A Article 52 EPC – Patentable inventions

1. Technical character

DE – Germany

Federal Court of Justice of 24 February 2011 (X ZR 121/09) – Website display

Keyword: computer-implemented inventions – technical character – inventive step

The patent was for a method for generating a display enabling users easily to retrieve previously loaded but since closed information pages they had accessed directly or indirectly from the home page of an online information provider.

The Court observed that the first thing to be established in cases concerning computer devices and programs was whether at least some aspect of the claimed subject-matter had technical character (§ 1(1) German Patent Act). If so, it then had to be established that this subject-matter was not merely a computer program as such, which would be excluded from patentability. The exception to patentability would not apply if the second step showed that the teaching provided guidance on how to solve a specific technical problem by technical means.

A method for the computerised processing of procedural steps in technical devices connected via a network (server, clients) met the requirement of technical character, even if the devices were not expressly claimed.

The method at issue was such a method and therefore had the necessary technical character. It was used to register web pages accessed by an internet user and generate a displayable image of these sites. These were typical steps in processing, storing and transmitting data by means of technical devices. However, the claimed teaching also had to provide guidance on how to solve a specific technical problem by technical means.

A technical problem was solved by technical means where device components were modified or addressed in an entirely novel way or where the running of a computer program used to solve the problem was determined by technical factors external to the computer.

Since neither was the case here, the claimed subject-matter was not patentable.

FR – France

Paris Court of Appeal of 28 June 2013 (10/21790) – Mr L. v Publicis Groupe & RATP

Keyword: patentable invention – technical character

Mr L. was the holder of French patent 0 210 686 relating to a communication device, equipped with readers and plasma screens, for broadcasting advertising material from an internet booth. Its features related to a device incorporating two systems which were themselves devices. It integrated methods, techniques and tools making it possible to broadcast advertising other than via television. He sued Publicis Groupe and RATP (Paris public transport company) on the grounds that a communication device on RATP premises infringed his patent, but the Paris District Court revoked all its claims as non-patentable.

The patentee appealed, arguing in particular that in internet terms the innovation was based on the fact that public internet booths were genuine advertising vehicles because they had screens on their top part and side surface. It was indeed inventive in a field where that means of communication did not exist; it combined known means – network-based advertising and the use of the internet in public booths – to arrive at a result unknown in the art.

The respondents argued that the patent did not provide a technical solution to a technical problem and lacked inventive step.

The Court noted that the patentee acknowledged that the two distinct devices comprised known means. The patent described a system for producing and broadcasting advertising material via internet booths similar to telephone boxes. It merely indicated the arrangement and components of individual public internet booths installed at busy locations and offering advertising space on plasma screens, and did so by combining means, all of them known, for broadcasting advertising and providing internet access.

Some of these known means – e.g. a contract or an advertising budget – were non-technical, whilst others – such as plasma screens, a laptop computer, a CD-ROM reader, and the world's smallest PC – were not described in technical terms. They did not solve a technical problem; they were a communication method with a purely commercial purpose. The Court therefore ruled that the patent's subject-matter was not patentable.

FR – France

Paris Court of Appeal of 19 March 2014 (10/21042) – Artygraphie v Cartel

Keyword: patentable invention – technical character

The defendant was the proprietor of European patent 1 336 948 for a "public display interactive terminal". A subsequent request for limitation of the French part of the patent was granted by INPI.

The appellant sought the French part's revocation in its entirety for lack of technical character, novelty and inventive step.

The appellant wanted all claims revoked, even though the defendant was only suing it for infringing claims 1 to 5, 7 and 9. Its request in respect of dependent claims 6, 8 and 10 was therefore inadmissible for lack of legal interest.

The appellant argued that claim 1 as limited should be revoked because some of its features were not patentable; they were results, not technical means. The court observed, however, that the description pointed out that interactive terminals with acquisition systems integrated into the glass already existed. Since these terminals were composed of separate parts, they could be maintained by identifying which specific part was defective; that got round the problem caused by integration. No longer integrating the acquisition system into the glass, however, was also a technical means which, as the appellant conceded in its submissions, enabled the system to be removed without the whole terminal first having to be dismantled; the combination of all the features of claim 1 was indeed the technical means for removing the housing. So this revocation ground was rejected.

The court moreover took the view that the invention was new. Claim 1 was new, and so, therefore, were its dependent claims, which merely added features whose novelty (or otherwise) in isolation was neither here nor there. Claim 1 was also inventive; so too, by the same token, were its dependent claims.

2. Excluded subject-matter and activities

2.1 Discoveries

FR – France

Paris District Court of 3 July 2014 (10/14406) – Evinerude v Aair Lichens

Keyword: patentability – discovery – technical means not claimed

Evinerude wanted Aair Lichens' French patent 0 103 485 revoked on the grounds that it merely described a discovery.

Aair Lichens countered that the patented process was not just a discovery; it went well beyond a mere natural phenomenon. It used lichens to measure quantities of PCDD/F compounds and thus assess their environmental impact. It involved nine steps listed in the company's submissions and apparent from the description.

The Court noted that under Art. 613-2 of the Industrial Property Code the scope of protection conferred by a patent was determined by its claims, as interpreted however using the description and drawings. Since the different process steps were not mentioned in the sole claim, they could not fall within the scope of the patent. Pointing out that, given their absence from the claim, it would anyway be insufficient, the Court also observed that they were not described in the different embodiments either; the description merely disclosed the results of certain samples.

The Court found that under Art. L 611-10 CPI a mere "discovery" was not patentable, but its practical application might be.

Aair Lichens said it had invented a tool which used a natural phenomenon – the fact that lichens absorb PCDD/Fs – to measure quantities of these pollutants and assess their environmental impact. That was indeed an invention, not a discovery. The Court took the view that the claim as drafted did not protect the process steps; it merely asserted that measurements could be carried out to evaluate environmental impact, but that was not a process invention. The technical means for carrying out such measurements could be protectable if described and claimed in themselves. AAIR Lichens argued that the results of the studies mentioned in the description were an integral part of the patent because they made it possible to determine the "average value of atmospheric impregnation". But the Court said no such value was given, let alone claimed, so the patent as granted was for a discovery, not a process. It therefore revoked it.

2.2 Computer programs

GB – United Kingdom

Court of Appeal of 3 May 2013 – HTC v Apple [2013] EWCA Civ 451

Keyword: exclusions from patentability – computer programs

Apple's European patent 2 098 948 related to computer devices with touch sensitive screens capable of responding to more than one touch at a time. Claims 1 and 2 were found invalid because they related to computer programs as such. Apple appealed.

