for processing the sales data and creating the desired information about the non-reporting sales outlets. This, however, does not imply the use of any new technical means. The contribution to the prior art is therefore limited to the implementation of the new algorithm.

Point 28: For the reasons given above, this new algorithm and the method of estimating sales activity at a non-reporting outlet are part of a business research method and do not contribute to the solution of any technical problem. They have thus to be ignored in assessing inventive step. The only technical aspect of the claimed system, namely to use a processor to implement the non-technical method and the corresponding algorithm, is an obvious consequence of using computer systems for market analysis like in document D1. Hence, the main request and the auxiliary requests 1 to 3 are not allowable for lack of inventive step (Article 56 EPC).

Headnote

I. Methods of business research are excluded “as such” from patentability under Article 52(2)(c) and (3) EPC.

II. Gathering and evaluating data as part of a business research method do not convey technical character to the business research method if such steps do not contribute to the technical solution of a technical problem.

ANNEX III.    T 0697/ 17 SQL extensions / MICROSOFT TECHNOLOGY LICENSING

So that the non-technical features are considered regarding the inventive step a technical interaction between non-technical features and the technical subject matter of the claim is necessary resulting in a technical effect. Technical effects can occur within the computer-implemented process. This decision – cited in the G1/19 – comprises a list of examples and references to relevant board decisions regarding adaptations to the computer or its operation, which result in technical effects.

Program performance improvements

Some decisions have held that in certain circumstances program performance improvements may be unsuitable for distinguishing between technical and non-technical features, and that technical character is assessed without regard to the prior art.

Example:
According to T 1784/06 of 21 September 2012 (which cites T 1227/05): “[e]nhanced speed of an algorithm, as compared to other algorithms, is not sufficient to establish a technical character of the algorithm” (T 1784/06, reasons 3.1.2).

Example:
Decision T 2230/10 of 3 July 2015 (reasons 3.6) reads: “the determination of the claim features which contribute to the technical character of the invention is made, at least in principle (the question may in practice be left open for features which anyway are part of the closest prior art), without reference to the prior art (see T 154/04, supra, as explained in T 1358/09 of 21 November 2014, reasons 5.4). That the claimed invention might achieve better results than the method of document D1 is therefore in itself not an indication that the algorithmic modification is technical, although it may be important in the assessment of inventive step once technicality has been established. Technicality is hence more about control of technical parameters than about improvement.”

Technical effects over the prior art in the process of determining which features make a technical contribution

The proposition that the issue of “contributing to the technical character” may be determined without reference to the prior art does not imply that technical effects over the prior art never play a role in the process of determining which features make a technical contribution.

The Board in this decision (T 697/17) considered in T 817/16 of 10 January 2019 (reasons 3.12) that “if non-technical claim features interact with technical claim features to cause a physical effect over the prior art, such as an effect on memory usage in a general-purpose computer, the physical effect is to be regarded as a technical effect for the purpose of assessing inventive step if the non-technical features are based on technical considerations aimed at controlling that physical effect (see e.g. decisions T 2230/10, reasons 3.8; and T 2035/11 of 25 July 2014, reasons 5.2.3)”.

In addition, since a non-technical feature can only be considered to make a technical contribution if it interacts with the technical features of the invention to solve a technical problem, bringing about a technical effect, it is legitimate to establish the technical contribution of a feature by analysing the effect caused once it is added to the other features of the invention. Decision T 336/14 of 2 September 2015 affirms that “in the assessment of whether or not a feature provides a technical contribution, the feature shall not be taken by itself, but its technical character shall be decided by the effect it brings about after being added to an object which did not comprise that feature before” (reasons 1.2.2, referring to T 119/88, OJ EPO 1990, 395, reasons 4.1).

Are technical effects like execution time, processing speed, etc. recognized?

With regard to the role of program performance improvements in distinguishing between technical and non-technical features, the Examining Division’s (against the appeal in this case has been lodged) a priori reluctance to recognise some effects as technical is not convincing. The Board in this decision (T 697/17) has the opinion that from none of the above cited decisions it can be concluded that:

  • execution time,
  • processing speed,
  • latency,
  • amount of memory required, or
  • other such program performance measurements

are per se non-technical measurements which cannot play a role in establishing a technical effect and determining whether a technical contribution is present. The above cited decisions merely teach that an improvement with regard to one of those performance measurements alone (“the sole”, “not sufficient”, “in itself”), is insufficient to establish technical character. In order to decide whether such an improvement is a technical effect it has to be further determined how the improvement is achieved, for instance whether it is the result of technical considerations (T 258/03, reasons 5.8; T 1358/09, reasons 5.5) regarding the functioning of the technical context of the invention (e.g. computer, system, process, transmission channel). Features that purposively use technical means to achieve such an improvement are technical.

Features that purposively use technical means to achieve such an improvement are technical.

In other words, features make a technical contribution if they result from technical considerations on how to for instance improve processing speed, reduce the amount of memory required, improve availability or scalability, or reduce network traffic, when compared with the prior art or once added to the other features of the invention, and contribute in combination with technical features to achieve such an effect (see also T 1924/17, reasons 21 to 22). In particular, the Board in this decision (T 697/17) considers that such an effect on computing efficiency corresponds to a physical effect mentioned in the above-cited passage of decision T 817/16, reasons 3.12, or a change in a physical entity within the meaning of T 208/84, reasons 5 and 7 (see also interlocutory decision T 489/14, OJ EPO 2019, A86, reasons 11).

On the other hand, such effects and the respective features are non-technical if the effects are achieved by non-technical modifications to the underlying nontechnical method or scheme (for example, a change of the business model, or a “pure algorithmic scheme”, i.e. an algorithmic scheme not based on technical considerations).

Furthermore, a change in the quality of a program in terms of the user preferences or other subjective criteria in principle do not give indications of a technical contribution. For example, decision T 598/14 of 6 November 2014, reasons 2.4, did not recognise query enhancement (meant as modifying the original user query to obtain semantically “better results”), as a technical effect because it relied on a semantic distinction and the concept of “better search” was subjective in the context of retrieval based on semantic similarity.

Test for determining whether non-technical features are based on technical considerations

A possible test for determining whether non-technical features are based on technical considerations is to consider whether the non-technical features would have been formulated by a technical or by a non-technical expert (T 817/16, reasons 3.12). Since computer programming involves technical and non-technical aspects (G 3/08, reasons 13.5.1; T 1463/11 of 29 November 2016, reasons 21), it is difficult to apply that test to distinguish abstract algorithmic aspects from “technical programming” aspects. In that case, the test would have to be whether the features were determined by a “programmer as such” or by a “technical programmer”, please see figure below. It may therefore be preferable to directly determine whether the decision to adopt the nontechnical features is a technical one (T 1463/11, reasons 21) or whether it required “technical considerations beyond ‘merely’ finding a computer algorithm to carry out some procedure” (G 3/08, reasons 13.5).

Test for determining whether non-technical features are based on technical considerations

Decisions on non-technical features contributing to the technical character

Several decisions of the boards of appeal have considered subject-matter or features which on their own are excluded to nonetheless contribute, in combination with technical features, to the solution of a technical problem bringing about a technical effect. In some of those cases, the relevant technical effect corresponded to one of the above-mentioned efficiency measures.

According to decisions T 650/13 and T 107/87, a compression algorithm contributes to the technical character of the claimed compression method if it is used for the purpose of reducing the amount of data to be stored or transmitted (T 650/13, reasons 6.3 and 6.4; T 107/87 of 26 April 1991, reasons 3).

Decisions T 1003/09 and T 1965/11 considered that the cost-based optimisation of a query in a relational database system normally had technical character (T 1003/09 of 29 April 2015, reasons 13.3 to 13.5; T 1965/11 of 24 March 2017, reasons 5.1). In particular, decision T 1965/11 found that such a costbased query optimisation searched for low-cost query execution plans using a cost estimate for the computer resources (such as CPU, main memory or hard disk) needed to execute a query plan, and therefore involved further technical considerations relating to the internal functioning of the computer system (T 1965/11, reasons 5.1 and 5.3).

Even though data structures used to store cognitive data are not considered to contribute to the technical character beyond the mere storage of data, data structures used for functional purposes are considered to contribute to producing a technical effect (see e.g. T 1194/97, OJ EPO 2000, 525, reasons 3.3 or T 424/03 of 23 February 2006, reasons 5.2).

In decision T 49/99 of March 2002 the deciding board ruled that information modelling was a non-technical intellectual activity, but that the purposive use of information modelling in the context of a solution to a technical problem could contribute to the technical character of an invention (reasons 7).

An object table used for storing “a system catalog supporting the technical functions of the database system” had technical character (reasons 8 to 10).

In decision T 1351/04 of 18 April 2007, an index file used for the purpose of controlling the computer “along the path leading to the desired data” was considered to contribute to the solution of a technical problem (reasons 7.2).

In decision T 1902/10 of 21 June 2016, a RAM-based hash table of fingerprints of stored URLs was used, in the context of web crawling, to determine whether a URL already existed in a database of processed web pages. The hash table was considered part of the solution to the technical problem (reasons 19 to 22).

In decision T 2539/12 of 18 January 2018, search indexes used to provide access to stored data were considered to contribute to the technical character of the claimed method (reasons 5.5).

And in decision T 2330/13 of 9 May 2018 the specific choice of the claimed bit strings and matrices and respective operations was considered to be determined by technical considerations concerning how to efficiently perform in parallel the steps of a method for evaluating selection conditions, and hence was considered to contribute to the technical character of the claimed invention (reasons 5.7.9 to 5.8).

ANNEX IV.  T 1173/97 Computer Program Product/IBM

The decision T1173/97 – cited in the G1/19 – is about a claim regarding a “computer program product”. The question was whether such a claim is excluded from patentability under Art. 52(2) and (3) EPC.

In this case an appeal was lodged against a decision of the examining division. The appellant requests the grant of a patent based inter alia on several independent claims. The subject matters of the independent claims are as follows:

  • claim 1 provides a method for resource recovery in a computer system,
  • claim 14 provides a computer system,
  • claim 20 provides a computer program product directly loadable into the internal memory of a digital computer and performing the steps of claim 1, and
  • claim 21 provides a computer program product stored on a computer usable medium based on the computer system.

The subject matter of the independent claims 1 and 14 have been considered by the examining division to be patentable over the prior art. However, the subject-matter of claims 20 and 21 was regarded as being excluded as such from patentability under Article 52(2) and (3) EPC.

View of the Board of Appeal (reasons, point 13)

In the view of the Board of Appeal, a computer program claimed by itself is not excluded from patentability if the program, when running on a computer or loaded into a computer, brings about, or is capable of bringing about, a technical effect which goes beyond the “normal” physical interactions between the program (software) and the computer (hardware) on which it is run.

“Running on a computer” means that the system comprising the computer program plus the computer carries out a method (or process) which may be of the kind according to claim 1.

“Loaded into a computer” means that the computer programmed in this way is capable of or adapted to carrying out a method which may be of the kind according to claim 1 and thus constitutes a system (or device or apparatus) which may be of the kind according to claim 14.

Furthermore, the Board is of the opinion that with regard to the exclusions under Article 52(2) and (3) EPC, it does not make any difference whether a computer program is claimed by itself or as a record on a carrier (following decision T 163/85, OJ 1990, 379, “Colour television signal/BBC”, as cited above).

Further technical effect may be known in the prior art (reasons, point 8)

The Board takes this opportunity to point out that, for the purpose of determining the extent of the exclusion under Article 52(2) and (3) EPC, the said “further” technical effect may, in its opinion, be known in the prior art.

Computer program product regarding patentable method not excluded (reasons, point 9.6 to 9.7)

A computer program product which (implicitly) comprises all the features of a patentable method (for operating a computer, for instance) is therefore in principle considered as not being excluded from patentability under Article 52(2) and (3) EPC.

It is self-evident that a claim to such a computer program product must comprise all the features which assure the patentability of the method it is intended to carry out when being run on a computer. When this computer program product is loaded into a computer, the programmed computer constitutes an apparatus which in turn is able to carry out the said method.

Given that, according to the above, in the Board’s opinion a further technical effect is necessary, deriving from the execution of the program, such a requirement will be satisfied when the claim is formulated as specified above. Such a claim contains functional features and its scope is defined in terms of the function performed by the computer program as described in that claim.

Conclusion

If a method claim is patentable, a computer program claim may also be directed to the claimed method. This is – when the method is patentable – “automatically” not excluded from patentability.

ANNEX V.  T 1351/04 File Search Method/FUJITSU

This decision T1351/04 – cited in the G1/19 – is in regard to “functional data” intended for controlling a technical device (in this case a computer).

The appeal in this case is against the decision of the examining division to refuse the European patent application No. 02 258 100.3.

Subject matter of the application in suit

The claimed subject matter is in regard to create a specific index-file from a csv-file (e.g. an Excel-file). By employing the index-file, it is possible to significantly increase the speed of data extraction from a large-size csv-file. In the figure 1 below, you can see an example of the csv-file (on the right hand) and of the index-file (on the left hand).

In the figure 1 below, you can see an example of the csv-file (on the right hand) and of the index-file (on the left hand).

For the claimed subject matter, the csv-file requires records containing fields forming different hierarchical levels, see figure 1 above on right hand side (top hierarchical level, lower hierarchical level). The index-file is in principle built as a tree structure. This means, in the index-file information of the csv-file are connected/arranged in a tree structure. This looks schematically as follows in figure 2:

index-file information of the csv-file are connected/arranged in a tree structure

Because the records in the index-file (based on the csv-file) are arranged in the tree structure, the respective record is called a “node”. When you look in figure 1 right hand, you can see that in the csv-file there are records like “COOLING AND HEATING” and “HOUSEWORK” as the top hierarchical level. Depending on these there are further records respectively. The hierarchical records in a row of the csv-file are key character strings. The hierarchical record of the csv-file is mapped in the tree structure of the index-file. At each node there is also so-called management information, which includes information about the starting position and the number of corresponding records in the csv-file to be searched. This information permits the desired records of the csv-file to be retrieved directly when the node having the desired key character string has been found (cf para. [0042] of the description). When only keys of high-level nodes are used it is thus not necessary to follow the tree structure all the way down to the leaf nodes in order to retrieve the desired record information.

