A PET aversion? Biorenewable monomers take centre stage

Biorenewable monomers are not something this Kat comes across on a daily basis. Accordingly he is not in the best position to address the issue raised by his correspondent Maja Schmitt, who writes:

"The discussion [of the patentability of biorenewable monomers] is very similar to the discussions on gene patenting, and we are afraid that patent offices are not setting out their position on this issue yet. For example:

US 20090246430: a bio-based polyethylene terephthalate [PET] polymer comprising from about 25 to about 75 weight percent of a terephthalate component, wherein the terephthalate component is selected from terephthalic acid, dimethyl terephthalate, isophthalic acid, and a combination thereof, and
from about 20 to about 50 weight percent of a diol component,
wherein the diol component is selected from ethylene glycol, cyclohexane dimethanol,
and a combination thereof,
wherein at least about one weight percent of at least one of the terephthalate and/or the diol component is derived from at least one bio-based material.
dependent claim: wherein the bio-based polyethylene terephthalate polymer comprises at least about 0.1 dpm/gC of carbon-14.

The text of the patent contains the following:

It is known in the art that carbon-14 (C-14), which has a half life of about 5,700 years, is found in bio-based materials but not in fossil fuels. Thus "bio-based materials" refers to organic materials in which the carbon comes from non-fossil biological sources. As explained previously, the detection of C-14 is indicative of a bio-based material. C-14 levels can be determined by measuring its decay process (disintegrations per minute per gram carbon or dpm/gC) through liquid scintillation counting.

Now, assuming that the chemistry in this claim is the same that is already available for making PET (but from fossil derived monomers) then the only difference is the level of C14. At a push you could argue that it is novel -- but how could it ever be inventive, when every teaching out there is about replacing monomers from oil with monomers from plants ?

We have noticed that these types of claims are beginning to be allowed, which means that the only option is to oppose them in order to try and create case law.

Have you in all your blogs come across this issue and seen any case law?"

No, in all truth, says the IPKat. There are times when I feel truly knowledgeable and times when I feel confident enough to float a slightly imaginative answer and see what happens. But here I'm truly out of my depth. Can anyone offer any useful thoughts or comments? Merpel adds, I note that this application is made by the Coca-Cola Company and hope that the patent covers the bottle rather than its contents ...

Bundesgerichtshof refers human stem cell patent case to ECJ

In a dispute between the acclaimed German scientist and inventor Oliver Brüstle and Greenpeace about the patentability of Brüstle's German patent DE 19756864, the Bundesgerichtshof has last Thursday decided to refer to the ECJ questions regarding the interpretation of art. 6 of Directive 98/44/EC on the legal protection of biotechnological inventions.

Greenpeace had filed for nullity of Brüstle's patent asserting that it was against public moral ("sittendwidrig"). The patent claims the use of certain cells for the treatment of neural deficiencies such as Parkinson or multiple sklerosis. Originally, the stem cells were derived from blastocysts (whether that's an embryo is the issue), but, as Oliver Brüstle points out, they have long been cultivated outside the human body. Greenpeace argues that this is irrelevant: at the beginning of the chain was a human embryo, and an embryo had to be killed to harvest the cells. It was against art 2 of the German Patent Act, which corresponds to art. 6 Directive 98/44/EC , to grant patents for uses of human embryos for commercial or industrial purposes. Art. 6 Directive 98/44 reads:

1. Inventions shall be considered unpatentable where their commercial exploitation would be contrary to ordre public or morality; however, exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation.

2. On the basis of paragraph 1, the following, in particular, shall be considered unpatentable:

(a) processes for cloning human beings;

(b) processes for modifying the germ line genetic identity of human beings;

(c) uses of human embryos for industrial or commercial purposes;

(d) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.

The German Patent Court (Bundespatentgericht) partially revoked Brüstle's patent in 2006. Greenpeace argues that human life starts with the fusion of sperm and ovum, and blastocysts are embryos in the sense of the law. Brüstle counters that in the UK, France, Spain, Sweden and Denmark the term "embryo" is only used for fertilized eggs 14 days after fertilization. The patent claims the use of stem cell lines which were harvested from blastocysts 4-5 days after fertilization, and therefore before the blastocyst can be rightfully called an embryo. In a less legal vein, Brüstle likes to point out that his research is largely funded by the German government - the same government that now says the results of the state-funded research are against public morale...

The ECJ will now have to rule on the interpretation of "human embryo" in the sense of art. 6 Directive 98/44/EC. Is a stem cell derived from a blastocyst which has lost its ability to develop into a human still an embryo? If so, is a blastocyst a human embryo? If so, is purely therapeutic use of stem cells a "commercial or industrial purpose" in the sense of art. 6?

The stakes are high - the ruling could make or break a lot of biotech applications claiming the use of human stem cells.