Kitchin LJ held that the appeal concerned the exclusion of computer programs contained in Art. 52(2)(c) EPC, subject to the qualification in Art. 52(3) EPC that it applies only to the extent to which the patent relates to such subject-matter as such. He reasoned as follows:

In Aerotel Ltd v Telco Holdings Ltd; Macrossan's Patent Application [2006] EWCA Civ 1371, (see second edition "Case Law from the Contracting States to the EPC" 2004 – 2011, OJ SE 3/2011, p. 34), the Court of Appeal, after reviewing various decisions of the EPO boards of appeal and earlier UK decisions, set out a four-stage approach to address the exclusion:

i) properly construe the claim;

ii) identify the actual contribution;

iii) ask whether it falls solely within the excluded subject-matter;

iv) check whether the actual or alleged contribution is actually technical in nature.

The boards considered Aerotel in T 154/04, describing it as "not consistent with a good-faith interpretation" of the EPC. It proceeded to endorse what this court had described as the "any hardware" approach, that is to say taking into account all the features of the claimed invention in considering Art. 52 EPC but only taking into account technical features in assessing inventive step. Other decisions of the boards took broadly the same approach.

The court in Symbian v Comptroller-General of Patents [2008] EWCA Civ 1066 (see second edition "Case Law from the Contracting States to the EPC", 2004 – 2011, OJ SE 3/2011, p. 37) explained that the approaches in Aerotel and T 154/05 were capable of reconciliation. Kitchin LJ agreed. On the Aerotel approach a claimed invention whose only contribution was not technical or lay in an excluded field fell to be rejected under Art. 52 EPC under steps (iii) and (iv), whereas on the T 154/04 approach such an invention fell to be rejected under Art. 56 EPC because such a contribution must be cut out of the assessment of inventive step. The court in Symbian considered whether the boards had formed a settled view on the point of difference and, if so, whether it should now follow that approach. It decided that it should not do so. Kitchin LJ therefore adopted the approach in Aerotel.

How then was it to be determined whether an invention has made a technical contribution to the art? A number of points had emerged from Symbian and the authorities to which it referred:

i) It is not possible to define a clear rule to determine whether or not a program is excluded, and each case must be determined on its own facts following the guidance given in Merrill Lynch and Gale and in T 208/84, T 6/83 and T 115/85.

ii) The fact that improvements are made to the software programmed into the computer rather than hardware forming part of the computer makes no difference.

iii) The exclusions operate cumulatively.

iv) It follows that it is helpful to ask: what does the invention contribute to the art as a matter of practical reality over and above the fact that it relates to a program for a computer? If the only contribution lies in excluded matter then it is not patentable.

v) Conversely, it is also helpful to consider whether the invention may be regarded as solving a problem which is essentially technical, whether that problem lies inside or outside the computer.

In AT & T Knowledge Ventures LP's Patent Application [2009] EWHC 343 (Pat) Lewison J had derived a set of useful signposts from earlier decisions:

i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;

ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;

iii) whether the claimed technical effect results in the computer being made to operate in a new way;

iv) whether there is an increase in the speed or reliability of the computer;

v) whether the perceived problem is overcome by the claimed invention as opposed to being merely circumvented.

These were useful but would not be determinative in every case. Furthermore, in the present case Lewison LJ, considering the aspect of the exclusion from patentability of computer programs "as such", observed that as his fourth signpost he would now adopt the less restrictive question whether a program makes a computer better in the sense of running more efficiently and effectively.

According to Kitchin LJ, the problem which the patent addressed (how to deal with multiple simultaneous touches on one of the new multi-touch devices) was essentially technical. The solution caused the device to operate in a new and improved way. The solution was embodied in software, but an invention which was patentable under conventional patentable criteria did not become unpatentable because a computer program was used to implement it.

For all these reasons Kitchin LJ considered that the invention did make a technical contribution to the art and that its contribution did not lie in excluded matter.

GB – United Kingdom

Patents Court of 4 September 2013 – Lantana Ltd v Comptroller General of Patents [2013] EWHC 2673 (Pat)

Keyword: exclusions from patentability – computer programs

Lantana's UK patent application concerned an electronic data retrieval system for access to a remote computer. The application had been refused because it related to a computer program as such, which was excluded under section 1(2) Patents Act 1977. On appeal Lantana claimed that the invention provided technical effects which showed that the contribution made by the invention was technical in nature and thus not within the exclusions.

As Birss J pointed out, the law on this issue had very recently been considered by the Court of Appeal in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 (see foregoing summary), where Kitchin LJ reviewed the English authorities on the question of computer programs as such (Aerotel Ltd v Telco Holdings Ltd; Macrossan's Patent Application [2006] EWCA Civ 1371; Symbian v Comptroller-General of Patents [2008] EWCA Civ 1066, AT &T Knowledge Ventures LP's Patent Application [2009] EWHC 343 (Pat)), as well as the position in the EPO. Kitchin LJ had held that it would not be appropriate to abandon the four-stage structured approach explained in Aerotel.

Counsel for the appellant drew attention to the reference to T 6/83 in HTC v Apple, which reads, "Next, I think it is helpful to consider the facts of some of the cases in which a computer program was held to be patentable. In [T 6/83] the invention consisted of an improved method of communication between programs and files held at different processors within a known network. It was held to be patentable. In Symbian itself the patentable computer program was a new means of accessing dynamic link libraries which had potential application in a variety of devices such as cameras and mobile phones. If those inventions were patentable, why is the invention in the present case not?"

The appellant put this EPO decision at the forefront of its case, pointing out that it had been referred to and relied on by the Court of Appeal in Symbian and Aerotel. However, whilst Birss J found the decision significant as an example of what could be regarded as a technical contribution, the fact that in that case the method of communication between programs and files held at different processors within a known network was held to be patentable in 1988 did not mean that any method of communicating between programs and files on different computers over a network necessarily involved a technical contribution today. The decision showed that such things could be patentable in some cases but did not show that the invention in this case was patentable.

Nor was the fact the claim was novel and inventive the determinant of whether it satisfied Art. 52 EPC; this did not take a contribution outside the excluded area nor did it make an effect or contribution "technical".

The claim related to computer software running on conventional computers connected by a conventional network and moving data from one computer to another by email. Accessing remote computers via continuous connections could be problematic but this was not a technical solution to those problems, it avoided them using a conventional technique. The claim was novel and inventive, but the applicant was unable to identify anything which this claim could fairly be said to contribute which had a technical character. The claim was to unpatentable subject-matter and was contrary to s. 1(2) Patents Act 1977 / Art. 52 EPC. The appeal was dismissed.

Editor's note: This judgment was upheld by the Court of Appeal, see Lantana Ltd v Comptroller General of Patents [2014] EWCA (Civ) 1463, where HTC v Apple (see above) was also cited with approval.