In other words, the hierarchical structure of the csv-file is transformed in the tree structure of the index-file, wherein addition information like starting position and number of corresponding records are stored. With this arrangement information of the csv-file can be retrieved by the index-file faster.

Is the subject matter of the application technical?

Yes, since the claimed method requires the use of a computer.

Features of the subject matter contributing to the technical solution of a technical problem

To assess the inventive step it must first be considered in how far the features of the claim contribute to the solution of a technical problem. The board took a look at the following feature since it is a distinguishing feature over the prior art:

“each node in the index includes the starting position information and number information used for retrieving records”.

As mentioned above, these features are part of the index-file and are called management information.

According to the description of the present application, the invention relates to a method for “promptly searching for and extracting data from a file” (cf paragraph [0001]). The data searched for can be of any kind, eg of a commercial nature as in the described embodiment, and thus have no technical relevance in themselves.

The data are stored as records having certain “start positions“, ie memory addresses in the file to be searched. The computer reads these addresses in the form of the “management information” in the index-file and retrieves the associated data from the csv-file to be searched. The management information thus controls the computer by directing it to a certain memory location.

Functional data, intended for controlling a technical device, are normally regarded as having technical character. The management information contained in the present claims should be regarded as contributing to the technical character of the search method according to the Board of Appeal.

It follows that the mentioned feature that has a direct bearing on how the search is conducted should be considered for inventive step.

Is the data decisive?

Further, in the decision the BoA refers to the decision T 52/85. This seems to suggest that as long as a claimed method for searching a data file is concerned with the way a computer performs the search, it may be technical. If however the kind of data is decisive, the method’s contribution is nontechnical (cf T 52/85, point 5.2). As noted above, in the present case the kind of data searched for is of no importance.

Practical advice

In order to support possible argumentation of the technical character of claimed subject matter comprising “functional data” it would be beneficial, when the functional data is not only disclosed in a abstract manner but also in regard to the machine-level of the computer. E.g. as mentioned above it could be disclosed that the management information controls the computer by directing it to a certain memory location.

Further information

Claim 2 of the main request in the appeal:

A computer-executable file search method for searching a file to be searched (3),

said file to be searched (3) including records having fields allocated to each of a plurality of hierarchical levels and being constructed so that records having the same key character string in a field at the same hierarchical level are arranged in series and wherein for each record, the first field is the top hierarchical level, and subsequent fields form lower hierarchical levels,

the method comprising computer-executed steps of:

  • creating (S3) an index file (5) using the method of claim 1;
  • accepting (S5, S6; S10, S11)) an instruction to search for data relating to a specified key character string over said file to be searched (3), the instruction including selection of either a data extraction output or a drill-down business form output;
  • retrieving (S7; S12, S13) from said index file (5) management information about one or more records related to the specified key character string on said file to be searched;
  • extracting (S8; S14) data of the one or more records from said file to be searched (3); and
  • outputting (S9) the extracted data;

wherein the retrieving and extracting steps comprise

when the data extraction output is selected, retrieving (S7) start position information and number information as management information about records related to the specified key character string and extracting (S8) data of a number of records specified by the number information from a position specified by the start position information;

and when the drill-down business form output is selected, retrieving (S12, S13), based on the pointer, a start position of a record of the node management information of the lower hierarchical level, and extracting (S14) data of the record based on the retrieved start position of the record.

ANNEX VI.  T 208/84 VICOM

The VICOM-decision is a highly relevant decision, since an image – in the form of a two-dimensional data array – has been considered as a physical entity and therefore as a technical feature. In G1/19 such kind of data is called “functional data”.

Subject matter of claim 1 in suit:

A method of digitally processing images in the form of a two-dimensional data array having elements arranged in rows and columns

inwhich an operator matrix of a size substantially smaller than the size of the data array is convolved with the data array,

including sequentially scanning the elements of the data array with the operator matrix,

characterised in that

the method includes repeated cycles of sequentially scanning the entire data array with a small generating kernel operator matrix to generate a convolved array and then replacing the data array as a new data array; the small generating kernel remaining the same for any single scan of the entire data array and although comprising at least a multiplicity of elements, nevertheless being of a size substantially smaller than is required of a conventional operator matrix in which the operator matrix is convolved with the data array only once, and the cycle being repeated for each previous new data array by selecting the small generating kernel operator matrices and the number of cycles according to conventional error minimisation techniques until the last new data array generated is substantially the required convolution of the original data array with the conventional operator matrix.

Reasons for the decision

Reasons 4: The now effective method Claims 1-7 and 12 are directed to methods for digitally processing images. One basic issue to be decided in the present appeal is, therefore, whether or not such a method is excluded from patentability under Article 52 (2) and (3) EPC on the ground that it is a mathematical method as such.

Reasons 5: There can be little doubt that any processing operation on an electric signal can be described in mathematical terms. The characteristic of a filter, for example, can be expressed in terms of a mathematical formula. A basic difference between a mathematical method and a technical process can be seen, however, in the fact that a mathematical method or a mathematical algorithm is carried out on numbers (whatever these numbers may represent) and provides a result also in numerical form, the mathematical method or algorithm being only an abstract concept prescribing how to operate on the numbers. No direct technical result is produced by the method as such. In contrast thereto, if a mathematical method is used in a technical process, that process is carried out on a physical entity (which may be a material object but equally an image stored as an electric signal) by some technical means implementing the method and provides as its result a certain change in that entity. The technical means might include a computer comprising suitable hardware or an appropriately programmed general purpose computer.

Reasons 6: The Board, therefore, is of the opinion that even if the idea underlying an invention may be considered to reside in a mathematical method a claim directed to a technical process in which the method is used does not seek protection for the mathematical method as such.

Reasons 7: In contrast, a “method for digitally filtering data” remains an abstract notion not distinguished from a mathematical method so long as it is not specified what physical entity is represented by the data and forms the subject of a technical process i. e. a process which is susceptible of industrial application.

ANNEX VII.  T 163/85 Colour Television Signal/BBC

The Enlarged Board of Appeal in G 1/19 considered the decision T 163/85 as an example of data intended for controlling a technical device. The following is a discussion of T 163/85 and, in the conclusion, the view of the Enlarged Board of Appeal in G1/19 is shown with respect to this decision.

General overview

European patent application No. 82 902 076.7, publication number 0 083 352, was refused by the Examining Division of the European Patent Office because of a lack of inventive step.

Subject matter of the patent application in suit

Claim 1 of the main request in the appeal proceeding:

A colour television signal adapted to generate a picture with an aspect ratio of greater than 4:3, and in which the active-video portion of a line constitutes at least 85% and preferably 90% of the line period.

Therefore, the subject matter is in regard to a colour television signal, please see the figure below (i.e. Fig. 2 of the patent application in suit):

Subject matter of the patent application in suit

At first sight, claim 1 does not explicitly comprise any technical device features.

In a communication, the rapporteur of the Board of Appeal objected the claim 1 in that a signal, be it a colour television signal, cannot constitute a patentable invention and that such a signal is excluded from patentability by the non-exhaustive list of exclusions summed up in Article 52(2) EPC with the proviso of Article 52(3) EPC.

According to the summary of facts and submissions of the decision, the colour television signal has the effect of improved pictures.

Reasons for the decision

Reason 2: “The Board no longer maintains its view that a claim pertaining to a colour television signal would be excluded from patentability according to Article 52(2) and (3) EPC.

As the Examining Division noted in its decision, there is no substantial difference between Claim 1 as originally filed, which was directed to a colour television system and the Claim 1 which they had to judge upon and which was directed to a colour television signal; the features of the system claim also in essence only defined a TV signal. This TV signal as now claimed is specific for the television system in which these signals occur.

[…]

However, the TV signal as claimed seems to be more than a mere presentation of information “as such”. In fact, the TV signal as claimed inherently comprises the technical features of the TV system in which it is being used and if it is considered to present information then it represents exactly that kind of information which exhibits the technical features of the system in which it occurs.

The Board considers it to be appropriate to distinguish between two kinds of information, when discussing its presentation.

According to this distinction, a TV system solely characterised by the information per se, e.g. moving pictures, modulated upon a standard TV signal, may fall under the exclusion of Article 52(2)(d) and (3) EPC but not a TV signal defined in terms which inherently comprise the technical features of the TV system in which it occurs. […]” (bold and italic letters added by the author).

Conclusion

The disputed claim 1 is in regard to a TV signal. Features of the TV system (device features) have not been claimed. Nevertheless, it has been considered by the board of appeal, that the claimed TV signal inherently comprises the technical features of the TV system.

The Enlarged Board of Appeal in G1/19 discussed this decision with respect to data intended for controlling a technical device. This data may be considered to have technical character because it has the potential to cause technical effects. In this regard, the TV signal is the data and the technical device is the TV system. The TV system is not claimed, therefore the subject matter of claim 1 (i.e. the TV signal) does not cause a technical effect but has the potential to cause a technical effect.

Definition of potential technical effect: an effect achieved only in combination with non-claimed features.

According to the Enlarged Board of Appeal in G1/19, in the context of the problem-solution approach and the COMVIK approach, such potential technical effects may be considered if the data resulting from a claimed process is specifically adapted for the purposes of its intended technical use. This is the case regarding the TV signal of claim 1 which is specifically adapted for the purpose of its intended technical use.

In such cases (with respect to the G1/19):

  • either the technical effect that would result from the intended use of the data could be considered “implied” by the claim, or
  • the intended use of the data (i.e. the use in connection with a technical device) could be considered to extend across substantially the whole scope of the claimed data processing method.

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Basics of the European Unified Patent System (Whitepaper)

Updated: May 22, 2023

Since January 19, 2022, the Unified Patent System in Europa has been ramped up. On this day, EU Member Austria has ratified the Unified Patent Court Agreement (UPCA). Now enough EU Members are on board for the new system and the execution of the “Protocol to the Agreement on a Unified Patent Court on provisional application (PPA)” has started. The implementation of the PPA will lead to the gradual launch of the system, for example, judges are elected and appointed. The new system will start on 1 June 2023.

The introduction of the Unified Patent System has an impact on all European patents, also on “old” European patents which are already granted and in force. Patentees and applicants of European patents and applications should be aware of the implications and respond as needed. This white paper is intended to provide a basic overview of the European Unified Patent System and to support the patentees and applicants in possible steps.

You can download a PDF version of this whitepaper in the following languages: English, Japanese.

Listing of Agreement, Regulations, Rules, and Convention regarding the Unitary Patent

First of all, the legal basis is given here, which is referred to in the rest of the document.

The Unitary Patent is based on several legal provisions. First of all, there is the “Unitary Patent Package“:

The UPCA creates a new court (Unified Patent Court) and new substantive standards of patent law. The two Regulations create a Unitary Patent, namely a “European Patent with unitary effect” / “Unitary Patent”. The European Patent changes from a “bundle patent” to a (small) “unitary patent”.

Furthermore, there is secondary legislation:

Then the European Patent Convention (“EPC”) has to be considered regarding the Unitary Patent. The EPC is the Convention on the Grant of European Patents of 5 October 1973, including any subsequent amendments.

Classification of the European countries regarding the Unitary Patent

The UPCA is open to accession by any of the EU Member States of the European Union. At present, there are 27 EU Member states: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, and Sweden.

The UPCA is not open to states outside of the European Union, such as UK. Up to date, all EU Member States except Spain, Poland and Croatia have signed the UPCA. Therefore, 24 EU Member States have signed the UPCA, wherein these Member States are called “Contracting Member States” according to Art. 2(c) UPCA (or “Participating Member States” according to Art. 2 Regulation (EU) No 1257/2012).

From the 24 Contracting Member States 17 have already ratified the UPCA (current status of ratification): Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden. Please note: the Unitary Patent benefits from unitary effect in these countries who have ratified the UPCA.

The 27 EU Member States are in addition members of the European Patent Organisation. All in all, there are 39 members of the European Patent Organisation, e.g. including UK.

In the figure below all the 39 members of the EPO are shown (blue and green marked countries). The 17 contracting members having already ratified the UPCA are marked blue.

Members of EPO marked blue and green, contracting members having already ratified the UPCA are marked blue
Members of EPO already having ratified UPCA (blue)

Current Status

The UPCA has been ratified by enough Contracting Member States. Therefore, the “Protocol to the Agreement on a Unified Patent Court on provisional application (PPA)” has been in force since January 19, 2022.  The implementation of the PPA will lead to the gradual launch of the system:

  • Initially, institution building, the election of the Administrative Council, election and appointment of judges, adoption of the Rules of Procedure and other legal texts,
  • Opt-out declarations are to be able to be submitted in advance to the Registry of the Unified Patent Court.

Germany has already ratified the UPCA and has filed the ratification certificate. The Unitary Patent system will enter into force on June 1, 2023. On the same day, the two Regulations (Regulation (EU) No 1257/2012 and No 1260/2012) setting up the Unitary Patent will become applicable, as well as the Rules relating to Unitary Patent Protection (UPR).

