G 1/11: a new referral, but don't get excited

Miggy struggled to contain her excitement
as she considered the awesome prospect
of G 1/11 ...

While the recent decision G 2/10 from the European Patent Office's Enlarged Board of Appeal is complex and technical, at least it has the merit of addressing a practical question which confronts applicants and their representatives from time to time. (In case you missed yesterday's post, the Enlarged Board answered the question of whether you can disclaim an embodiment of your patent application without adding subject-matter, with an authoritative "sometimes").

The latest referral to the Enlarged Board of Appeal - G 1/11 - poses a question which is going to register many notches lower on the interest scale for everyone, other than a small number of EPO officials.  Contain your excitement as you savour the issue at stake, summarised in the IPKat's unofficial translation:

Translate from: French

Type text or a website address or translate a document.

Cancel

French to English translation

"Should an appeal against a decision of an Examining Division, refusing the refund of search fees under R.64 (2) EPC, which is not related to a decision to grant a European patent or to refuse a European patent application, be handled by a Technical Board of Appeal or the Legal Board of Appeal?"

While the referring decision J 21/09 is currently available in German only, the file history shows that the appeal was assigned initially to a Technical Board of Appeal and then bounced to the Legal Board, which presumably doubted its own jurisdiction sufficiently to make the referral.

The outcome of this referral will have a practical effect on where future appeals end up but, since this is a matter which is out of the hands of applicants anyway, the eventual decision will likely be of academic interest (if even that) to everyone who is not a Registrar of an EPO Appeal Board.

(Thanks to the anonymous commenter on yesterday's post who mentioned this referral).

Amazon patent up the creek in Europe

From the IPKat's friend Kristof Neefs (Altius) comes this link to Decision T 1616/08, in which the European Patent Office's Technical Board of Appeal ruled that the subject matter of Amazon’s controversial One-click patent is obvious. In the decision of 11 November 2009, the application to patent a "Method and system for placing a purchase order via a communications network" was opposed by the Gesellschaft für Informatik e.V., Fleurop-Interflora European Business Company AG and the Förderverein für eine Freie Informationelle Infrastruktur e.V.(FFII e.V.). The interesting bit goes like this:

"4.1 The opposition division argued that the invention was obvious for a technically skilled person desiring to implement on a notoriously known computer system the claimed solution to the administrative problem of "how to be sure that the person entering the postal address in the database knows the correct address" ...

4.2 The Board agrees that the subject-matter of claim 1 is obvious. The problem underlying the invention is that at the time the order for the delivery is received the exact address of the recipient may not be known (cf point 1 above). Simply asking the recipient for his address is a non-technical step. Equally non-technical is the idea of having the vendor - rather than the purchaser - contact the recipient. Technical is therefore only the computer system itself and the means for communicating with the recipient, namely e-mail. But these technical means were well known at the priority date, and the invention simply uses them in a straightforward, conventional manner.

4.3 The Board does not deny that, as the appellant has pointed out, the claimed system is new (over the notorious prior art) and involves technical considerations. This is however not enough. Novelty is not denied and technical considerations do not
necessarily have inventive quality. The only relevant criterion for inventive step is the one stated in Article 56 EPC 1973, namely whether the invention is obvious to a person skilled in the art. Since in accordance with established jurisprudence this "art" cannot be a field of business or administration, only elements of the solution falling within the competence of a technically skilled person (here: a programmer or
computer scientist) can be taken into account.

4.4 The appellant has furthermore argued that if inventions are denied patent protection only because they involve software, also devices such as anti-lock braking
systems would be unpatentable. The Board does not see this risk since the Boards of Appeal have from early on acknowledged the patentability of inventions which include software contributing to a technical effect (see eg T 208/84 "Computer-related invention/VICOM", OJ EPO 1987,14). Computer-implemented business methods, on the other hand, normally involve no such contribution (beyond the implementation itself).

4.5 It follows that the subject-matter of claim 1 does not involve an inventive step".

In contrast, notes the IPKat, in the US, "Amazon's 1-Click patent still standing after all these years" (see Lexology here).

More on one-click here.

Clunk click here and here

Clickety-click here

Alison Brimelow to step down

Via Intellectual Asset Management's IAM Blog comes news that the European Patent Office President, Alison Brimelow, will not stand for re-election when her current term expires at the end of June 2010. President since July 2007, Brimelow is reported to be unhappy at the quantity of politics that has invaded her senior administrative job description.

Formerly head of the UK's Patent Office, Brimelow earned a reputation as a firm but fair leader. At the EPO she has had to deal with protracted arguments over what to do about the unprecedented backlog of unexamined patent applications, as well as calls for the clarification, extension and abolition of the computer program "as such" exception to patentability.

CIPA - An Appealing Moot

The Chartered Institute of Patent Attorneys (CIPA) is to host a CPD seminar in the form of a moot. This special event will take place, Friday 11 July, at at the Old Hall, Lincoln's Inn, London, WC2A 3TL. Things kick off at 12.30pm with registration and a buffet lunch with the main event at 1.30pm.

The seminar is aiming to improve participants' understanding of the procedures of the European Patent Office (EPO) Technical Boards of Appeal, including the requirements of evidence and advocacy for attorneys representing clients in such proceedings.

The moot will be dealing with subject matter derived from a previous year's European Qualifying Examination (EQE) paper.

Delegates will be provided with a set of documents comprising an outline of the case, a Communication from the Board, the parties’ written replies to the communication and an outline of the afternoon’s proceedings.

The case, prepared by Chris Mercer, Carpmael & Ransford, should prove to be both informative and entertaining, with the sterling cast of Gillian Davies, Hogarth Chambers, as Chairman (Gillian is well known as a former Chairman of a Technical Board of Appeal and a member of the Enlarged Board of Appeal) and Graham Ashley, EPO Boards of Appeal. Representatives Richard Davis (Hogarth Chambers) and Julian Potter (Beresfords) promise an exciting afternoon. And of course, the cherry of 3 hours CPD should be an additional enticement.

The seminar costs £110 + VAT for members, and £165 + VAT for non-members. If you would like to book places, please email Ivana Young, Events Administrator, The Chartered Institute of Patent Attorneys for a form (or download the booking form). Ivana can also be contacted at CIPA, 95 Chancery Lane, London, WC2A 1DT or on telephone, 020 7440 9365.

Stop Press: Is Merpel's secret identity a dog ... disguised as a sheep?