B. Exceptions to patentability

1. Breaches of "ordre public" or morality

DE – Germany

Federal Court of Justice of 27 November 2012 (X ZR 58/07) – Neural progenitor cells II

Keyword: patentability – exceptions – "ordre public" or morality – stem cells

This case related to the patentability of cells produced using human stem cells. The Federal Patent Court had largely granted the action for revocation (see second edition "Case Law from the Contracting States to the EPC", 2004 – 2011, OJ SE 3/2011, p. 41), declaring the patent invalid under § 2(2) German Patent Act and Art. 6 of Directive 98/44/EC in so far as it covered cells produced using embryonic stem cells obtained from human embryos.

On appeal, the Federal Court of Justice sought a preliminary ruling on interpretation of Art. 6 of the Directive from the EU Court of Justice. Ruling on 18 October 2011 in Case C-34/10, it held that any human ovum, once fertilised, was a "human embryo" within the meaning of the Directive. Moreover, the Art. 6 exception to patentability also covered the use of human embryos for scientific research and excluded an invention from patentability where the technical teaching forming the subject-matter of the patent application required the prior destruction of human embryos or their use as base material, even if the description of that teaching did not refer to their use.

The Federal Court of Justice held that § 2(2) No. 3, first sentence, German Patent Act precluded unlimited patentability of progenitor cells obtained from human embryonic stem cells where it was clear from the patent specification that stem cell lines and stem cells obtained from human embryos might be used as base material.

Having regard to the EU Court of Justice's preliminary ruling, it concluded that the patent could not be maintained as granted, because this would create the impression that, contrary to § 2 German Patent Act, obtaining human embryonic stem cells from embryos, a process repeatedly referred to in the description, was patentable and state approved.

By contrast, the claims as limited in the auxiliary request, which did not include the use of human embryonic stem cells obtained by destroying embryos, were not excluded from patentability. For the Court, it sufficed that there were methods of obtaining human embryonic stem cells without destroying embryos.

The Court observed that using human embryonic stem cells would not always constitute a use of embryos within the meaning of the Directive. Human stem cells obtained without destroying embryos could not be classed as embryos within the meaning of § 2(2) No. 3 German Patent Act simply because, in combination with other cells, they could potentially generate an embryo capable of development.

GB – United Kingdom

Patents Court of 17 April 2013 – International Stem Cell Corporation v Comptroller General of Patents [2013] EWHC 807 (Ch)

Keyword: exclusion from patentability – biotechnological inventions – referral to CJEU

The appeal concerned two patent applications in the name of ISCC, both relating to human stem cells. The applications had been refused because the inventions were held to be excluded from patentability under paragraph 3(d) of Schedule A2 Patents Act 1977.

The appeal raised the question: What is meant by the term "human embryos" in Art. 6(2)(c) of Directive 98/44/EC, 'the Biotech Directive'? In particular, what was meant by the CJEU in Case C-34/10 Oliver Brüstle v Greenpeace eV [2012] 1 CMLR 41 by the expression "capable of commencing the process of development of a human being"? Does that contemplate the commencement of a process which must be capable of leading to a human being? Or does it contemplate the commencement of a process of development, even though the process cannot be completed, so that it is incapable of leading to a human being?

The judge decided that a reference to the CJEU was required. He pointed out that the Biotech Directive seeks to harmonise national patent laws concerning biotechnological inventions. Its preamble expresses two competing policy considerations. On the one hand, that research in the field of biotechnology is to be encouraged by means of the patent system, and on the other hand, that patent law must be applied so as to respect the fundamental principles safeguarding the dignity and integrity of the person, so that the human body, at any stage in its formation or development, cannot be patented. The Biotech Directive is to be interpreted in a way that balances these competing policy considerations.

Whilst the Advocate General was clear that the dividing line was whether the cells were totipotent or pluripotent, the CJEU seemed not to follow this distinction. Unlike the Advocate General, the court did not frame its decision in relation to parthenotes on a conditional basis, even though it clearly had in mind the distinction between pluripotent and totipotent cells.

The factual background found by the UKIPO Hearing Officer was as follows:

(i) Like cells from a blastocyst, and in contrast to cells from a fertilised ovum, cells from a parthenote are at all times pluripotent only;

(ii) A parthenote contains only maternal DNA and can never develop into a viable human being;

(iii) As a result of genomic imprinting, certain genes which are essential for development to term are repressed in parthenotes, while other genes which would normally be repressed may be abnormally expressed.

This factual matrix was different to that before the CJEU in Brüstle. In particular, genomic imprinting meant that in contrast to a fertilised ovum, there were no totipotent cells present in a parthenote, even in the first few cell divisions after activation. On the current state of knowledge in the art, despite the superficial similarities in initial development highlighted in the UK Observations and the reference from the Bundesgerichtshof, parthenotes and fertilised ova were not identical at any stage.

On this basis there was sufficient doubt as to the precise meaning of the ruling in Brüstle and as to whether the CJEU would have come to the same conclusion it did on parthenotes with the current facts, to justify making a further reference.

The judge agreed with ISCC that if the process of development was incapable of leading to a human being, as the Hearing Officer had found to be the case in relation to parthenotes, then it should not be excluded from patentability as a 'human embryo'. Like the Advocate General in Brüstle, he considered that totipotent cells should be excluded from patentability, whereas pluripotent cells should not.

Stem cells had the potential to revolutionise the treatment of human disease. The recitals to the Biotech Directive showed that a part of its purpose was encourage research in the field of biotechnology by means of the patent system. The balance between this objective and the need to respect the fundamental principles safeguarding the dignity and integrity of the person could properly be struck by excluding from patentability processes of development which were capable of leading to a human being. However, to exclude processes of development which were incapable of leading to a human being did not strike a balance at all.

The following question was therefore referred to the CJEU: "Are unfertilised human ova whose division and further development have been stimulated by parthenogenesis, and which, in contrast to fertilised ova, contain only pluripotent cells and are incapable of developing into human beings, included in the term 'human embryos' in Art. 6(2)(c) of Directive 98/44/EC on the legal protection of biotechnological inventions?"

Editor's note: In C-364/13 the CJEU ruled that Art. 6(2)(c) of Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions must be interpreted as meaning that an unfertilised human ovum whose division and further development have been stimulated by parthenogenesis does not constitute a 'human embryo', within the meaning of that provision, if, in the light of current scientific knowledge, it does not, in itself, have the inherent capacity of developing into a human being, this being a matter for the national court to determine.

2. Biological inventions

NL – Netherlands

District Court The Hague of 8 May 2013 – Taste of Nature Holding B.V. v Cresco Handels-B.V.