Different types of Patents in Europe

After the start of the Unitary Patent, there will be different options for patent protection:

  • “European patent with unitary effect” (also called “Unitary Patent”) means a patent granted under the provisions of the EPC which benefits from unitary effect by virtue of Regulation (EU) No 1257/2012, see Art. 2(f) UPCA. This patent benefits from unitary effect in the participating Member States by virtue of Regulation (EU) No 1257/2012 who have already ratified the UPCA.
  • Classic “European Patent” means a patent granted under the provisions of the EPC, which does not benefit from unitary effect by virtue of Regulation (EU) No 1257/ 2012, see Art. 2(e) UPCA. A classic European Patent can be validated in the 39 members of the European Patent Organisation.
  • Combination of a European Patent with unitary effect and a classic European Patent. With a Unitary Patent combined with a classic European patent it is possible to seek a Unitary Patent and, in addition, validate the European patent in those EPC contracting states not territorially covered by the Unitary Patent scheme because the EPC contracting states are not Contracting Member States which have signed and already ratified the UPCA or the EPC contracting states are generally not EU Member states.
  • National Patent (and Utility Model if possible) in the respective European Country.


European Patents with unitary effect will have different generations in the future

The European Patent with unitary effect covers the territories of those participating Member States in which the UPCA has taken effect at the date of registration of unitary effect of a patent by the EPO. It is also likely that the outstanding ratifications of the UPCA will not take place all at once but rather successively. Consequently, there will be different generations of Unitary Patents with different territorial coverage.

The territorial coverage of a given generation of a European Patent with unitary effect will stay the same for its entire lifetime, irrespective of any subsequent ratifications of the UPCA after the date of registration of unitary effect. In other words, a given Unitary Patent’s territorial coverage will not be extended to other Member States which ratify the UPCA after the EPO has registered its unitary effect. 

The participating Member States covered by a given Unitary Patent will be listed in the Register for Unitary Patent Protection.

The Unitary Patent architecture

Pre-grant phase (including opposition, limitation, and revocation proceedings) of a Unitary Patent is based on the EPC. Therefore, the pre-grant phase for Unitary Patents is exactly the same as for classic European Patents.

Grant procedure for patents

The EPO is entrusted by the participating Member States with the administration requests for a Unitary Patent (= requests for unitary effect).

Unitary Patent Division at the EPO

  • A “Unitary Patent Division” has been set up at the EPO as a special department to deal with Unitary Patents.
  • It is responsible for all the EPO’s additional tasks relating to Unitary Patents referred to in Article 9(1) Regulation (EU) No 1257/2012 and entrusted to it by the participating Member States under Rule 1(1) UPR.
  • The EPO departments entrusted with the procedures laid down in the EPC, namely the search, examining, and opposition divisions, the Legal Division, and the boards of appeal, will have no responsibilities in relation to Unitary Patents.
  • Actions against decisions of the Unitary Patent Division must be brought before the Unified Patent Court (see Articles 32(1)(i) and 47(7) UPCA) and not before the EPO boards of appeal.

Main features of a European Patent with unitary effect (Art. 3 Regulation (EU) No 1257/2012)

  • A European patent with unitary effect shall have a unitary character. It shall provide uniform protection and shall have equal effect in all the participating Member States who have ratified the UPCA.
  • A European patent with unitary effect may only be limited, transferred or revoked, or lapse, in respect of all the participating Member States who have ratified the UPCA. Dropping of individual designated contracting states as with the classic European Patent is not possible with the Unitary Patent.
  • A European patent with unitary effect may be licensed in respect of the whole or part of the territories of the participating Member States who have ratified the UPCA.
  • The unitary effect of a European patent shall be deemed not to have arisen to the extent that the European patent has been revoked or limited.

The transitional regime: for which European patents can a Unitary Patent be requested?

A Unitary Patent may be requested for any European patent granted on or after the date of application of Regulations (EU) No 1257/2012 and (EU) No 1260/2012. These regulations will apply from the date of entry into force of the UPCA.  

In other words, Unitary Patents can only be requested for new European Patents whose granted after the entry into force of the UPCA. Thus, if necessary, the applicant could try to delay the grant of the European Patent until the entry into force of the UPCA. Alternatively, the applicant could file a divisional European application which is also time-consuming.

Requirements for obtaining a Unitary Patent

First of all, in order to be eligible for registration as a Unitary Patent, a European patent must have been granted with the same set of claims in respect of all participating Member States (Rule 5(2) UPR; Article 3(1) in conjunction with Recital 7 Regulation (EU) No 1257/2012). Therefore, it is important not to withdraw the designation of any of the participating Member States because this would rule out obtaining a Unitary Patent.

As to the procedure for obtaining a Unitary Patent, a formal “request for unitary effect” must be filed with the EPO in writing by the European patent proprietor (Rule 5(1) UPR). This request must be filed no later than one month after the mention of the grant of the European patent is published in the European Patent Bulletin (see Rule 6(1) UPR; Article 9(1)(g) Regulation (EU) No 1257/2012; Article 97(3) EPC).

However, contrary to the normal EPC regime, where any of the three EPO official languages may be used in written proceedings (see Rule 3(1) EPC), requests for unitary effect have to be filed in the language of proceedings (see Article 9(1)(g) Regulation (EU) No 1257/2012 and Rule 6(2) UPR; see also point 58 above).

A Unitary Patent can also be requested for a European patent granted to multiple proprietors in respect of the same or different participating Member States as long as it was granted with the same set of claims in respect of all those participating Member States.  

Only, however, if the request for unitary effect has been duly signed by all the proprietors (or their representative(s)) is their common representative entitled to act for them all. Multiple proprietors need not be listed in the request for unitary effect in the same order as in the request for the grant (EPO Form 1001) or in the European patent specification.

Translation of the Unitary Patent

During a transitional period (see below) the request for unitary effect must also contain a translation of the European patent as required under Article 6(1) Regulation (EU) No 1260/2012, as follows: 

  • where the language of the proceedings is French or German, a full translation of the specification of the European patent into English; or 
  • where the language of the proceedings is English, a full translation of the specification of the European patent into any other official language of the European Union. 
Language and Translation required for Unitary Patent

The translated text has no legal effect and is for information only.

The transitional period is at least 6 years and max. 12 years, see Art. 6 Regulation (EU) No 1260/2012. After the transitional period a translation is no longer necessary, see Art. 3(1) Regulation (EU) No 1260/2012.

Compensation for translation costs is available for small and medium-sized enterprises (SMEs), natural persons, non-profit organizations, universities, and public research organizations having their residence or principal place of business in an EU Member State.

Costs of a Unitary Patent after Grant

In the pre-grant proceeding, the costs for a Unitary Patent and a classic European Patent are the same. For a Unitary Patent, a uniform annual renewal fee has to be paid with the EPO. According to the table below, you can see the renewal fees of the Unitary Patent after the grant. They are compared in this table to the renewal fees of a Unitary Patent together with a national UK-Patent, a Classic European Patent validated in DE, FR, UK and a Classic European Patent validated in DE, FR, UK, IT.

fee overview for unitary patent

The annual fees for the first 10 years – the average life of a patent according to the EPO – would amount to less than € 5,000 for a Unitary Patent. The other options are roughly similar in terms of costs in this timeframe.

The costs for a payment service provider will be less for the single renewal fee of the Unitary Patent compared to possible multiple renewal fees of a classic European Patent. Therefore, the renewal fees are competitive in this timeframe, especially if more than three countries are designated for a classic European patent.

Further, a plurality of validation costs is not necessary for the Unitary Patent compared to the respective validation costs for the designated countries of the classic European Patent. For example, the validation costs for DE, FR, UK of a classic European Patent are around € 150 respectively.

The applicable law for Unitary Patents as an object of property

A European patent with unitary effect can be an object of property e. g. for license agreements, transfer, corporate restructurings, etc. Therefore, the applicable law in such cases is important.

According to Art. 7 Regulation (EU) No 1257/2012 a European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating Member States as a national patent of the participating Member State in which that patent has unitary effect and in which, according to the European Patent Register:

(a) the applicant had his residence or principal place of business on the date of filing of the application for the European patent; or

(b) where point (a) does not apply, the applicant had a place of business on the date of filing of the application for the European patent.

This means, if the applicant has his principal place of business e. g. in Germany, then the European patent with unitary effect as an object of property is treated as a national German Patent and German law is applicable.

In case of several applicants – e. g. two or more persons are entered in the European Patent Register as joint applicants -, point (a) above shall apply to the joint applicant indicated first. Where this is not possible, point (a) above shall apply to the next joint applicant indicated in the order of entry. Where point (a) above does not apply to any of the joint applicants, point (b) above shall apply accordingly. For example, if the first applicant has his principal place of business in France and the second applicant in Germany, then the European patent with unitary effect as an object of property is treated as a national French Patent

Therefore, if there are joint applicants from different countries the order of the applicants in the Patent Register plays an important role. The order can be changed in the granting proceeding of the European patent application.

Where no applicant had his residence, principal place of business, or place of business in a participating Member State in which the patent has unitary effect, the European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating Member States as a national patent of the State where the European Patent Organisation has its headquarters in accordance with Art. 6(1) EPC, namely Munich in Germany. In other words, for applicant(s) outside the EU, German law applies for the European patent with unitary effect as an object of property. Germany is advantageous because there are comparatively few formal hurdles. For example, patents can be transferred orally in Germany.

This referral mentioned above is static and cannot be changed by transfer of ownership. Example: Patent proprietor as first applicant A based in the USA transfers his European patent with unitary effect to French company B, German law remains applicable for the European patent with unitary effect as an object of property.

Conflict of the Unitary European patent with national rights of earlier date

For a European patent application that is intended to be validated as a classic European patent after grant, where a national right of an earlier date exists in a contracting state designated in this European patent application, there are several possibilities of amendment open to the applicant. First, that designation may be withdrawn from the application for the contracting state of the national right of an earlier date. Second, for such a state, the applicant may file claims which are different from the claims for the other designated states. Third, the applicant can limit the existing set of claims in such a manner that the national right of an earlier date is no longer relevant. For a European patent application that is intended to have unitary effect after grant, only the third option is applicable. This means an applicant for a European patent with unitary effect has to amend the set of claims of such an application accordingly. You can find further information in the Guidelines for Examination in the EPO for a classic European Patent.

In a possible action for revocation there is an important difference between a classic European Patent and a European Patent with unitary effect, please see the following example:

21.08.2023: DE application from applicant A filed.

29.03.2024: EP application from applicant B filed (first applicant from Berlin).

21.02.2025: DE application from applicant A (novelty-destroying for B) is disclosed.

20.03.2025: EP application from applicant B is granted.

1st possibility: The EP application is validated as a classic European Patent (EP-B) for several countries, including Germany (with opt-out)

In a nullity proceeding (action for revocation) EP-B is revoked for DE only before the German Federal Patent Court, because of the national right of an earlier date in DE. In all other validated countries, EP-B remains in force because only in Germany the DE application A is opposed to a national German patent respectively to a European Patent validated in Germany. In the other validated countries, the national right of an earlier date in DE is not relevant.

2cd possibility: The EP application is validated as European Patent (EP-B) with unitary effect

In a nullity proceeding (action for revocation) before the UPC, the EP-B is revoked in respect of all the participating Member States who have ratified the UPCA because of the DE application A as a national right of an earlier date. This is because the first applicant is from Berlin, Germany and therefore, according to Art. 7 Regulation (EU) No 1257/2012 the EP-B shall be treated as a national German patent (please see also above under “The applicable law for Unitary Patents as an object of property”).

Advantages of the European Patent with unitary effect

  • Centralized pre-grant procedure after grant and not only until grant, as in classic European patents.
  • Business-friendly level of renewal fees and less complexity in paying renewal fees compared to classic European patents.
  • No parallel litigation in the contracting members having already ratified the UPCA. Litigation is centralized at the UPC.
  • The European patent with unitary effect provides inventors with uniform and comprehensive territorial protection in the contracting members having already ratified the UPCA.
  • Validation of the Unitary Patent in several states is not necessary. The validation for a classic European Patent is a time-consuming and complex administrative process, e.g. translations have to be filed, fees charged by national patent offices, and attorney fees arise. In contrast, for obtaining the European Patent with unitary effect patent proprietors file a single request with the EPO.
  • For the European patent with unitary effect one single renewal fee has to be paid to the EPO. The fee has to be paid in one currency and under a single legal regime as regards deadlines and admissible means of payment. In contrast, renewal fees for the classical European Patent vary in amount, have to be paid to different national offices operating under different legal requirements.
  • The renewal fee level is very attractive and business-friendly. The total fees for the first ten years – which is the average lifetime of a patent – amount to less than EUR 5000. There is a 15% reduction in renewal fees for patent proprietors who file a statement on a license of right with the EPO.
  • Reduced Costs for small and medium-sized enterprises (SME) and other small entities.
  • Management of a European patent with unitary effect, e. g. transfers, licenses, and other rights, no longer need to be registered country by country in the national patent register with multiple local patent attorneys. Instead, a single registration entered in the Register for Unitary Patent Protection centrally administrated by the EPO is sufficient.
  • According to Rule 1(1) UPR the EPO shall be bound by decisions handed down by the UPC in actions brought under Art. 32(1)(i) UPCA. 


The Structure of the UPC

The UPC is bound by EU law in the same way as any national court, Art. 1 UPCA. Therefore, the UPC shall cooperate with the Court of Justice of the European Union to ensure the correct application and uniform interpretation of Union law, as any national court, following Article 267 TFEU (TFEU = Treaty on the Functioning of the European Union) in particular, please see Art. 21 UPCA.

The UPC is competent (Art. 3 UPCA) to any:

(a) European patent with unitary effect,

(b) Supplementary protection certificate issued for a product protected by a patent,

(c) Classic European patent which has not yet lapsed at the date of entry into force of the UPCA or was granted after that date, without prejudice to Art. 83 UPCA (no opt-out) and

(d) European patent application which is pending at the date of entry into force of this Agreement or which is filed after that date, without prejudice to Art. 83 UPCA (no opt-out).