If all this sounds vaguely familiar to IPKat readers - well, it is; the EPO's Enlarged Board of Appeal last November ruled on a similar question and revoked a patent describing a method for obtaining embryonic stem cell cultures from primates, including humans, filed by the Wisconsin Alumni Research Foundation (WARF) in 1995, because it involved the destruction of human embryos (G 2/06); IPKat post here.

What "as such" means, what it really, really, nearly means ...

Thanks to his eagle-eyed friend Helen Wallis, the IPKat has just discovered this delicious delight on the Intellectual Property Office website:

"Patents Act 1977: Patentability of computer programs

1. This notice provides further guidance on how patent examiners will assess the patentability of inventions with particular emphasis on the exclusion of computer programs as such. It follows the recent judgment of the Court of Appeal in the case of Symbian Ltd's Application [2008] EWCA Civ 1066 ("Symbian") [click here for the IPKat's note on Symbian and, which is always more fun, readers' comments]. It should be read with the Practice Notices dated 2 November 2006 and 7 February 2008 on patentable subject matter [the IPKat wonders whether the reader could have been spared the need for two more click-throughs -- couldn't the substance of those two Practice Notices have been incorporated into this Notice?].

Background

2. The patent application in Symbian is about how a library of functions (a "Dynamic Link Library"), useable by multiple application programs running on a computer, is accessed. It provides a way of indexing the library functions so that the computer will continue to work reliably even after making changes to the library. When the Court of Appeal considered its conclusion in accordance with the Aerotel/Macrossan (236Kb) test [if you have time on your hands, search the IPKat blog under the terms Aerotel or Macrossan, then prepare for a long session ...] it took the view that the contribution made by Symbian was not a computer program "as such" because "it has the knock-on effect of the computer working better as a matter of practical reality".

The test for deciding whether a computer-implemented invention is patentable

3. The Court of Appeal by and large approached the question of whether Symbian’s invention was excluded as a program for a computer as such by looking for a "technical contribution". In doing so it confirmed a line of UK case law dating back to the EPO Board of Appeal decision in Vicom [who said Vicom was dead, then?]. The Court also confirmed that the Aerotel/Macrossan test is intended to be in substance the same test as that relied on in the prior UK case law. Since both tests are legitimate for determining excluded matter, examiners will apply the structured approach of Aerotel/Macrossan to address the fundamental question whether a claim falls solely within the excluded matter. The Office considers that as a matter of practice this will achieve outcomes consistent with the Court of Appeal judgment in Symbian more reliably.

Identifying whether a contribution is solely a computer program

4. The Symbian judgment (especially paragraphs 54-56) provides an insight into what constitutes a technical contribution; in other words, a contribution that is more than solely a computer program [the IPKat is knocked dizzy by this insight -- he could never have reached this astonishing and profound conclusion himself; he's feeling quite weak ... and to think that for all these years he has been labouring under the the delusion that "technical contribution" meant "clotted cream"]. An important factor is what the program does as a matter of practical reality [oh, that too?].

5. The Intellectual Property Office has previously recognised that an invention which either solves a technical problem external to the computer or solves "a technical problem within the computer" is not excluded. What Symbian has now shown is that improving the operation of a computer by solving a problem arising from the way the computer was programmed - for example, a tendency to crash due to conflicting library program calls - can also be regarded as solving "a technical problem within the computer" if it leads to a more reliable computer. Thus, a program that results in a computer running faster or more reliably may be considered to provide a technical contribution even if the invention solely addresses a problem in the programming.

6. It remains the case that whilst an invention involving a computer is undoubtedly "technical", in law the mere presence of conventional computing hardware does not of itself mean an invention makes a technical contribution and so avoids the computer program exclusion. This is in contrast to the practice of the European Patent Office, which the Court of Appeal rejected in Symbian [tricky one here, says Merpel: is it better to be good Europeans, or to be right?].

Computer-implemented inventions and other exclusions from patentability

7. Symbian also indicates (paragraph 27) that one effect of the computer program exclusion is to prevent other excluded material becoming patentable merely by use of a computer in its implementation. Thus, a business method, mental act, mathematical method or presentation of information implemented on a conventional computer system or network would still be excluded.

8. Paragraph 13 of the previous Practice Notice dated 2 November 2006 noted the different judicial comments regarding computerisation of acts which would otherwise have been done mentally. In future examiners will object to the computerisation of what would be a pure mental act if done without the aid of a computer as both a mental act and a computer program as such. A similar logic applies to the other exclusions".

The IPKat doesn't want to be rude to anyone, but he does feel that a lot of animosity has been generated, confusion caused (or self-induced) and precious resources squandered on arguing this point for what seems to be a lifetime since the Vicom decision.

Left: daddy bear brought the picnic hamper, mummy bear baked the cakes and the little bears all made technical contributions ....