Keyword: patentability – essentially biological process – product-by-process claims for plants

Taste of Nature and Cresco were both active in the production and marketing of sprouts. Taste of Nature was the holder of European patent 1 290 938 for a Raphanus sativa plant (seedling of radish) with increased anthocyanin levels, which was achieved by selection and crossing. Taste of Nature instituted summary proceedings against Cresco, alleging infringement, with Cresco counterclaiming that the patent was, inter alia, not valid because it fell within the exception to patentability under Art. 53(b) EPC, since it was produced through an essentially biological process. On 31 January 2012, Taste of Nature's claims were dismissed by a process judge in summary proceedings, who held that the patent fell under Art. 53(b) EPC. The judge stated that it was plausible that, under Art. 53(b) EPC, not only was an essentially biological method, such as the "classical breeding" in this case, unpatentable, but also a product directly obtained by using that method.

The District Court, in proceedings on the merits, did not concur. It decided not to stay proceedings pending the decision in G 2/12 (OJ 2012, 126) on product-by-process claims for plants, because it was the parties' express wish to receive a swift decision.

The court held that the plant claimed in claim 1 (and its 4 dependent claims) did not fall under the exception in Art. 53(b) EPC.

The court reasoned that Art. 53(b), second half-sentence, EPC, refers only to ʻprocessesʼ. The invention as claimed in claim 1, however, related to a plant, that is to say a product. That the claimed plant is partly defined on the basis of the method of production did not alter that fact. Since the EPC in general, and Art. 53(b) EPC in particular, made a clear distinction between processes and products, it could be derived from the use of the word "process" that the drafters of the EPC deliberately chose not to include products in the scope of this part of Art. 53(b) EPC.

The court also held that granting patent protection for plants that are obtainable by essentially biological processes would not undermine the exception for essentially biological processes. It was argued by Cresco that the applicant for a patent could easily circumvent the exception by changing a process claim to a product-by-process claim. However, the court held that this argument did not take into account that the criteria for the grant of a patent for a method of breeding were different from those for a product-by-process patent claimed for a plant. The latter was a product and could thus only be granted if the plant was new and inventive. It was not sufficient that the method by which the plant was obtained was new and inventive. An inventor who had only developed a new and inventive variant of an essentially biological process could therefore not evade the exception by claiming his invention as a product-by-process claim. In other words, the inventor of a new and inventive variant of an essentially biological process could only evade the exception by making a different invention which is not excluded from patentability and applying for a patent for such an invention. This did not lead to a dilution of the exception.

C. Novelty

1. State of the art

AT – Austria

Board of Appeal of the Austrian Patent Office of 22 November 2012 (B 1/2011)

Keyword: state of the art – online publication – date of publication

The respondent argued that the online publications were prior art; they had been available to the public before the priority date, as was shown by a printout from http://archive.org. The appellant countered that their publication date was not established.

The board held that prior art under Section 3(1) Austrian Patent Law included online publications, but that, since their text was liable to change, a party had to show not only that they had been published before the date of filing but also that their then content had been as alleged.

As a rule, information published online instead of on paper could not be precisely dated with any certainty. It was hardly ever possible to show conclusively when it first appeared, and the internet archive was at best an indication that certain information had been publicly available online at a given date, and that it was worth looking for harder evidence. A webpage printed out from the archive was not sufficient evidence, even if the archive operator confirmed that the information it contained was the same as that in the archive. On its own, therefore, it could not destroy novelty – for which the standard of evidence was in any case set very high. In this case, there was insufficient evidence that the webpage had indeed been publicly available on the date stated and with the content alleged.

AT – Austria

Austrian Supreme Patent and Trademark Chamber of 8 May 2013 (OBp 2/13)

Keyword: state of the art – public prior use – implicit obligation to maintain secrecy

The patent in suit was about preventing the unintentional loosening of screw parts. The decision turned on whether or not the record of a meeting counted as pre-published and was thus prior art. The meeting was attended by a number of firms, including a (legally independent) marketing company of the appellant/opponent and a (legally independent) potential buyer.

The Supreme Patent and Trademark Chamber ruled that there was no public prior use if parties to information were under an obligation to keep it secret. For that, it was enough if, in the particular circumstances of the case in point, it could be strongly inferred that the parties wanted such an obligation, even if it had not been explicitly agreed (BPatG 11 W 317/04; BPatG 4 Ni 40/06).

The firms represented at the meeting were already in business with each other, and the meeting formed part of those dealings. It was in the marketing company's interest that the course of action discussed be kept secret. The potential buyer and the salesman (who had a contract with the marketing company) must have been aware of that. The meeting's purpose was to devise, in the interests of all concerned, a strategy making it possible to produce an improved product without the drawbacks discussed. Under these circumstances the opponent and its marketing company could legitimately expect both the buyer and the salesman to maintain secrecy – and, in line with that expectation, the footer to the memo recording the meeting instructed the reader to take due care in that regard, pointing out for example that such protection as was available under the law was invoked in respect of the documents' form and content.

The Chamber dismissed the opponent's appeal and confirmed that the patent was maintained.

BE – Belgium

Mons Commercial Court of 3 November 2011 (case A/10/792) – Valéo v Lexmond Trading

Keyword: novelty – burden of proof – general allegations – stay of proceedings

The claimant sought revocation of two patents, arguing that they lacked novelty and inventive step; their subject-matter was known from numerous existing patents. The burden of proving that the patentability conditions were not fulfilled thus lay with Lexmond, whose reading of the patents, in the court's view, was general, imprecise, and glossed over their specific points.

Claim 1 of European patent 1 260 409 was directed not to a device for adjusting a beam by pivoting the reflector (which was indeed known) but to such a device characterised in that the light source was fixedly mounted in the housing and the tilting axis of the reflector passed close to the source. So to justify revocation, it was not enough to show merely that reflector-pivoting beam-adjustment devices already existed. Similarly, claim 1 of European patent 1 055 556 was directed not just to a means for adjusting the reflector's position using a threaded screw (that too was known) but to such a means that ensured resilient contact between the screw and the toothed wheel.

The claimant had submitted photographs of headlights manufactured before the priority dates, but they were inconclusive. Simply asserting that the older patents had the same purpose – headlight adjustment – was not enough. A patent was for technical matter, not a result.

Novelty had to be "compact". In other words, to destroy it a citation had to contain all the features claimed; different documents could not be combined.

The court refused a request that it stay the infringement proceedings pending the outcome of oppositions at the EPO, noting that national courts did not have to do that automatically in such circumstances. That would deprive patentees of protection even where oppositions were spurious. In this case, there was no serious reason to believe the oppositions might lead to the patents' revocation, so the court saw no need to stay its own proceedings.