The territorial scope of UPC decisions:

  • European patent with unitary effect: all participating Member States in which the UPCA has taken effect at the date of registration of unitary effect of this patent by the EPO, please see Art. 5 and 18 Regulation (EU) No 1257/2012.
  • Classic European patent: in all member states where this patent is in force, please see Art. 34 UPCA.
Structure of the UPC

The court of 1st instance comprises a central division as well as local and regional divisions. It is competent inter alia for actions for infringement or revocation, see Art. 32 UPCA. In general, the jurisdiction of the court depends on the defendant’s residence or place of infringement, please see Art. 33 UPCA for further information. Local divisions are for example in: Milan, Vienna, Helsinki, Paris, The Hague, Brussels, Hamburg, Mannheim, Düsseldorf, Munich.

The central divisions are competent for isolated actions for revocation (Art. 33 (4) UPCA) and actions for declarations of non-infringement of patents and supplementary protection certificates. It also handles infringement actions if infringement takes place where no local or regional division is located or the defendant has his residence outside the territory of the Contracting Member States (Art. 33 (1) b UPCA). Because of the Brexit, London’s competence shall be divided between Paris and Munich until a new regulation is decided, wherein a decision will be issued probably during the implementation of the PPA.

The Court of Appeal in Luxembourg is competent for an appeal against a decision of the Court of First Instance, see Art. 73 UPCA.

The Court Registry is competent of the administration of proceedings and documents (all document traffic with the court in electronic form), verification of formal requirements, online register of proceedings, entire procedural file accessible to anyone, restriction of disclosure-only upon justified request and only to confidential information, please see Art. 22 ff UPCA.

Benefits of the UPC

  • The UPC provides proprietors with a means of avoiding the high costs, risk, and complexity associated with multiple litigations in different jurisdictions.
  • The UPC has specialized and highly qualified judges (including technically qualified judges) who will establish harmonized case law and increase legal certainty.


The Transitional Period regarding the competence of the UPC (Opt-out)

In general, when the UPCA has taken effect, the UPC is competent for European patents with unitary effect and for classic European patents. Exception: There is a seven-year transitional period, Art. 83 (1) UPCA, during which an action for infringement or for revocation of a classic European Patent can also be brought before national courts (the transitional period can be prolonged by up to seven years, see Art. 83 (5) UPCA). A proprietor of or an applicant for a classic European patent has the possibility to opt-out from the exclusive competence of the UPC, please see Art. 83 (3) UPCA. In other words, the patent proprietor of a classic European patent can exclude the parallel jurisdiction of the UPC and therefore opt for the exclusive jurisdiction of the national courts. The patent proprietor of a classic European patent cannot determine the sole jurisdiction of the UPC.

The UPC is competent for action for infringement or for revocation of European patents with unitary effect without exception. During the transitional period, national courts remain competent for all proceedings concerning classic European patents.

During the transitional period for classic European Patents without opt-out, a combination of national courts and the UPC is probably possible as desired. E. g. for a classic European Patent an action for infringement could be filed with the regional court Düsseldorf (Germany) and at the UPC Regional Division Milan (Italy) for all designated countries except Germany.

Transitional period for classic European Patents

Preconditions for Opt-out

A proprietor of or an applicant for a classic European patent granted or applied (not for a European patent with unitary effect) has the possibility to opt-out under the following preconditions (Art. 83(3) UPCA):

  • Action has not been brought before the UPC yet. This means that bringing a negative affirmative action for a right before the UPC renders later opt-out effectless.
  • The opt-out has been notified to the Court Registry of UPC by the latest one month before the expiry of the transitional period.

Legal issues in the context of the opt-out

The opt-out shall take effect upon its entry into the register. Thus, the application for opt-out alone is not sufficient to effectively declare an opt-out. The registration of the opt-out via a CMS is probably very fast.

According to R. 5.1(b) RulesUPC, the application to opt-out has to be made in respect of all of the Contracting Member States for which the classic European patent has been granted or which have been designated in the application. Therefore, a selection decision by the patentee is not possible for opt-out.

Where the classic European patent or application is owned by two or more proprietors or applicants, all proprietors or applicants have to lodge the application for opt-out, please see R. 5.1(a) RulesUPC. Where the person lodging the application for opt-out is not recorded as the proprietor or applicant in the registers, the person shall lodge a declaration that he is the proprietor. In other words, all co-owners of a classic European patent or application must file the opt-out request. This could lead to disputes between co-owners. If there is a proprietor who is not listed as an applicant and who appears later, then the opt-out is only effective from the date of the opt-out request of the last “true proprietor” becomes effective.

If there is an incorrect application for opt-out, the opt-out only becomes effective with correction and from the date of correction, please see R. 5.5 RulesUPC.

For a (classic) European patent application opt-out is possible. If the European patent application is granted and validated as a European patent with unitary effect, then the opt-out request is deemed to be withdrawn with effect for the territory of the European patent with unitary effect, please see R. 5.9 RulesUPC.

If a divisional application is filed based on a (classic) European patent application, then the opt-out of the European patent application does not apply to the divisional application.

Ratification of an EU Member State after the opt-out

If an EU Member State ratifies the UPCA after opt-out of a classic European patent, e. g. Spain, then it is up to now unclear, whether the opt-out does also apply to the Spanish part of the classic European patent (if the Patent is validated in Spain). A uniform opt-out (i.e. also for Spain) is considered to be very likely.

“Sunrise Period” for Opt-out

The opt-out can be earmarked during the “Sunrise Period” to the start of the UPC system, please see R. 5.12 RulesUPC. Therefore, during the Sunrise Period applications for opt-out accepted by the Court Registry before the entry into force of the UPCA shall be treated as entered on the register on the date of entry into force of the UPCA. That allows patentees to file opt-outs for their existing classic European patents granted or applied before the UPCA comes into effect. Therefore, third parties cannot file claims against these patents in the UPC immediately on the date of entry into force of the UPCA (what would impede an opt-out). It is expected that the Sunrise Period takes place 3 months before the date of entry into force of the UPCA.

Sunrise Perios and Transistional Perios for UPCA

Opt-in (withdrawal from the opt-out)

The opt-out can be withdrawn by means of a “Request for withdrawal from the use of the opt-out”, please see R. 5.9 and 5.9 RulesUPC. This is called “opt-in”. The possibility to opt-in is unlimited in time – i.e. even after the end of the transitional period regarding the competence of the UPC. The withdrawal from the use of opt-out can be essentially declared according to the same formal rules compared to opt-out, i.e. in particular for each classic European patent separately and by effecting an entry in the register.

The preconditions for opt-in are:

  • Opt-out has been declared previously.
  • No proceeding is pending before a national court. I.e. a possible infringer, fearing an infringement action before the UPC, can file a national negative declaratory action to harm the opt-in.
  • Even a completed proceeding before a national court harms the opt-in.

After the opt-in, a further opt-out is not possible (no “opt-out again”).

The opt-in can only be declared for all Contracting Member States for which the classic European patent has been granted or which have been designated in the application, please see R. 5.7 RulesUPC. Hence, a selection decision by the patentee is not possible for opt-in.

Implementation of opt-out

The application to opt-out has to be declared separately for each classic European patent or application, according to previous plans. No fees are charged for the application to opt-out, but considerable organizational costs. The application to opt-out has to be filed with the Court Registry (via CMS) and not with the EPO, both after entry into force of the UPCA and during the sunrise period. Detailed procedural steps will be described at www.unified-patent-court.org.

Suggestions re Opt-out

  • If you are an exclusive licensee with the right to sue, then a discussion with the licensor should be sought if you wish to opt-out.
  • If you are a licensor you can check whether royalties are payable “as long as a contract property right is in force”. In such a case, opt-out should be considered.
  • The more license agreements exist for a European patent, the more likely it is to opt-out.
  • If you are negotiating a license agreement, please think of opt-out/validation for a European Patent with unitary effect.
  • Co-owners of a classic European Patent must opt out together. Therefore, if you are one of several patent owners you should contact your co-owners.
  • If you have several IP rights to “the same” invention, one European Patent should allow access to the UPC, one IP right to a national court. Therefore, if necessary, opt out of one IP right.


Approach with opt-out for “crown jewels” and “non-crown jewels”

Crown jewels are:

  • basic European patents with a long term,
  • European patents already infringed by competitors,
  • the product manufactured according to European patent is available everywhere in Europe,
  • the product manufactured according to patent contributes significantly to the company’s turnover,
  • the product manufactured according to the patent has a high profit-margin.

For a crown jewel, opt-out is recommended to avoid a centralized revocation via the UPC.

A strong European patent (e.g. because of successful opposition proceedings) which is not a crown jewel, access to the UPC could be maintained. Therefore, a revocation is unlikely and opt-out is rather not recommended.

For weak European patents, a request for opt-out should be filed to avoid a centralized revocation via the UPC. Afterward opt-in is possible (under certain circumstances, see above).

circumstances for opt-out and opt-in afterwards

Strategic considerations on the European Patent with unitary effect

The European patent with unitary effect offers new possibilities. If it is to be in force in a large number of European countries, it offers a cost advantage compared to the classic European Patent. For example, a European patent with unitary effect is useful if it protects a pharmaceutical product or if it concerns a product for a large aftermarket (for example in the automotive area). A major cost advantage exists for 6 countries or more.

With a European patent with unitary effect a central cross-border attack against infringers in one proceeding at the UPC is possible. This is also possible for classic European patents if no opt-out is requested. But in return, there is the danger of a centralized revocation via the UPC of the European patent with unitary effect or the classic European patent without opt-out.

For important inventions, a strategic approach could be to file a divisional application in the examination procedure at the EPO parallel to a parent/previous application to obtain a European patent with unitary effect and a (slightly modified) classic European patent (with opt-out) or the other way around. This would be lead to strong protection since the European patent with unitary effect has to be attacked via the UPC and the classic European patent (with opt-out) via the respective national courts. Alternatively or in addition to the divisional application, a national patent (e.g. in Germany) could have been filed parallel, and/or a Utility Model can be branched off.

Prohibition of double patenting

At the moment (before the start of the Unitary patent system) Art II § 8 German International Patent Convention Act (IntPatÜbkG) stipulates that a national German patent loses its effect (ex nunc) when for the applicant or his successor a European patent with the same priority for the same invention has been granted. Therefore, a double patenting of a national German patent and a European patent having the same priority and the same invention is not possible (at the moment). When the UPCA is in force, then a new Art. II § 8 IntPatÜbkG is applied. Accordingly, there is no longer a prohibition of double patenting for a national German patent and a European patent with unitary effect or a classic European Patent (no opt-out) having the same priority and the same invention. This is due to the fact, that the UPC is competent for these European Patents and national German courts for the national German patent. Only, if opt-out is registered for a classic European patent, then there is still a prohibition of double patenting for the national German patent and the classic European patent (with opt-out). The new Art. II § 8 IntPatÜbkG applies to all national German patents granted after entry into force of the UPCA.

Therefore, parallel maintenance of a national German patent and a European patent with unitary effect or a classic European patent without opt-out is an option when the UPCA is into force.

Timeline for the Implementation of the Unified Patent System

Timeline for the Implementation of the Unified Patent System

Supporting users in an early uptake of the Unitary Patent by the EPO

The EPO has decided to introduce two transitional measures applicable to European patent applications having reached the final phase of the grant procedure.

These measures will be made available ahead of the entry into force of the Unitary Patent system, as of the date of deposit of Germany’s instrument of ratification of the UPCA. Pursuant to Article 89(1) UPCA, this date lies between 3-4 months before the entry into force of the UPCA and will be communicated on the EPO’s website.

First measure:

The EPO will allow early requests for unitary effect as of the date Germany deposits its instrument of ratification of the UPCA. Moreover, early requests for unitary effect may only be filed for European patent applications in respect of which a communication under Rule 71(3) EPC has been despatched. The possibility to file early requests will only be available until the start date of the Unitary Patent system. For example, if Germany deposits its instrument of ratification of the UPCA on May 20, 2022, then the UPCA enters into force on September 1, 2022. Between this periods, the applicant can file an early request for unitary effect if a due date for responding to a communication under Rule 71(3) EPC falls within this period.

The EPO would examine this early request and register unitary effect very soon after the publication of the mention of the grant of the European patent in the European Patent Bulletin if all requirements are met.

In other words, when a communication under Rule 71(3) EPC is “pending” after Germany deposits its instrument of ratification of the UPCA, then the applicant can file an early request for unitary effect.

Second measure:

The second transitional measure will provide the possibility for the applicant to request a delay in issuing the decision to grant a European patent after despatch of communication under Rule 71(3) EPC by the Office and before approving the text intended for grant. This will make a European patent eligible for Unitary Patent protection that would otherwise have been granted before the start of the new system and will avoid that applicants miss opportunities to obtain a Unitary Patent in the transitional phase.

The EPO will allow requests for a delay in issuing the grant as of the date Germany deposits its instrument of ratification of the UPCA. Moreover, a request for delay may be validly filed only for European patent applications in respect of which the applicant has been informed of the text intended for grant by a communication under Rule 71(3) EPC but has not yet approved that text.

For further information in regard to the first and second measures, please visit the EPO website or contact us directly.

Our specialized European Patent Litigators support you in the process and answer all your questions.

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You can download a PDF version of this whitepaper in the following languages: English, Japanese.

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Announcement New Partners

Announcement New Partners_Jan 23

We are pleased to announce that as of January 2023 our firm has two new partners:

Mr. Tianhao Miao

Tianhao Miao, born in 1988, is working in the field of intellectual property law since 2015.

Main focus of his legal activities is on patent examination, opposition, and nullity proceedings before the European Patent Office, the German Patent and Trademark Office, the German Patent Court and the Chinese Patent Office.

Further key aspects are infringement opinions, due diligence procedures, FTO searches and analysis, trade fair IP rights protection as well as E-Commerce IP rights protection.

 

As European, German, and Chinese patent attorney, he is very familiar with the differences and similarities of patent laws between the different jurisdictions and able to provide the best possible service to large international companies.