Concepts have been twisted, words abused, propositions over-intellectualised, in order for the Court of Appeal, at the severalth attempt, to reach a decision that has now been rendered down into guidance for patent examiners that is simple enough for a child of ten to understand.

Merpel wonders: how many people have been born since the European Patent Office's decision in Vicom, back in July 1986. Any clues?

EPO hearing on stem cells next week

The IPKat has been informed, thanks to le blog du droit européen des brevets as well as a recent announcement on the EPO website, that oral proceedings, which will be open to the public, are due to be held on 24-25 June at the EPO in Munich on the Enlarged Board of Appeal case G 2/06. This relates to case T 1374/04, in which the following questions were referred to the enlarged board relating to exceptions to patentability under Rule 28 EPC.

"1. Does [Rule 28(c)] EPC apply to an application filed before the entry into force of the rule?

2. If the answer to question 1 is yes, does [Rule 28(c)] EPC forbid the patenting of claims directed to products (here: human embryonic stem cell cultures) which - as described in the application — at the filing date could be prepared exclusively by a method which necessarily involved the destruction of the human embryos from which the said products are derived, if the said method is not part of the claims?

3. If the answer to question 1 or 2 is no, does Article 53(a) EPC forbid patenting such claims?

4. In the context of questions 2 and 3, is it of relevance that after the filing date the same products could be obtained without having to recur to a method necessarily involving the destruction of human embryos (here: eg derivation from available human embryonic cell lines)?"

The application in question, filed by the Wisconsin Alumni Research Foundation, relates to a process for preparing primate embryonic stem cells, and describes methods by which stem cells derived from a primate embryo can be maintained in vitro for a long period of time without losing their potential to differentiate into any cell of the body.

An EPO Examining Division had previously refused the application on the grounds that the method used primate (including human) embryos as the starting material, and these were destroyed in the process. The Examining Division's view was this was contrary to Rule 28 (or Rule 23a as it then was), as well as the EC Biotech Directive 98/44.

The Enlarged Board then invited comments from the EPO President, as well as the public, and has received an enormous amount of material (all of which is accessible via epoline), including a short (and fairly uninformative) letter from the President. The Board will be hearing the President and the applicant at the hearing, but will unsurprisingly not be making its decision immediately.

The IPKat, who does not work in the biotech patenting field, is very wary about commenting further on this case, but is fairly confident that there will be plenty of heat and not much light coming from many of the amicus curiae in this case, given the controversial nature of the subject matter. It may therefore be worth showing up just to see the sideshow, if you're into that kind of thing. Failing that, it's always worth turning up to see Alison Brimelow in action.

EPO Santa snatches Amazon's gifts

The EPO have recently announced the result of an Opposition Division hearing regarding Amazon.com's patent EP0927945 relating to gift ordering. The EPO says:

The so-called "Gift Order Patent" has been revoked by the EPO in an opposition proceeding today [7 December 2007] after a hearing involving three opposing parties and the patent proprietor, Amazon Inc. The patent relates to a method for purchasing goods over the Internet to be sent as gifts.

The contested patent is European Patent EP 0 927 945, granted to Amazon Inc. on 23 April 2003. This patent relates to an invention in the field of computer-implemented inventions (CII). It specifies a method by which a person can purchase a product as a gift and have it shipped based on the e-mail address of the recipient. Based on this e-mail address, the system will then contact the recipient to obtain a valid postal address for shipping. This patent is not to be confused with the “One-Click” patent application, which was withdrawn after the first EPO examination and never granted in Europe.

The parties who have lodged opposition against the patent – all of whom were represented at the hearing – are Fleurop Interflora Businesses and two non-government organisations in the IT field, namely the German Society of Information Sciences, and the Foundation for Free Information Infrastructure (FFII).

One of the opposition’s main arguments against the patent – among others – was that it fell short of meeting the criteria of providing an “inventive step”, as defined in Article 56 of the European Patent Convention (EPC). On these grounds, the three opposing parties asked for the patent to be revoked.

As usual, the EPO has confused the issue for many by muddling patentability with inventive step. The IPKat guesses that the real reason behind the patent being revoked will have been that the 'contribution' (to use the English approach) solely related to excluded matter, which from looking at the claims seems to be that of a method for doing business (and not a computer program at all).

This Kat gets quite annoyed at the way the EPO at all levels persists with this (to his mind at least) rather dishonest approach. What is wrong with saying that the advance over the prior art represented by an application (though it may be novel and inventive) is nevertheless purely within an area that is excluded from patentability? Even though the 'right' result may be achieved in most cases, the approach does result in some quite strained reasoning that tends to stray far from the clear wording of the Convention, and certainly doesn't help with letting a wider audience know where the line between patentability and exclusion lies.

What the EPO has also failed to say is that this may well not be the end of the story. Amazon now have about 2 months to decide whether they want to appeal the decision. If they do, the final decision may not be known for another few years. Should things really have to take this long?