DE – Germany

Federal Court of Justice of 15 October (2013 X ZR 41/11) – Image display device

Keyword: novelty – state of the art

The patent at issue was for a computer system referred to in the description as an image display device and comprising a computer, a display unit (visual display unit, monitor) and an input device (keyboard).

The Court held that the subject-matter of the patent was not patentable (§ 22(1) and 21(1) No. 1 German Patent Act). The essence of the claim as granted had been part of the prior art at the priority date and so was not novel. Where – as here – the purchaser of a device was issued with an accompanying manual, the technical information in it could not be regarded as having remained publicly unavailable because the seller had intended it to be used for a particular purpose only and had forbidden its reproduction for other purposes (development of Federal Court of Justice 15 January 2013 – Meter electronics for a Coriolis flow meter).

The claimed display unit was fully described in the manual issued to purchasers. The manual contained instructions and guidance on how a monitor could be connected to a computer via an interface in such a way that it no longer had to be set up manually and could instead be controlled via the computer. It could be gathered from the block diagram of the interface that data was exchanged via it in both directions between the computer and the monitor. In the Court's view, the manual thus disclosed the essential features of the patent.

It made no difference that it was stated on the cover page that the information in the manual was the patent proprietor's "property" and intended solely for developing software using an interface with the monitor. Nor could any obligation to maintain secrecy be inferred from the fact that it was impermissible to reproduce the manual or use it for any other purpose without written consent. Accordingly, the technical teaching of the claim at issue had been made available to the public in the manual.

GB – United Kingdom

Patents Court of 22 July 2014 Aga Medical Corporation v Occlutech (UK) Ltd [2014] EWHC 2506 (Pat)

Keyword: novelty – anticipation – prior use – obligation of confidentiality

Aga's European patent (UK) 0 957 773 related to a medical device for occluding defects in the atrial septum of the heart ("ASD"), sometimes referred to as a "hole in the heart". Occlutech alleged invalidity on the ground of anticipation through the patentee's own prior disclosure of the invention to doctors at the hospital where the first clinical trials of the new device were carried out.

In this context it was necessary for the court to consider whether the disclosure to the doctors who carried out the procedures placed them under an obligation of confidence since a disclosure only formed part of the state of the art if it was made available to the public; and for this purpose, it must have been made available to at least one person who was free in law and equity to use it (Terrell on the Law of Patents, 17th ed., 2011, para 11 – 14).

This question was argued and decided according to English law. Thus, in A-G v Guardian Newspapers (No 2) [1990] 1 AC 109 Lord Goff set out the principle that "a duty of confidence arises when confidential information comes to the knowledge of a person … in circumstances where he has notice, or is held to have agreed, that the information is confidential, with the effect that it would be just in all the circumstances that he should be precluded from disclosing the information to others". According to Lord Nicholls in Campbell v Mirror Group Newspapers [2004] UKHL 22, "... the law imposes a 'duty of confidence' whenever a person receives information he knows or ought to know is fairly and reasonably to be regarded as confidential". The circumstances in which an obligation of confidentiality would be imposed were explained in Coco v AN Clark (Engineers) Ltd [1969] RPC 41: "... if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose upon him the equitable obligation of confidence."

The devices were provided to the hospital free of charge. There was no suggestion that Prof M or Dr G was under an express obligation of confidence – they were not asked to sign any form of confidentiality or non-disclosure undertaking by AGA. The question was whether they were under a duty of confidence in equity. AGA had submitted that such a duty arose from the circumstances of this being a clinical trial of new medical devices.

In Roth J's judgment, there was no presumption of confidentiality simply because this was a clinical trial (cf. Terrell, loc. cit.; Gurry on Breach of Confidence, 2nd ed., 2012, chap. 7). Everything depended on the facts. Both doctors were emphatic that they were never given any indication or impression that the details of the devices were to be kept confidential. The inventor, Dr A, had discussed the device and the procedure with them but had said nothing about confidentiality. Prof M had spoken subsequently about the device in briefing sessions to other doctors in the hospital, and also discussed the device and the success of the clinical trials in a presentation to a wider medical audience at a paediatric congress. Roth J stressed that the disclosure relied on by Occlutech was not that by Prof M to other doctors but that to Prof M himself. Prof M's wider disclosure was relevant to the question whether he was under an equitable duty of confidence to the extent that, if he were, his presentation at the congress would have breached it. The judge considered that Prof M would never have wished to betray a confidence placed in him by Dr A. This demonstrated that he did not perceive himself to be subject to a duty of confidence.

In this case, Prof M was not embarking on a commercial venture with AGA or Dr A. Since the device was, in Prof M's words, "revolutionary" it was natural that he would wish to speak about it, and the successful trials, to a wider medical audience. It was reasonable for Prof M to assume that if the details were to be kept confidential, he would have been told something to that effect by Dr A beforehand. The judge did not consider, in all the circumstances, that just because this was the first clinical trial, Prof M ought to have known that it was fairly and reasonably to be regarded as confidential.

2. Chemical inventions

FR – France

Court of Cassation of 29 November 2011 [10-24786] – Negma v Biogaran

Keyword: novelty – "new" degree of purity

Negma was challenging the Paris Court of Appeal judgment of 30 June 2010 upholding the revocation of claim 14 of European patent 0 520 414 (for a pharmaceutical product) for lack of novelty.

It argued that prior art could be cited only in respect of what it actually described. The courts could draw on the embodiment exemplified in the citation's description, but – since it was just an example – could not take into account, when assessing novelty, any other possible embodiments not described in the citation. Negma also argued that a pharmaceutical composition could be novel by virtue of its degree of purity, if that added something new to the art in a given context. Citing Art. L. 614-12 of the French Industrial Property Code in conjunction with Art. 52, 54 and 138 EPC, Negma said the appeal court had been mistaken in ruling that the diacetylrhein claimed in European patent 0 520 414 had a known composition and therapeutic properties, and that a product could not be novel simply because it was prepared in a purer form.

Upholding the appeal court's judgment, the Court of Cassation ruled that claim 14 of European patent 0 520 414 for "A pharmaceutical product comprising diacetylrhein containing less than 20 ppm aloe-emodin components …" was fully anticipated by a US patent disclosing the substance in all degrees of purity, the aim being to achieve the purest form possible; aloe-emodin was merely an impurity, not part of the chemical structure of the composition disclosed.

3. Novelty of use – Article 54(5) EPC

DE – Germany

Federal Court of Justice of 24 September 2013 (X ZR 40/12) – Fatty acids

Keyword: second medical use – dosage

The patent at issue concerned the use of essential fatty acids in preparing a medicine for treating patients who had suffered a heart attack. It claimed such use in preparing the medicine in a particular dosage.