His technical areas of expertise are mechanical engineering, automotive engineering, medical technology, new energies, and telecommunications.

Mr. Michael Wegerer

Michael Wegerer, born in 1989, is working in the field of intellectual property law since 2014.

Main focus of his legal activities is on obtaining and defending technical and non-technical intellectual property rights, opposition, appeal, utility model cancellation and invalidity proceedings, infringement, validity and freedom-to-operate opinions, and licensing agreements.

Due to an internship of several months in an IP company in Japan and due to his many years of experience in patent examination procedures worldwide for domestic clients he is very familiar with differences and similarities of patent laws between different jurisdictions and is thus able to use this knowledge already in the elaboration of new patent applications, leading to efficient patent examination procedures worldwide.

His technical areas of expertise are medical technology, automotive engineering, materials technology, manufacturing technology and general mechanical engineering.

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Basic Decision on Computer Implemented Inventions

The Enlarged Board of Appeal of the European Patent Office discussed older case law in its decision G 1/19 about computer implemented inventions, including decision T 1351/04. This decision is discussed with respect to “data intended for controlling a technical device”. According to G1/19 this data may be considered to have technical character because it has the potential to cause technical effects. In the following, we will take a closer look at this relevant decision T 1351/04.

The appeal in the case T 1351/04 is against the decision of the examining division to refuse the European patent application No. 02 258 100.3.

Subject matter of the application in suit

The claimed subject matter is in regard to create a specific index-file from a csv-file (e.g. an Excel-file). By employing the index-file, it is possible to significantly increase the speed of data extraction from a large-size csv-file. In the figure 1 below, you can see an example of the csv-file (on the right hand) and of the index-file (on the left hand).

The claimed subject matter is in regard to create a specific index-file from a csv-file (e.g. an Excel-file).
Fig. 1: example of the csv-file (on the right hand) and of the index-file (on the left hand)

For the claimed subject matter, the csv-file requires records containing fields forming different hierarchical levels, see figure 1 above on right hand side (top hierarchical levellower hierarchical level). The index-file is in principle built as a tree structure. This means, in the index-file information of the csv-file are connected/arranged in a tree structure. This looks schematically as follows in figure 2:

Schematic view of tree structure

Because the records in the index-file (based on the csv-file) are arranged in the tree structure, the respective record is called a “node”. When you look in figure 1 right hand, you can see that in the csv-file there are records like “COOLING AND HEATING” and “HOUSEWORK” as the top hierarchical level. Depending on these there are further records respectively. The hierarchical records in a row of the csv-file are key character strings. The hierarchical record of the csv-file is mapped in the tree structure of the index-file. At each node there is also so-called management information, which includes information about the starting position and the number of corresponding records in the csv-file to be searched. This information permits the desired records of the csv-file to be retrieved directly when the node having the desired key character string has been found (cf para. [0042] of the description). When only keys of high-level nodes are used it is thus not necessary to follow the tree structure all the way down to the leaf nodes in order to retrieve the desired record information.

In other words, the hierarchical structure of the csv-file is transformed in the tree structure of the index-file, wherein addition information like starting position and number of corresponding records are stored. With this arrangement information of the csv-file can be retrieved by the index-file faster.

Is the subject matter of the application technical?

Yes, since the claimed method requires the use of a computer.

Features of the subject matter contributing to the technical solution of a technical problem

To assess the inventive step it must first be considered in how far the features of the claim contribute to the solution of a technical problem. The board took a look at the following feature since it is a distinguishing feature over the prior art:

“each node in the index includes the starting position information and number information used for retrieving records”.

As mentioned above, these features are part of the index-file and are called management information.

According to the description of the present application, the invention relates to a method for “promptly searching for and extracting data from a file” (cf paragraph [0001]). The data searched for can be of any kind, eg of a commercial nature as in the described embodiment, and thus have no technical relevance in themselves.

The data are stored as records having certain “start positions“, ie memory addresses in the file to be searched. The computer reads these addresses in the form of the “management information” in the index-file and retrieves the associated data from the csv-file to be searched. The management information thus controls the computer by directing it to a certain memory location.

Functional data, intended for controlling a technical device, are normally regarded as having technical character. The management information contained in the present claims should be regarded as contributing to the technical character of the search method according to the Board of Appeal.

It follows that the mentioned feature that has a direct bearing on how the search is conducted should be considered for inventive step.

Is the data decisive?

Further, in the decision the BoA refers to the decision T 52/85. This seems to suggest that as long as a claimed method for searching a data file is concerned with the way a computer performs the search, it may be technical. If however the kind of data is decisive, the method’s contribution is nontechnical (cf T 52/85, point 5.2). As noted above, in the present case the kind of data searched for is of no importance.

Practical advice

In order to support possible argumentation of the technical character of claimed subject matter comprising “functional data” it would be beneficial, when the functional data is not only disclosed in a abstract manner but also in regard to the machine-level of the computer. E.g. as mentioned above it could be disclosed that the management information controls the computer by directing it to a certain memory location.

Further information

Claim 2 of the main request in the appeal:

computer-executable file search method for searching a file to be searched (3),

said file to be searched (3) including records having fields allocated to each of a plurality of hierarchical levels and being constructed so that records having the same key character string in a field at the same hierarchical level are arranged in series and wherein for each record, the first field is the top hierarchical level, and subsequent fields form lower hierarchical levels,

the method comprising computer-executed steps of:

  • creating (S3) an index file (5) using the method of claim 1;
  • accepting (S5, S6; S10, S11)) an instruction to search for data relating to a specified key character string over said file to be searched (3), the instruction including selection of either a data extraction output or a drill-down business form output;
  • retrieving (S7; S12, S13) from said index file (5) management information about one or more records related to the specified key character string on said file to be searched;
  • extracting (S8; S14) data of the one or more records from said file to be searched (3); and
  • outputting (S9) the extracted data;

wherein the retrieving and extracting steps comprise

when the data extraction output is selected, retrieving (S7) start position information and number information as management information about records related to the specified key character string and extracting (S8) data of a number of records specified by the number information from a position specified by the start position information;

and when the drill-down business form output is selected, retrieving (S12, S13), based on the pointer, a start position of a record of the node management information of the lower hierarchical level, and extracting (S14) data of the record based on the retrieved start position of the record.

If you would like to have more information, please contact us. We are pleased to support you.

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Overview of the new European Unitary Patent System, in particular with regard to the opt-out request

Currently, the new European Unified Patent System is being implemented, which is planned to start on April 1, 2023. The introduction of the Unified Patent System will have an impact on all European patents, including “old” European patents that have already been granted and are in force. Please find below more information on the new Unified Patent System.

After the start of the European Unified Patent System, an applicant of a European patent application can choose between the following options after grant:

  • European Unitary Patent which will be uniformly in force in (currently) 17 EU states, including Germany, France, and Italy. In Fig. 1 below, these are the EU states marked in blue.
  • Classic European Patent, which will be validated in one or more of the 39 member states (including Montenegro as of October 1, 2022) of the European Patent Organization, as before. In Fig. 1, these are all states marked in blue and green.
  • Mixture of the European Unitary Patent, which will be in force in 17 EU states (see Fig. 1 in blue), and the Classic European Patent, which will be validated in one or more of the remaining 22 member states of the European Patent Organization (see Fig. 1 in green).


Figure 1: blue and green: 38 EPC member states; blue : 17 EU states of the unitary patent

The new Unified Patent System provides for a Unified Patent Court. Patent infringement proceedings or nullity proceedings relating to a Unitary Patent can be conducted centrally via this court. The Unified Patent Court is responsible for European Unitary Patents and for classic European Patents and thus also for “old” European Patents which are still in force. However, in the case of a classical European Patent, during a transitional period of between 7 and 14 years after the start of the Unified Patent System, the national courts in the countries where the classic European Patent is validated will have jurisdiction in addition to the Unified Patent Court as before. In other words, for example, patent infringement proceedings in the case of a Unitary Patent will take place centrally before the Unified Patent Court, whereas in the case of a classic European Patent, a choice can be made between the Unified Patent Court and the national courts.

A patentee of a classic European Patent has the possibility – during the transitional period mentioned above – to exclude the jurisdiction of the Unified Patent Court. For this purpose, it is necessary to file a so-called “opt-out-request” for the classic European Patent. After the exclusion of the Unified Patent Court due to an opt-out-request, the national courts will continue to have exclusive jurisdiction for the classic European Patent.

Fig. 2 below shows the different possibilities.

Figure 2: different possibilities regarding a European patent protection

An opt-out-request can already be filed 3 months before the start of the Unified Patent system in the so-called “sunrise period”. It is currently planned that the sunrise period starts on January 1, 2023. The question as whether an opt-out-request should be filed for a classic European Patent depends on the individual case. An opt-out-request is only possible as long as no action is pending before the Unified Patent Court.

Patentees and applicants of classic European Patents should take the following steps with regard to the new Unified Patent System:

  • A patent proprietor of a classic European Patent should be aware in advance – i.e. preferably before the start of the sunrise period – whether an opt-out-request is necessary. If so, this should be filed during the sunrise period.
  • If a classic European Patent has several patentees, they must jointly decide on a possible opt-out-request. They should therefore reach an agreement – preferably in writing – regarding a possible opt-out-request.

 

If you have any questions about the new Unified Patent System – for example, about the steps mentioned above – we will be pleased to answer them personally.

You can also find more information on the new Unified Patent System in our whitepaper or directly download the pdf.

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Whitepaper: Basics of the European Unified Patent System

Since January 19, 2022, the Unified Patent System in Europa has been ramped up. On this day EU Member Austria has ratified the Unified Patent Court Agreement (UPCA). Now enough EU Members are on board for the new system and the execution of the “Protocol to the Agreement on a Unified Patent Court on provisional application (PPA)” has started. The implementation of the PPA will lead to the gradual launch of the system, for example, judges are elected and appointed. At the moment, Germany is acting as a “Gatekeeper”. As soon as the system is ready, Germany will file its ratification certificate and 3-4 months later (according to Art. 89(1) UPCA) the Unified Patent System will start.

The introduction of the Unified Patent System has an impact on all European patents, also on “old” European patents which are already granted and in force. Patentees and applicants of European patents and applications should be aware of the implications and respond as needed. This white paper is intended to provide a basic overview of the European Unified Patent System and to support the patentees and applicants in possible steps.

 

You can download a pdf version of this whitepaper in the following languages: english, japanese

 

 

Listing of Agreement, Regulations, Rules, and Convention regarding the Unitary Patent

First of all, the legal basis is given here, which is referred to in the rest of the document.

The Unitary Patent is based on several legal provisions. First of all, there is the “Unitary Patent Package“:

The UPCA creates a new court (Unified Patent Court) and new substantive standards of patent law. The two Regulations create a Unitary Patent, namely a “European Patent with unitary effect” / “Unitary Patent”. The European Patent changes from a “bundle patent” to a (small) “unitary patent”.

Furthermore, there is secondary legislation:

Then the European Patent Convention (“EPC”) has to be considered regarding the Unitary Patent. The EPC is the Convention on the Grant of European Patents of 5 October 1973, including any subsequent amendments.

Classification of the European countries regarding the Unitary Patent

The UPCA is open to accession by any of the EU Member States of the European Union. At present, there are 27 EU Member states: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, and Sweden.

The UPCA is not open to states outside of the European Union, such as UK. Up to date, all EU Member States except Spain, Poland and Croatia have signed the UPCA. Therefore, 24 EU Member States have signed the UPCA, wherein these Member States are called “Contracting Member States” according to Art. 2(c) UPCA (or “Participating Member States” according to Art. 2 Regulation (EU) No 1257/2012).

From the 24 Contracting Member States 17 have already ratified the UPCA (current status of ratification): Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden. Please note: the Unitary Patent benefits from unitary effect in these countries who have ratified the UPCA.

The 27 EU Member States are in addition members of the European Patent Organisation. All in all there are 38 members of the European Patent Organisation, e.g. including UK. See all members here.

In the figure below all the 38 members of the EPO are shown (blue and green marked countries).
The 17 contracting members having already ratified the UPCA are marked blue.

Members of EPO ratified UPCA
Members of EPO ratified UPCA (blue)

Current Status

The UPCA has been ratified by enough Contracting Member States. Therefore, the “Protocol to the Agreement on a Unified Patent Court on provisional application (PPA)” has been in force since January 19, 2022.  The implementation of the PPA will lead to the gradual launch of the system:

  • Initially, institution building, the election of the Administrative Council, election and appointment of judges, adoption of the Rules of Procedure and other legal texts.
  • Opt-out declarations are to be able to be submitted in advance to the Registry of the Unified Patent Court.

Germany has ratified the UPCA but has not filed the ratification certificate, yet. When it is clear that the UPC will be operational upon the entry into force of the UPCA the final ratification of the Agreement by Germany can take place. Therefore, at the moment, Germany is serving as a “gatekeeper” for the Contracting Member States to ensure a proper process for the implementation of the PPA.

In summary, the Unitary Patent system will enter into force of as of the date of deposit of Germany’s instrument of ratification of the UPCA. Pursuant to Art. 89(1) UPCA, this date lies between 3-4 months before the entry into force of the UPCA and will be communicated on the EPO’s website. If Germany for example deposits its instrument of ratification on 20 May 2022, the UPCA would enter into force on 1st September 2022. On the same day, the two Regulations (Regulation (EU) No 1257/2012 and No 1260/2012) setting up the Unitary Patent would become applicable, as well as the Rules relating to Unitary Patent Protection (UPR).

Different types of patents in Europe

After the start of the Unitary Patent, there will be different options for patent protection:

  • European patent with unitary effect” (also called “Unitary Patent”) means a patent granted under the provisions of the EPC which benefits from unitary effect by virtue of Regulation (EU) No 1257/2012, see Art. 2(f) UPCA. This patent benefits from unitary effect in the participating Member States by virtue of Regulation (EU) No 1257/2012 who have already ratified the UPCA.
  • Classic “European patent” means a patent granted under the provisions of the EPC, which does not benefit from unitary effect by virtue of Regulation (EU) No 1257/ 2012, see Art. 2(e) UPCA. A classic European Patent can be validated in the 38 members of the European Patent Organisation.
  • Combination of a European patent with unitary effect and a classic European Patent. With a Unitary Patent combined with a classic European patent it is possible to seek a Unitary Patent and, in addition, validate the European patent in those EPC contracting states not territorially covered by the Unitary Patent scheme because the EPC contracting states are not Contracting Member States which have signed and already ratified the UPCA or the EPC contracting states are generally not EU Member states.
  • National Patent (and Utility Model if possible) in the respective European Country.

European Patents with unitary effect will have different generations in the future

The European Patent with unitary effect covers the territories of those participating Member States in which the UPCA has taken effect at the date of registration of unitary effect of a patent by the EPO. It is also likely that the outstanding ratifications of the UPCA will not take place all at once but rather successively. Consequently, there will be different generations of Unitary Patents with different territorial coverage.

The territorial coverage of a given generation of a European Patent with unitary effect will stay the same for its entire lifetime, irrespective of any subsequent ratifications of the UPCA after the date of registration of unitary effect. In other words, a given Unitary Patent’s territorial coverage will not be extended to other Member States which ratify the UPCA after the EPO has registered its unitary effect. 

The participating Member States covered by a given Unitary Patent will be listed in the Register for Unitary Patent Protection.

The Unitary Patent architecture

Pre-grant phase (including opposition, limitation, and revocation proceedings) of a Unitary Patent is based on the EPC. Therefore, the pre-grant phase for Unitary Patents is exactly the same as for classic European Patents.

Unitary Patent architecture

The EPO is entrusted by the participating Member States with the administration requests for a Unitary Patent (= requests for unitary effect).

Unitary Patent Division at the EPO

  • A “Unitary Patent Division” has been set up at the EPO as a special department to deal with Unitary Patents.
  • It is responsible for all the EPO’s additional tasks relating to Unitary Patents referred to in Article 9(1) Regulation (EU) No 1257/2012 and entrusted to it by the participating Member States under Rule 1(1) UPR.
  • The EPO departments entrusted with the procedures laid down in the EPC, namely the search, examining, and opposition divisions, the Legal Division, and the boards of appeal, will have no responsibilities in relation to Unitary Patents.
  • Actions against decisions of the Unitary Patent Division must be brought before the Unified Patent Court (see Articles 32(1)(i) and 47(7) UPCA) and not before the EPO boards of appeal.

Main features of a European Patent with unitary effect (Art. 3 Regulation (EU) No 1257/2012)

  • A European patent with unitary effect shall have a unitary character. It shall provide uniform protection and shall have equal effect in all the participating Member States who have ratified the UPCA.
  • A European patent with unitary effect may only be limited, transferred or revoked, or lapse, in respect of all the participating Member States who have ratified the UPCA. Dropping of individual designated contracting states as with the classic European Patent is not possible with the Unitary Patent.
  • A European patent with unitary effect may be licensed in respect of the whole or part of the territories of the participating Member States who have ratified the UPCA.
  • The unitary effect of a European patent shall be deemed not to have arisen to the extent that the European patent has been revoked or limited.

The transitional regime: for which European patents can a Unitary Patent be requested?

A Unitary Patent may be requested for any European patent granted on or after the date of application of Regulations (EU) No 1257/2012 and (EU) No 1260/2012. These regulations will apply from the date of entry into force of the UPCA.  

In other words, Unitary Patents can only be requested for new European Patents whose granted after the entry into force of the UPCA. Thus, if necessary, the applicant could try to delay the grant of the European Patent until the entry into force of the UPCA. Alternatively, the applicant could file a divisional European application which is also time-consuming.

Requirements for obtaining a Unitary Patent

First of all, in order to be eligible for registration as a Unitary Patent, a European patent must have been granted with the same set of claims in respect of all participating Member States (Rule 5(2) UPR; Article 3(1) in conjunction with Recital 7 Regulation (EU) No 1257/2012). Therefore, it is important not to withdraw the designation of any of the participating Member States because this would rule out obtaining a Unitary Patent.

As to the procedure for obtaining a Unitary Patent, a formal “request for unitary effect” must be filed with the EPO in writing by the European patent proprietor (Rule 5(1) UPR). This request must be filed no later than one month after the mention of the grant of the European patent is published in the European Patent Bulletin (see Rule 6(1) UPR; Article 9(1)(g) Regulation (EU) No 1257/2012; Article 97(3) EPC).

However, contrary to the normal EPC regime, where any of the three EPO official languages may be used in written proceedings (see Rule 3(1) EPC), requests for unitary effect have to be filed in the language of proceedings (see Article 9(1)(g) Regulation (EU) No 1257/2012 and Rule 6(2) UPR).

A Unitary Patent can also be requested for a European patent granted to multiple proprietors in respect of the same or different participating Member States as long as it was granted with the same set of claims in respect of all those participating Member States.  

Only, however, if the request for unitary effect has been duly signedby all the proprietors (or their representative(s)) is their common representative entitled to act for them all. Multiple proprietors need not be listed in the request for unitary effect in the same order as in the request for the grant (EPO Form 1001) or in the European patent specification.

Translation of the Unitary Patent

During a transitional period (see below) the request for unitary effect must also contain a translation of the European patent as required under Article 6(1) Regulation (EU) No 1260/2012, as follows: 

  • where the language of the proceedings is French or German, a full translation of the specification of the European patent into English; or 
  • where the language of the proceedings is English, a full translation of the specification of the European patent into any other official language of the European Union. 

The translated text has no legal effect and is for information only.

The transitional period is at least 6 years and max. 12 years, see Art. 6 Regulation (EU) No 1260/2012. After the transitional period a translation is no longer necessary, see Art. 3(1) Regulation (EU) No 1260/2012.

Compensation for translation costs is available for small and medium-sized enterprises (SMEs), natural persons, non-profit organizations, universities, and public research organizations having their residence or principal place of business in an EU Member State.

Costs of a Unitary Patent after Grant

In the pre-grant proceeding, the costs for a Unitary Patent and a classic European Patent are the same. For a Unitary Patent, a uniform annual renewal fee has to be paid with the EPO. According to the table below, you can see the renewal fees of the Unitary Patent after the grant. They are compared in this table to the renewal fees of a Unitary Patent together with a national UK-Patent, a Classic European Patent validated in DE, FR, UK and a Classic European Patent validated in DE, FR, UK, IT.

renewal fees of the Unitary Patent after the grant
Renewal fees of the Unitary Patent after the grant

The annual fees for the first 10 years – the average life of a patent according to the EPO – would amount to less than € 5,000 for a Unitary Patent. The other options are roughly similar in terms of costs in this timeframe.

The costs for a payment service provider will be less for the single renewal fee of the Unitary Patent compared to possible multiple renewal fees of a classic European Patent. Therefore, the renewal fees are competitive in this timeframe, especially if more than three countries are designated for a classic European patent.

Further, a plurality of validation costs is not necessary for the Unitary Patent compared to the respective validation costs for the designated countries of the classic European Patent. For example, the validation costs for DE, FR, UK of a classic European Patent are around € 150 respectively.

The applicable law for Unitary Patents as an object of property

A European patent with unitary effect can be an object of property e. g. for license agreements, transfer, corporate restructurings, etc. Therefore, the applicable law in such cases is important.

According to Art. 7 Regulation (EU) No 1257/2012 a European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating Member States as a national patent of the participating Member State in which that patent has unitary effect and in which, according to the European Patent Register:

(a) the applicant had his residence or principal place of business on the date of filing of the application for the European patent; or

(b) where point (a) does not apply, the applicant had a place of business on the date of filing of the application for the European patent.

This means, if the applicant has his principal place of business e. g. in Germany, then the European patent with unitary effect as an object of property is treated as a national German Patent and German law is applicable.

In case of several applicants – e. g. two or more persons are entered in the European Patent Register as joint applicants -, point (a) above shall apply to the joint applicant indicated first. Where this is not possible, point (a) above shall apply to the next joint applicant indicated in the order of entry. Where point (a) above does not apply to any of the joint applicants, point (b) above shall apply accordingly. For example, if the first applicant has his principal place of business in France and the second applicant in Germany, then the European patent with unitary effect as an object of property is treated as a national French Patent

Therefore, if there are joint applicants from different countries the order of the applicants in the Patent Register plays an important role. The order can be changed in the granting proceeding of the European patent application.

Where no applicant had his residence, principal place of business, or place of business in a participating Member State in which the patent has unitary effect, the European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating Member States as a national patent of the State where the European Patent Organisation has its headquarters in accordance with Art. 6(1) EPC, namely Munich in Germany. In other words, for applicant(s) outside the EU, German law applies for the European patent with unitary effect as an object of property. Germany is advantageous because there are comparatively few formal hurdles. For example, patents can be transferred orally in Germany.

This referral mentioned above is static and cannot be changed by transfer of ownership. Example: Patent proprietor as first applicant A based in the USA transfers his European patent with unitary effect to French company B, German law remains applicable for the European patent with unitary effect as an object of property.

Conflict of the Unitary European patent with national rights of earlier date

For a European patent application that is intended to be validated as a classic European patent after grant, where a national right of an earlier date exists in a contracting state designated in this European patent application, there are several possibilities of amendment open to the applicant. First, that designation may be withdrawn from the application for the contracting state of the national right of an earlier date. Second, for such a state, the applicant may file claims which are different from the claims for the other designated states. Third, the applicant can limit the existing set of claims in such a manner that the national right of an earlier date is no longer relevant. For a European patent application that is intended to have unitary effect after grant, only the third option is applicable. This means an applicant for a European patent with unitary effect has to amend the set of claims of such an application accordingly. You can find further information in the Guidelines for Examination in the EPO for a classic European Patent here.

In a possible action for revocation there is an important difference between a classic European Patent and a European Patent with unitary effect, please see the following example:

21.08.2023: DE application from applicant A filed.

29.03.2024: EP application from applicant B filed (first applicant from Berlin).

21.02.2025: DE application from applicant A (novelty-destroying for B) is disclosed.

20.03.2025: EP application from applicant B is granted.

1st possibility: The EP application is validated as a classic European Patent (EP-B) for several countries including Germany (with opt-out)

In a nullity proceeding (action for revocation) EP-B is revoked for DE only before the German Federal Patent Court, because of the national right of an earlier date in DE. In all other validated countries, EP-B remains in force because only in Germany the DE application A is opposed to a national German patent respectively to a European Patent validated in Germany. In the other validated countries, the national right of an earlier date in DE is not relevant.

2nd possibility: The EP application is validated as European Patent (EP-B) with unitary effect

In a nullity proceeding (action for revocation) before the UPC, the EP-B is revoked in respect of all the participating Member States who have ratified the UPCA because of the DE application A as a national right of an earlier date. This is because the first applicant is from Berlin, Germany and therefore, according to Art. 7 Regulation (EU) No 1257/2012 the EP-B shall be treated as a national German patent (please see also above under “The applicable law for Unitary Patents as an object of property”).

Advantages of the European Patent with unitary effect

  • Centralized pre-grant procedure after grant and not only until grant, as in classic European patents.
  • Business-friendly level of renewal fees and less complexity in paying renewal fees compared to classic European patents.
  • No parallel litigation in the contracting members having already ratified the UPCA. Litigation is centralized at the UPC.
  • The European patent with unitary effect provides inventors with uniform and comprehensive territorial protection in the contracting members having already ratified the UPCA.
  • Validation of the Unitary Patent in several states is not necessary. The validation for a classic European Patent is a time-consuming and complex administrative process, e.g. translations have to be filed, fees charged by national patent offices, and attorney fees arise. In contrast, for obtaining the European Patent with unitary effect patent proprietors file a single request with the EPO.
  • For the European patent with unitary effect one single renewal fee has to be paid to the EPO. The fee has to be paid in one currency and under a single legal regime as regards deadlines and admissible means of payment. In contrast, renewal fees for the classical European Patent vary in amount, have to be paid to different national offices operating under different legal requirements.
  • The renewal fee level is very attractive and business-friendly. The total fees for the first ten years – which is the average lifetime of a patent – amount to less than EUR 5000. There is a 15% reduction in renewal fees for patent proprietors who file a statement on a license of right with the EPO.
  • Reduced Costs for small and medium-sized enterprises (SME) and other small entities.
  • Management of a European patent with unitary effect, e. g. transfers, licenses, and other rights, no longer need to be registered country by country in the national patent register with multiple local patent attorneys. Instead, a single registration entered in the Register for Unitary Patent Protection centrally administrated by the EPO is sufficient.
  • According to Rule 1(1) UPR the EPO shall be bound by decisions handed down by the UPC in actions brought under Art. 32(1)(i) UPCA. 

The Structure of the UPC

The UPC is bound by EU law in the same way as any national court, Art. 1 UPCA. Therefore, the UPC shall cooperate with the Court of Justice of the European Union to ensure the correct application and uniform interpretation of Union law, as any national court, following Article 267 TFEU (TFEU = Treaty on the Functioning of the European Union) in particular, please see Art. 21 UPCA.

The UPC is competent (Art. 3 UPCA) to any:

(a) European patent with unitary effect,

(b) Supplementary protection certificate issued for a product protected by a patent,

(c) Classic European patent which has not yet lapsed at the date of entry into force of the UPCA or was granted after that date, without prejudice to Art. 83 UPCA (no opt-out) and

(d) European patent application which is pending at the date of entry into force of this Agreement or which is filed after that date, without prejudice to Art. 83 UPCA (no opt-out).