The court confirmed that the dosage regime in claim 1 had to be taken into account in assessing patentability. In its earlier Carvedilol II judgment of 19 December 2006 – on a patent claiming, among other things, a particular dosage for administering a medicine – it had held that mere recommendations as to dosage unrelated to the medicine's preparation were not patentable. It had, however, allowed a claim directed instead to the medicine's preparation for use in that dosage. The claims now at issue met the Carvedilol II requirements.

Nevertheless, the subject-matter of claim 1 as allowed by the Patent Court in its contested judgment was not patentable. Contrary to what that court had held, a previously published clinical study of the administration of fish oil to heart-attack patients had given the skilled person cause to consider the use protected in the claim. It was irrelevant for the patentability assessment that the study did not set out the biological reasons for the observed effects in detail. A later detection of those reasons might constitute a very valuable scientific discovery, but a description of this discovery would not disclose any new technical teaching if the substance administered, its medical use, its dosage and the other details of how it was to be administered did not differ from a previously disclosed use of a substance to treat a disease (Federal Court of Justice of 9 June 2011 – Memantine).

DE – Germany

Federal Court of Justice of 25 February 2014 (X ZB 5/13) – Collagenase I

Keyword: further medical use – therapeutic instruction – inventive step – doctor's standard repertoire

The invention concerned use of the known enzyme collagenase to treat Dupuytren's disease. The patent differed from the state of the art (only) in that it included a therapeutic instruction requiring that, immediately after injection of the substance, the treated body parts be immobilised for several hours (feature 4 of claim 1). The Federal Patent Court had refused to consider this feature in assessing patentability, and also found that – even if it were considered – there was no inventive step.

The Federal Court of Justice held that feature 4 had to be considered in assessing the patentability of the claimed subject-matter. It observed that a claim directed to preparation of a medicine for use in a particular dosage was patentable (Federal Court of Justice of 19 December 2006 – Carvedilol II and of 24 September 2013 – Fatty acids). The subject-matter of a claim for a new use of a medicinal product was the suitability of a known substance for a particular medical purpose and so, ultimately, a property inherent in that substance (Federal Court of Justice of 5 October 2005 – Utility model for a medicinal product). This amounted, essentially, to a purpose-limited product protection of the kind now also expressly permitted under § 3(4) German Patent Act and Art. 54(5) EPC for further medical uses, irrespective of whether the claim as worded was directed to the medicine's use, its preparation for a specific purpose or explicitly to a purpose-limited product protection.

The same had to apply to instructions relating to parameters of the claimed use other than the dosage.

The EPO's Enlarged Board of Appeal had ruled that "any specific use" within the meaning of Art. 54(5) EPC, as in force since 13 December 2007, could not be understood as restricted to uses in treating another disease (G 2/08). It was the EPO's decision-making practice not to restrict patentability solely to such uses or different dosage regimens; instead, it sufficed that the use in question differed from those known in the art – i.e. was novel – and involved an inventive step.

The same was true under German patent law. The very wording of the relevant legislative provisions precluded a restriction of patentability to particular aspects of the use such as, for instance, dosage, and such a restriction could not be reconciled with the spirit and purpose of those provisions.

The specific use of a substance in a therapeutic treatment depended not only on the condition to be treated and the dosage but also on other parameters influencing the substance's effect (such as the method of administration, the substance's consistency or the patient category) and, therefore, potentially crucial to achieving the intended result of its use.

Under § 2a(1) No. 2 German Patent Act and Art. 53(c) EPC, however, no consideration could be given in the patentability assessment to those aspects of use unconnected with the claimed substance's properties and its effect on the human or animal body. Therefore, therapy-related instructions could only serve as a basis for patentability if they were objectively designed to give effect to, enhance, accelerate or otherwise improve the substance's effect, but not if they concerned therapeutic measures suitable for treating the condition in question only in addition to and independently of that effect. The feature at issue in this case (immobilising the hand) was designed to improve the effect of the administered substance. It was therefore related to how the substance was to be used and so to an aspect to be considered in assessing patentability.

The court also held that it was not enough for affirming patentability that an instruction to use a particular substance in a specific way was new, i.e. not directly and unambiguously disclosed for that substance in the prior art. Rather, for the assessment of inventive step (§ 4 German Patent Act), account also had to be taken of practices obvious to the skilled person because they were part of a doctor's standard repertoire at the priority date. Especially where, instead of bringing about a specific effect of the substance in question, a feature was used to prevent generally undesirable effects or to localise, or limit the duration of, the substance's effects, it was often a matter of chance whether there was any written document of its use also and specifically for that particular substance. However, there was no need for such document where it was clear that the skilled person would have contemplated using the feature at the priority date and there were no special circumstances rendering such use in the specific situation at issue impossible or impracticable.

FR – France

Paris Court of Appeal of 12 March 2014 (12/07203) – Eli Lilly v Teva

Keyword: dosage regime – not patentable

Eli Lilly was the proprietor of European patents 1 438 957 and 0 584 952 for an invention using raloxifene to prevent osteoporosis by inhibiting the loss of bone mass, while avoiding the negative side effects associated with oestrogen therapy. Teva, which had placed a generic medicament based on raloxifene on the market, sought the patents' revocation.

European patent 0 584 952 had been limited in proceedings before the INPI Director General. The Court had dismissed Teva's appeal against the limitation decision by judgment of 1 July 2011. European patent 1 438 957 had been revoked by an EPO board of appeal by decision of 23 October 2012 (T 209/10), its French part having already been revoked by the Paris District Court by judgment of 20 March 2012 (RG 09/12706).

The Court dismissed the ground for appeal based on inadmissible extension of the claims (Art. L.613-25(c) and (d) of the French Intellectual Property Code, which corresponds to Art. 138(1)(c) EPC).

On the subject of priority, the Court held that the inventions merely had to be identical in order to claim the priority of an earlier patent application under Art. 87 to 89 EPC. That condition was met here. Consequently, the validity of European patent 0 584 952 was to be assessed on the basis of novelty at the priority date.

Teva asserted that claim 1, which was novel over the prior art only in terms of its specific patient population, was merely for a second therapeutic use because raloxifene was already known for therapeutic uses (infertility, breast cancer, benign hypertrophy of the prostate). Art. 54(5) EPC 1973 and Art. L.611-11 Intellectual Property Code, as in force at the time the patent applications had been filed, had excluded patentability of second therapeutic uses because they lacked novelty. The Court, however, held that, while raloxifene was undisputedly already known for the other uses cited, the law applicable at the patent's filing date had in fact allowed European patents to be granted on the basis of claims directed, like those in question here, to the use of a substance for the manufacture of a drug for a new therapeutic application.