The territorial scope of UPC decisions:

  • European patent with unitary effect: all participating Member States in which the UPCA has taken effect at the date of registration of unitary effect of this patent by the EPO, please see Art. 5 and 18 Regulation (EU) No 1257/2012.
  • Classic European patent: in all member states where this patent is in force, please see Art. 34 UPCA.

The court of 1st instance comprises a central division as well as local and regional divisions. It is competent inter alia for actions for infringement or revocation, see Art. 32 UPCA. In general, the jurisdiction of the court depends on the defendant’s residence or place of infringement, please see Art. 33 UPCA for further information. Local divisions are for example in: Milan, Vienna, Helsinki, Paris, The Hague, Brussels, Hamburg, Mannheim, Düsseldorf, Munich.

The central divisions are competent for isolated actions for revocation (Art. 33 (4) UPCA) and actions for declarations of non-infringement of patents and supplementary protection certificates. It also handles infringement actions if infringement takes place where no local or regional division is located or the defendant has his residence outside the territory of the Contracting Member States (Art. 33 (1) b UPCA). Because of the Brexit, London’s competence shall be divided between Paris and Munich until a new regulation is decided, wherein a decision will be issued probably during the implementation of the PPA.

The Court of Appeal in Luxembourg is competent for an appeal against a decision of the Court of First Instance, see Art. 73 UPCA.

The Court Registry is competent of the administration of proceedings and documents (all document traffic with the court in electronic form), verification of formal requirements, online register of proceedings, entire procedural file accessible to anyone, restriction of disclosure-only upon justified request and only to confidential information, please see Art. 22 ff UPCA.

Benefits of the UPC

  • The UPC provides proprietors with a means of avoiding the high costs, risk, and complexity associated with multiple litigations in different jurisdictions.
  • The UPC has specialized and highly qualified judges (including technically qualified judges) who will establish harmonized case law and increase legal certainty.

The transitional period regarding the competence of the UPC (Opt-out)

In general, when the UPCA has taken effect, the UPC is competent for European patents with unitary effect and for classic European patents. Exception: There is a seven-year transitional period, Art. 83 (1) UPCA, during which an action for infringement or for revocation of a classic European Patent can also be brought before national courts (the transitional period can be prolonged by up to seven years, see Art. 83 (5) UPCA). A proprietor of or an applicant for a classic European patent has the possibility to opt-out from the exclusive competence of the UPC, please see Art. 83 (3) UPCA. In other words, the patent proprietor of a classic European patent can exclude the parallel jurisdiction of the UPC and therefore opt for the exclusive jurisdiction of the national courts. The patent proprietor of a classic European patent cannot determine the sole jurisdiction of the UPC.

The UPC is competent for action for infringement or for revocation of European patents with unitary effect without exception. During the transitional period, national courts remain competent for all proceedings concerning classic European patents.

During the transitional period for classic European Patents without opt-out, a combination of national courts and the UPC is probably possible as desired. E. g. for a classic European Patent an action for infringement could be filed with the regional court Düsseldorf (Germany) and at the UPC Regional Division Milan (Italy) for all designated countries except Germany.

Preconditions for Opt-out

A proprietor of or an applicant for a classic European patent granted or applied (not for a European patent with unitary effect) has the possibility to opt-out under the following preconditions (Art. 83(3) UPCA):

  • Action has not been brought before the UPC yet. This means that bringing a negative affirmative action for a right before the UPC renders later opt-out effectless.
  • The opt-out has been notified to the Court Registry of UPC by the latest one month before the expiry of the transitional period.

Legal issues in the context of the opt-out

The opt-out shall take effect upon its entry into the register. Thus, the application for opt-out alone is not sufficient to effectively declare an opt-out. The registration of the opt-out via a CMS is probably very fast.

According to R. 5.1(b) RulesUPC, the application to opt-out has to be made in respect of all of the Contracting Member States for which the classic European patent has been granted or which have been designated in the application. Therefore, a selection decision by the patentee is not possible for opt-out.

Where the classic European patent or application is owned by two or more proprietors or applicants, all proprietors or applicants have to lodge the application for opt-out, please see R. 5.1(a) RulesUPC. Where the person lodging the application for opt-out is not recorded as the proprietor or applicant in the registers, the person shall lodge a declaration that he is the proprietor. In other words, all co-owners of a classic European patent or application must file the opt-out request. This could lead to disputes between co-owners. If there is a proprietor who is not listed as an applicant and who appears later, then the opt-out is only effective from the date of the opt-out request of the last “true proprietor” becomes effective.

If there is an incorrect application for opt-out, the opt-out only becomes effective with correction and from the date of correction, please see R. 5.5 RulesUPC.

For a (classic) European patent application opt-out is possible. If the European patent application is granted and validated as a European patent with unitary effect, then the opt-out request is deemed to be withdrawn with effect for the territory of the European patent with unitary effect, please see R. 5.9 RulesUPC.

If a divisional application is filed based on a (classic) European patent application, then the opt-out of the European patent application does not apply to the divisional application.

Ratification of an EU Member State after the opt-out

If an EU Member State ratifies the UPCA after opt-out of a classic European patent, e. g. Spain, then it is up to now unclear, whether the opt-out does also apply to the Spanish part of the classic European patent (if the Patent is validated in Spain). A uniform opt-out (i.e. also for Spain) is considered to be very likely.

 “Sunrise Period” for Opt-out

The opt-out can be earmarked during the “Sunrise Period” to the start of the UPC system, please see R. 5.12 RulesUPC. Therefore, during the Sunrise Period applications for opt-out accepted by the Court Registry before the entry into force of the UPCA shall be treated as entered on the register on the date of entry into force of the UPCA. That allows patentees to file opt-outs for their existing classic European patents granted or applied before the UPCA comes into effect. Therefore, third parties cannot file claims against these patents in the UPC immediately on the date of entry into force of the UPCA (what would impede an opt-out). It is expected that the Sunrise Period takes place 3 months before the date of entry into force of the UPCA.

Opt-in (withdrawal from the opt-out)

The opt-out can be withdrawn by means of a “Request for withdrawal from the use of the opt-out”, please see R. 5.9 and 5.9 RulesUPC. This is called “opt-in”. The possibility to opt-in is unlimited in time – i.e. even after the end of the transitional period regarding the competence of the UPC. The withdrawal from the use of opt-out can be essentially declared according to the same formal rules compared to opt-out, i.e. in particular for each classic European patent separately and by effecting an entry in the register.

The preconditions for opt-in are:

  • Opt-out has been declared previously.
  • No proceeding is pending before a national court. I.e. a possible infringer, fearing an infringement action before the UPC, can file a national negative declaratory action to harm the opt-in.
  • Even a completed proceeding before a national court harms the opt-in.

After the opt-in, a further opt-out is not possible (no “opt-out again”).

The opt-in can only be declared for all Contracting Member States for which the classic European patent has been granted or which have been designated in the application, please see R. 5.7 RulesUPC. Hence, a selection decision by the patentee is not possible for opt-in.

Implementation of opt-out

The application to opt-out has to be declared separately for each classic European patent or application, according to previous plans. No fees are charged for the application to opt-out, but considerable organizational costs. The application to opt-out has to be filed with the Court Registry (via CMS) and not with the EPO, both after entry into force of the UPCA and during the sunrise period. Detailed procedural steps will be described at www.unified-patent-court.org.

Suggestions re Opt-out

  • If you are an exclusive licensee with the right to sue, then a discussion with the licensor should be sought if you wish to opt-out.
  • If you are a licensor you can check whether royalties are payable “as long as a contract property right is in force”. In such a case, opt-out should be considered.
  • The more license agreements exist for a European patent, the more likely it is to opt-out.
  • If you are negotiating a license agreement, please think of opt-out/validation for a European Patent with unitary effect.
  • Co-owners of a classic European Patent must opt out together. Therefore, if you are one of several patent owners you should contact your co-owners.
  • If you have several IP rights to “the same” invention, one European Patent should allow access to the UPC, one IP right to a national court. Therefore, if necessary, opt out of one IP right.

Approach with opt-out for “crown jewels” and “non-crown jewels”

Crown jewels are:

  • basic European patents with a long term,
  • European patents already infringed by competitors,
  • the product manufactured according to European patent is available everywhere in Europe,
  • the product manufactured according to patent contributes significantly to the company’s turnover,
  • the product manufactured according to the patent has a high profit-margin.

For a crown jewel, opt-out is recommended to avoid a centralized revocation via the UPC.

A strong European patent (e.g. because of successful opposition proceedings) which is not a crown jewel, access to the UPC could be maintained. Therefore, a revocation is unlikely and opt-out is rather not recommended.

For weak European patents, a request for opt-out should be filed to avoid a centralized revocation via the UPC. Afterward opt-in is possible (under certain circumstances, see above).

Strategic considerations on the European Patent with unitary effect

The European patent with unitary effect offers new possibilities. If it is to be in force in a large number of European countries, it offers a cost advantage compared to the classic European Patent. For example, a European patent with unitary effect is useful if it protects a pharmaceutical product or if it concerns a product for a large aftermarket (for example in the automotive area). A major cost advantage exists for 6 countries or more.

With a European patent with unitary effect a central cross-border attack against infringers in one proceeding at the UPC is possible. This is also possible for classic European patents if no opt-out is requested. But in return, there is the danger of a centralized revocation via the UPC of the European patent with unitary effect or the classic European patent without opt-out.

For important inventions, a strategic approach could be to file a divisional application in the examination procedure at the EPO parallel to a parent/previous application to obtain a European patent with unitary effect and a (slightly modified) classic European patent (with opt-out) or the other way around. This would be lead to strong protection since the European patent with unitary effect has to be attacked via the UPC and the classic European patent (with opt-out) via the respective national courts. Alternatively or in addition to the divisional application, a national patent (e.g. in Germany) could have been filed parallel, and/or a Utility Model can be branched off.

Prohibition of double patenting

At the moment (before the start of the Unitary patent system) Art II § 8 German International Patent Convention Act (IntPatÜbkG) stipulates that a national German patent loses its effect (ex nunc) when for the applicant or his successor a European patent with the same priority for the same invention has been granted. Therefore, a double patenting of a national German patent and a European patent having the same priority and the same invention is not possible (at the moment). When the UPCA is in force, then a new Art. II § 8 IntPatÜbkG is applied. Accordingly, there is no longer a prohibition of double patenting for a national German patent and a European patent with unitary effect or a classic European Patent (no opt-out) having the same priority and the same invention. This is due to the fact, that the UPC is competent for these European Patents and national German courts for the national German patent. Only, if opt-out is registered for a classic European patent, then there is still a prohibition of double patenting for the national German patent and the classic European patent (with opt-out). The new Art. II § 8 IntPatÜbkG applies to all national German patents granted after entry into force of the UPCA.

Therefore, parallel maintenance of a national German patent and a European patent with unitary effect or a classic European patent without opt-out is an option when the UPCA is into force.

Timeline for the Implementation of the Unified Patent System

Supporting users in an early uptake of the Unitary Patent by the EPO

The EPO has decided to introduce two transitional measures applicable to European patent applications having reached the final phase of the grant procedure.

These measures will be made available ahead of the entry into force of the Unitary Patent system, as of the date of deposit of Germany’s instrument of ratification of the UPCA. Pursuant to Article 89(1) UPCA, this date lies between 3-4 months before the entry into force of the UPCA and will be communicated on the EPO’s website.

First measure:

The EPO will allow early requests for unitary effect as of the date Germany deposits its instrument of ratification of the UPCA. Moreover, early requests for unitary effect may only be filed for European patent applications in respect of which a communication under Rule 71(3) EPC has been despatched. The possibility to file early requests will only be available until the start date of the Unitary Patent system. For example, if Germany deposits its instrument of ratification of the UPCA on May 20, 2022, then the UPCA enters into force on September 1, 2022. Between this periods, the applicant can file an early request for unitary effect if a due date for responding to a communication under Rule 71(3) EPC falls within this period.

The EPO would examine this early request and register unitary effect very soon after the publication of the mention of the grant of the European patent in the European Patent Bulletin if all requirements are met.

In other words, when a communication under Rule 71(3) EPC is “pending” after Germany deposits its instrument of ratification of the UPCA, then the applicant can file an early request for unitary effect.

Second measure:

The second transitional measure will provide the possibility for the applicant to request a delay in issuing the decision to grant a European patent after despatch of communication under Rule 71(3) EPC by the Office and before approving the text intended for grant. This will make a European patent eligible for Unitary Patent protection that would otherwise have been granted before the start of the new system and will avoid that applicants miss opportunities to obtain a Unitary Patent in the transitional phase.

The EPO will allow requests for a delay in issuing the grant as of the date Germany deposits its instrument of ratification of the UPCA. Moreover, a request for delay may be validly filed only for European patent applications in respect of which the applicant has been informed of the text intended for grant by a communication under Rule 71(3) EPC but has not yet approved that text.

For further information in regard to the first and second measures, please visit the EPO website.

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BoA of the EPO expands the transitional provisions regarding the revised Rules of Procedure of the Boards of Appeal (RPBA) 2020 of the EPO

Transitional provisions – applicability of Article 13(1) RPBA 2020 to cases where the summons to oral proceedings was notified before the entry into force of the RPBA 2020. (Catchword of the Board)

BoA, Decision of January 20, 2020 – T 1386/18; Article 13(1) RPBA 2020

The appellant filed requests with the BoA before the revised RPBA 2020 was into force

The appellant (applicant) lodged an appeal within the prescribed period and in the prescribed form against the decision of the examining division to refuse the European patent application No. 10840300.7.

  • In 2018 the appellant filed his statement of grounds of appeal.
  • In 2019 to prepare the oral proceedings, the BoA communicated its preliminary assessment.
  • In 2019 the appellant filed a response.
  • On January 20, 2020, the oral proceedings took place.

The revised RPBA 2020 is in force from January 1, 2020. Therefore, the written submissions of the appellant mentioned above have been filed before the RPBA 2020 came into force. The oral proceeding was held after the RPBA 2020 came into force.