Teva's request for revocation of the other claims was also directed at the dependent claims. The Court held that claims 9 to 12 concerned specific dosage regimes for the administration of raloxifene and were not patentable, since dosage levels were determined by the physician prescribing the relevant drug, while the range of dosage levels was extremely large (0.1-1 000 mg) and no information was given about the relevance of those levels. It therefore revoked claims 9 to 12 for lack of inventive step. As to dependent claim 13, it observed that it specified that the drug was suitable for oral administration. In its view, this was the most common administration form for the skilled person, so the claim had to be revoked for lack of inventive step.

Editor's note: For another French decision ruling that claims directed to a dosage regime are not allowable, see Paris District Court of 28 September 2010 (second edition "Case Law from the Contracting States to the EPC" 2004 – 2011, OJ SE 3/2011, p. 215 and 218). See also (not reported) TGI Paris, 5 December 2014 (12/13507) published in PIBD 1022-III-143, ref. B20140203. For a different view, see also G 2/08 (OJ 2010, 456).

D. Inventive step

1. Assessment of inventive step

DE – Germany

Federal Court of Justice of 22 November 2011 (X ZR 58/10) – E-Mail via SMS

Keyword: inventive step – obviousness – standards (data standards)

The patent concerned a method of transmitting e-mails via the short message service (SMS). The relevant specifications in the standards for SMS transmission were incompatible with the e-mail standard RFC 822. In particular, the SMS standards did not support all the data fields specified in the e-mail standard. The patent sought to solve this technical problem by providing a method whereby additional data fields specified in the RFC 822 standard could be transmitted in an SMS text message, thereby facilitating transmission where different providers were involved.

The Federal Court of Justice held that the subject-matter of claim 1 was obvious in the light of the prior art. A skilled person concerned with improving a particular aspect of a data structure specified in an international standard would generally have cause to attempt to solve the problem by using mechanisms already part of that standard (in this case: the SMS standard).

There might well have been an unlimited number of other possible solutions in theory, but the chance that a solution requiring a fundamental change to the established SMS standard could actually be implemented was negligible at best. That was especially so in this case, since the additional benefit over the established standard achievable through the patented method, albeit not insignificant, was fairly limited. Consequently, a skilled person interested in practicability would have had cause to investigate primarily approaches entailing no change to the existing standard, or at least as minor an adaptation as possible. It was therefore obvious to seek solutions within the structures specified by the existing SMS standard.

Where a standard allows for only a limited number of possible solutions, each with its own specific advantages and disadvantages, the skilled person would normally have cause to consider all of them.

DE – Germany

Federal Court of Justice of 11 March 2014 (X ZR 139/10) – Paint supply system

Keyword: inventive step – common general knowledge – standard repertoire

The defendant was the proprietor of European patent 796 665 for a process and system for supplying paint to a coating installation for production-line coating of workpieces, in particular vehicle bodywork. Feature 3 specified that the process contained a device which could transport at least two paint containers to a filling station at any one time.

The Court found that the subject-matter was not patentable because it did not involve any inventive step. It made no difference that the claimant had been unable to cite any precedent for feature 3 in the field of coating installations.

According to the Court's case law, to what extent the skilled person had to be prompted by the prior art to develop a known solution in a particular way, and how specific any such prompt had to be, was a question to be answered on a case-by-case basis after looking at all the relevant facts. Not only explicit pointers had to be considered. Specific features of the technical field in question might also be relevant. These included the training received by specialists, the standard approach to developing innovations, technical requirements arising from the design or use of the item in question, and even non-technical requirements (Federal Court of Justice of 20 December 2011 – X ZB 6/10 – Installation device II).

Therefore, the claimant's failure to cite a precedent from practice in the relevant field did not necessarily preclude a finding that the skilled person had reason to follow the approach in feature 3 when designing an installation for the production-line coating of workpieces. If a mechanical-engineering solution was a measure generally considered for a large number of purposes and therefore, by nature, formed part of the common general knowledge of the engineers relevant in this case, there might be reason to consider it simply because using its functionality in the situation at issue was objectively expedient and there were no special circumstances rendering such use impossible, difficult or otherwise impracticable from a specialist point of view (see, on the standard medical repertoire, Federal Court of Justice of 25 February 2014 – X ZB 5/13 – Collagenase I, under chapter I.C.3. "Novelty of use – Article 54(5) EPC").

That was the case here. The simultaneous handling of two objects instead of one was part of the common general knowledge or "standard repertoire" in the relevant engineering field on which the skilled person could, and he would have a reason to, regularly draw in developing existing installations, particularly where it was a question of ensuring that working procedures were as effective, efficient and quick as possible.

FR – France

Court of Cassation of 2 November 2011 [10-30907] – Groupe Vicard SA v Tonnellerie Ludonnaise SA

Keyword: inventive step – prejudice to be overcome

Vicard is the proprietor of French patent 0 007 395 relating to a wooden cask, its method of manufacture and the device therefor. Alleging in particular that two cooperage companies manufactured and sold casks reproducing the features of claims 1 to 11 of its patent, Vicard took saisie-contrefaçon measures (to obtain evidence) and brought an infringement action against the two companies. They in turn asserted that the patent's claims were invalid for lack of novelty and inventive step. The Court of Appeal had expressly acknowledged inventiveness. The appeal was against that decision.

On the alleged lack of inventive step, the Court of Cassation held that though lateral grooving or tongue-and-groove techniques were known as a means of assembling laths and holding them together, the skilled person – a cooper – would have had to overcome a prejudice and shown inventiveness to devise a method to manufacture cask bottoms with an assembly of parallel laths in sealed contact, using neither joints, studs, nor adhesive. On this point the Court of Cassation upheld the judgment of the Court of Appeal.

FR – France

Paris Court of Appeal of 12 February 2014 (12/16589) – Anne D; Sarl AD v Hermès Sellier SA

Keyword: inventive step – old prior art document as closest prior art – amendments

In 2007, Anne D., proprietor of French patent 109 972 for a device to lengthen bag handles or the like, had discovered that Hermès was selling a handbag model which, in her view, reproduced the patented features. Arguing that her patent was invalid in view of the prior art (including a Medes bag design from 1958), Hermès had requested that she surrender it. She had reacted by amending the patent in 2009.

Inventive step

The court upheld the first-instance decision to revoke the patent for lack of inventive step. The cited bag design from 1958 had already disclosed a non-detachable shoulder strap which could be slipped through leather rings on the handles. Even though the patent application at issue had been filed many years later, the patented device had already existed, so the skilled person wanting to achieve the desired effect – a strap not sticking out in an unsightly manner when not in use – could readily do so merely by consulting the 1958 design. Even if that design had gone out of fashion by the time the patent application was filed, no inventive step was needed to implement it; it simply had to be adapted by a stylist or designer of fine leather goods, who would inevitably remember or have access to pictures of old handbag designs.