The BoA notes in its decision the transitional provisions of the RPBA 2020

In its decision, the BoA noted that the RPBA 2020 applies, except for “new” Articles 12(4) to (6) and 13(2) RPBA 2020. Instead of which the “old” Articles 12(4) and 13 RPBA 2007 remain applicable.

This is laid down in the transitional provisions according to Article 25 RPBA 2020. “New” Articles 12(4) to (6) RPBA 2020 refer to the first stage (filing stage) of the appeal, see Fig. 1 below.

 

“New” Article 12(4) RPBA 2020 defines that a request, fact, objection, argument, and/ or evidence on which the decision under appeal was/were not based is considered as an amendment. Any such amendment may be admitted only at the discretion of the Board. Nevertheless, if the party demonstrates that the request, fact, objection, argument, and evidence was/ were admissibly raised and maintained in the proceedings leading to the decision under appeal, then it is not considered as an amendment. Compared to this, the “old” Article 12(4) RPBA 2007 –here applicable – has less stringent limitations on amendments at the first stage.

“New” Article 13(2) RPBA 2020 refers to the third stage of the appeal, see Fig. 1 above. This Article imposes the most stringent limitations on appeal submissions which are made at an advanced stage of the proceedings. Advanced stage means after the expiry of a period set by the board of appeal in communication under Rule 100(2) EPC or, where no such communication is issued, after notification of a summons to oral proceedings. In contrast, the “old” Article 13 RPBA 2007 – here applicable – has less stringent limitations.

BoA considers “new” Article 13(1) RPBA 2020 applicable

In the present decision, the BoA clarified, that the “new” Article 13(1) RPBA 2020 applies to the present proceedings because this Article is not excluded by the transitional provisions defined in Article 25 RPBA 2020. “New” Article 13(1) RPBA 2020 refers to the second stage of the appeal – see Fig. 1 above – and to amendments before notification of a summons or before the expiry of a time-limit of a communication. “New” Article 13(1) RPBA 2020 defines the conditions under which a party may amend its appeal case after the initial stage of the proceedings and before the period set in a communication under Rule 100(2) EPC has expired or before a summons to oral proceedings has been notified. The party must provide reasons as to why the amendment is submitted at this stage of the appeal proceedings. Its admittance is subject to the Board’s discretion alone.

Other Boards of Appeal have different views regarding the application/ interpretation of “new” Article 13(1) RPBA 2020

According to a further recent decision T 0032/16 of a different BoA, when compared, the revised wording in “new” Article 13(1) RPBA 2020 is more detailed in listing out the requirements on the party making an amendment to its appeal case and the criteria to be used by the Board when exercising its discretion. The difference however merely reflects much of the case law developed under “old” Article 13(1) RPBA 2007. Therefore, according to T 0032/16 no contradiction can be found in the wording of “new” Article 13(1) RPBA 2020 compared to “old” Article 13 RPBA 2007.

In a further recent BoA decision, T 0989/15 the Board saw no reason to apply the criteria of “new” Article 13(1) RPBA 2020 in addition.

Conclusion
  • If the first stage took place before RPBA 2020 came into force then the “old” Article 12(4) RPBA 2007 for the first stage applies instead of “new” Articles 12(4) to (6) RPBA 2020. Therefore, for such cases, there are less stringent limitations on amendments at the first stage of the appeal proceeding.
  • Where the summons to oral proceedings or a communication of the Board under Rule 100(2) EPC has been notified before the date of the entry into force (1 January 2020) “old” Article 13 RPBA 2007 instead of “new” Article 13(2) RPBA 2020 for the third stage applies. Hence, for such cases, there are less stringent limitations on amendments at the third stage of the appeal proceeding.
  • Further, the “new” Article 13(1) RPBA 2020 for the second stage applies according to T 1386/18, irrespective of the fact that the summons to oral proceedings was notified before 1 January 2020. But according to T 0032/16 this “new” Article 13(1) RPBA 2020 is not stricter compared to the “old” Article 13(1) RPBA 2007 in combination with the developed case law which is good News.
Reasons for the decision
  1. Revised Rules of Procedure of the Boards of Appeal (RPBA 2020) – Transitional provisions
    The present proceedings are governed by the revised version of the Rules of Procedure which came into force on 1 January 2020 (Articles 24 and 25(1) RPBA 2020), except for Articles 12(4) to (6) and 13(2) RPBA 2020 instead of which Articles 12(4) and 13 RPBA 2007 remain applicable (Article 25(2) and (3) RPBA 2020). The general applicability of the RPBA 2020 to the present proceedings includes Article 13(1) RPBA 2020, irrespective of the fact that the summons to oral proceedings was notified before 1 January 2020 (cf. T 2227/15, T 32/16 and T 634/16, none of them published in the OJ EPO)
  2. […]

Decision T 1386/18: https://www.epo.org/law-practice/case-law-appeals/pdf/t181386eu1.pdf
RPBA 2020: https://www.epo.org/law-practice/case-law-appeals/communications/2019/20190704.html

WINTER BRANDL Partnerschaft mbB, Patent Attorney Michael Schüller

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Decision G4/19 regarding Prohibition on Double Patenting of the Enlarged Board of Appeal of the European Patent Office

1. A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC. 2. The application can be refused on that legal basis, irrespective of whether it

a) was filed on the same date as, or

b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or

c) claims the same priority (Article 88 EPC) as

the European patent application leading to the European patent already granted. (Headnotes of the Enlarged Board of Appeal (EBoA)) EBoA of the EPO, Decision of 22. June 2021 – G4/19 – Double Patenting

The appellant claimed priority of a granted EP Patent having the same subject matter

The appellant is the applicant of the European patent application-in-suit. The Examining Division of the European Patent Office (EPO) refused the application-in-suit. The refusal was based on the principle of the prohibition on double patenting. The application-in-suit claimed priority of a granted European patent, see figure below. The subject matter of the application-in-suit and the granted European patent comprised the same subject matter and are owned by the same applicant. Against the refusal of the Examining Division, the applicant of the application-in-suit filed an appeal.

The Board of Appeal (BoA) referred questions to the Enlarged Board of Appeal (EBoA)

In the appeal proceedings the BoA referred the following questions to the EBoA: “1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent which was granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?  2.1 If the answer to the first question is yes, what are the conditions for such a refusal, and are different conditions to be applied depending on whether the European patent application under examination was filed

  1. a) on the same date as, or
  2. b) as a European divisional application (Article 76(1) EPC) in respect of, or
  3. c) claiming the priority (Article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant?

 2.2 In particular, in the last of these cases, does an applicant have a legitimate interest in the grant of a patent on the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?”

EBoA gives an interpretation of the referred questions

  • The essence of question 1 is according to EBoA, whether there is any legal basis under the EPC for refusing an application on the ground of “double patenting”. The term “double patenting” is interpreted in the narrow sense, where two or more EP applications are involved (and not a national patent).
  • The definition of the “same subject-matter” or “the same applicant” is not the subject of the present referral.
  • Further, the referred question 1 is restricted to substantive examination proceedings before the Examining division. Therefore, the referral does not extend to the question of whether and how the prohibition might be applicable in opposition proceedings.
  • It is the EBoA’s understanding that in current Office practice an objection of double patenting is only raised if there are overlapping and still valid designations in both the granted patent and the application concerned.
  • The essence of question 2.1 is as follows: if there is a legal basis in the EPC for the prohibition on double patenting, are all three of the possible constellations in which double patenting may arise to be treated in the same manner? Common to these constellations is that the granted patent and the application both have the same effective date.

Decision of the EBoA in regard to Question 1

For its decision, the EBoA concludes that Art. 125 EPC (https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar125.html) serves as a legal basis for the decision. Art. 125 EPC defines in the case of the absence of procedural provisions in the EPC, that the EPO shall take into account the principles of procedural law generally recognized in the Contracting States. To find out whether there is such a principle, the EBoA inter alia considers the preparatory documents of the Convention (= “travaux préparatoires”). Especially based on these documents the EBoA inferred that the prohibition on double patenting is such a principle generally recognized in the Contracting States according to Art. 125 EPC. As a consequence, the EPO is empowered and duty-bound based on Art. 125 EPC to apply the principle of the prohibition of double patenting. Therefore, the EBoA answered Question 1 in the affirmative. As a result, a European patent application can be refused if it claims the same subject-matter as a European patent that has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC.

Decision of the EBoA in regard to Question 2.1 and 2.2

Questions 2.1 and 2.2 refer to certain conditions for a refusal based on double patenting. The EBoA derived the answer on Questions 2.1 and 2.2 mainly from the preparatory documents of the Convention again. The answer is pointed out in Headnote 2 above.

Overview of the different constellations in regard to the prohibition of double patenting based on the present decision of the EBoA

Below the different constellations according to the headnotes of the present decision are shown. Common to these constellations is that the granted EP patent and the EP application both have the same effective date. 

  • The EP patent application was filed on the same filing date as the EP patent application leading to the EP patent already granted (headnote 2a):
  • The EP application is an earlier application in respect of the EP application leading to the European patent already granted (headnote 2b):
  • The EP application is a divisional application (Article 76(1) EPC) in respect of the EP patent application leading to the EP patent already granted (headnote 2b):
  • The EP application claims the same priority (Article 88 EPC) as the EP application leading to the EP patent already granted (headnote 2c):
  • The EP application claims the same subject-matter as a EP patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC (headnote 1):

Consequences for practice

An applicant can have the legitimate interest to have a second EP patent application granted for the same subject matter. E. g. an interest can be the longer term of protection available to an applicant as a result of claiming an internal priority. Nevertheless, according to the present decision of the EBoA a European patent application can be refused based on the prohibition of double patenting irrespective of whether there is a legitimate interest of the applicant. To overcome the prohibition of double patenting, the applicant could amend one or more of the applications in such a manner that the subject-matters of the claims of the applications are not identical. For example, the applicant could adapt the applications such that the subject matters are partially overlapping. In such a case no objection regarding double patenting should be raised (see also the decision of the BoA T 877/06). A further strategy could be that the applicant in a first step tries to get an EP patent application with a narrower subject matter/scope of protection granted. Then, in a second step, the applicant could try to get an EP patent application with a broader subject matter/scope of protection granted. Thus, the applicant would already have a narrower EP patent and can then possibly try to obtain another EP patent with a broader scope of protection more freely and flexibly. This approach is especially beneficial for important inventions. To overcome the prohibition of double patenting in general the applicant could follow the proposals in the Guidelines for Examination G-IV-5.4 https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_iv_5_4.htm): withdraw overlapping designations, or choose which one of those applications is to proceed to grant.  

Enlarged Board of Appeal Decision G4/19: http://documents.epo.org/projects/babylon/eponet.nsf/0/9D699BFBD3CC2C11C12586FC00338610/$FILE/G_4_19_decision_of_the_Enlarged_Board_of_Appeal_of_22_June_2021_en.pdf

WINTER BRANDL Partnerschaft mbB, Munich, German and European Patent Attorney Michael Schüller

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The Unified Patent Court (UPC) Agreement is approved by the German Bundestag – What are the next steps?

On November 26, 2020, the German Bundestag (German Federal Parliament) in Berlin has approved the UPC Agreement. This is an important step towards the implementation of the Unitary Patent Package. The Unified Patent System is expected to be launched in spring 2022. Nevertheless, some steps still have to be taken.  

The previous approval in the German Bundestag was unconstitutional

On March 10, 2017, the German Bundestag already approved the UPC Agreement. However, on March 31, 2017, a constitutional complaint was filed with the German Constitutional Court. Therefore, the ratification process of the Unified Patent System was stopped by Germany. On February 13, 2020, the Constitutional Court decided inter alia that in the vote in the German Bundestag the 2/3 majority was missing. After this decision of the Constitutional Court, the German Bundestag approved a new, unchanged bill on the UPC Agreement with a sufficient majority on November 26, 2020.

Besides the UPC Agreement, the German Bundestag adopts a protocol on provisional applicability

In addition to the UPC Agreement, the German Bundestag also approved a protocol on provisional applicability on November 26, 2020. With this protocol, it is possible that the Preparatory Committee of the Unified Patent System can appoint judges for the UPC, rent office space, etc. before the certificate of ratification is deposited by Germany.

In the next step, the German Bundesrat (Federal Council) has to approve the UPC Agreement

In Germany besides the Bundestag also the Bundesrat has to approve the UPC Agreement. The vote on this will take place on December 18, 2020. The approval of the UPC agreement in the Bundesrat is very likely since the same parties have a majority in the Bundesrat as in the Bundestag. Afterward a countersignature by the Federal Government and the German President takes place. In the end the approval is published in the German Federal Law Gazette. Then, the certificate of ratification is ready to be deposited by Germany.

The Central Divisions of the UPC will be located in Munich and Paris

Since the UK is going to leave the European Union on January 1, 2021, the UK is not part of the Unified Patent System and London will no longer be a location for the UPC Central Divisions. Therefore, the Central Divisions of the UPC will be located in Munich and Paris. 

Summary of the important next steps

  • On December 18, 2020, the German Bundesrat will probably approve the UPC Agreement.
  • Then, the protocol on provisional applicability will be deposited by Germany (probably spring 2021).
  • After that, the Preparatory Committee of the Unified Patent System will appoint judges, rent office space, buy furniture, etc.
  • Germany will deposit the certificate of ratification after the preparation of the Preparatory Committee (probably end of 2021).
  • Expected start of the Unified Patent System is in spring 2022.

Information of the German Bundestag:
https://www.bundestag.de/dokumente/textarchiv/2020/kw48-de-patentgericht-808180

Information of the European Patent Office:
https://www.epo.org/news-events/news/2020/20201126b.html

 

WINTER BRANDL Partnerschaft mbB, Patent Attorney Michael Schüller, Munich