The court added that Hermès had advertised its strap system allowing the bag either to be worn over the shoulder or carried in the hand as "reinventing the art and style" of wearing shoulder bags and described it as "ingenious" in its 2007 annual report. But this was not enough to show that it had not been obvious. It was clearly a logical development of the Medes model, which, although it had not been made for over half a century, had never been technically discredited.


The court endorsed the first-instance finding that, as the amendments limiting the patent had been registered in the national patent register, they were enforceable against Hermès and had retrospective effect from the date of filing.

The amendments, made after the first formal warnings in 2007 and before the infringement action had been brought in 2010, were admissible. It was permissible to limit a French patent voluntarily with a view to ensuring its validity before bringing an action for infringement proceedings (or, indeed, at any other time, e.g. even after the action had been brought). The three successive amendments made in 2009 could not be considered dilatory or abusive, because patent proprietors were entitled to try to protect their patent as necessary in the light of prior art cited by alleged infringers before bringing any action against them.

GB – United Kingdom

Patents Court of 27 July 2012 – Virgin Atlantic Airways Ltd v Contour Aerospace Ltd and Ors [2012] EWHC 2153 (Pat)

Keyword: inventive step – obviousness

Virgin's European (UK) patent 1 495 908 for a seating system in passenger aircraft had already been the subject of an earlier action before the Court of Appeal in Virgin Atlantic v Premium Aircraft [2009] EWCA Civ 1062. It had been held novel, inventive, and infringed. However, the patent was subsequently maintained in amended form in proceedings before the board of appeal at the EPO (T 1495/09). Contour was given leave to appeal on the grounds that the amendment was such that the patent was no longer infringed.

Two distinct arguments had been advanced concerning obviousness, one based on T 939/92, the second a more conventional obviousness attack.

According to Beloit Technologies Inc. v Valmet Paper Machinery Inc. [1995] RPC 705, a patent should not be construed by reference to the prior art, unless it is prior art which the patent acknowledges. In the Court of Appeal judgment in Virgin v Premium, it was stated that only if no other possible construction was possible would the skilled man be forced to conclude that the patentee had claimed that which he knew was old. According to Floyd J, although the Beloit principle was part of the reasoning of Lewison J and the Court of Appeal, "it was not the totality of it", and on that basis Floyd J held that the feature at issue was not anticipated by the prior art document. In so concluding he was aware that he differed from the board of appeal in T 939/92. However, as it was not the practice of the boards of appeal to give reasons for their interpretation of claims he was not able to analyse their reasoning to see if he was persuaded by it.

Contour also cited Dr Reddy's Laboratories v Eli Lilly [2009] EWCA Civ 1362 to the effect that EPO jurisprudence was founded firmly around a fundamental question: has a patentee made a novel non-obvious technical advance and provided sufficient justification for it to be credible? T 939/92 held that an arbitrary distinction from the prior art was not a technical advance and that the non-obvious technical advance must apply across the breadth of the claim. Contour argued that the only distinction between the prior art document and the patent was the triangular shape of the headrest, which was arbitrary. Floyd J disagreed, as this shape allowed advantage to be taken of the triangular rearward space.

The conventional obviousness attack was based on the construction adopted by the Court of Appeal of the rearward space. Citing the principles set out in Conor v Angiotech [2008] UKHL 49 and applying the structured approach set out in Pozzoli v BDMO [2007] EWCA Civ 588 (see also second edition "Case Law from the Contracting States to the EPC" 2004 – 2011, OJ SE 3/2011, p. 221 and 124), the judge found that the invention (of extending the seat in bed mode into a triangular space between the seat unit and cabin wall) was not obvious. It was a case where it was legitimate to ask why such a simple step, if obvious, was not taken by anyone else before the priority date.

Editor's note: an issue also arose concerning the designation of the UK (see chapter VI.2. "EPO decisions, the Convention and national courts").

GB – United Kingdom

Court of Appeal of 10 October 2012 – MedImmune Ltd v Novartis Pharmaceuticals UK Ltd [2012] EWCA Civ 1234

Keyword: inventive step – obviousness – skilled person – team – common general knowledge

Medimmune had alleged that Novartis had infringed European patent (UK) 2 055 777, which concerned a technique called antibody phage display, by selling a product used for the treatment of wet age-related macular degeneration of the eye. Novartis disputed infringement and counterclaimed for revocation.

The judge had held the patent invalid on the grounds of obviousness and because the claims were not entitled to the priority claimed. His decision was upheld by the Court of Appeal on both these points (on priority see under chapter IV.).

Novartis had maintained that the judge mischaracterised the nature of the skilled team to whom the patent was addressed, However, Kitchin LJ considered that the judge had identified the skilled team correctly; according to Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819, the court would have regard to the reality of the position at the time and the combined skills of real research teams in the art. Where the invention involved the use of more than one skill, if it was obvious to a person skilled in the art of any one of those skills, then the invention was obvious. In the case of obviousness in view of the state of the art, a key question was "what problem was the patentee trying to solve?". That led one to consider the art in which the problem lay. The notional team in that art was the relevant team making up the skilled person. The invention would interest antibody engineers; that it might have a broader application was irrelevant.

The judge had held that phage display formed part of the common general knowledge; it was an established technique, although not one in routine use. Kitchin LJ agreed. The fact that a concept had not been used at all did not mean that it could not form part of the common general knowledge, though it made it unlikely (Beloit Technologies Inc v Valmet Paper Machinery Inc [1997] RPC 489).

It was often convenient, but not essential, to consider obviousness using the structured approach in Pozzoli v BDMO SA [2007] EWCA Civ 588 (see also second edition "Case Law from the Contracting States to the EPC" 2004 – 2011, OJ SE 3/2011, p. 124). Ultimately the court had to evaluate all the relevant circumstances in order to answer a single question of fact: was it obvious to the skilled but unimaginative addressee to make a product or carry out a process falling within the claim?

Step (4) of Pozzoli was key; the court must consider whether the claimed invention was obvious to the skilled but unimaginative addressee at the priority date. It could be appropriate to take into account whether it was obvious to try a particular route to an improved product or process. Even with no certainty of success the skilled person might assess the prospects of success as being sufficient to warrant a trial. This could be sufficient to render an invention obvious. However, some areas of technology (pharmaceuticals, biotechnology) were heavily dependent on research, and there could be many possible avenues to explore with little idea if one would prove fruitful. Nevertheless they were pursued. So the judgments of the UK courts and the boards of appeal often revealed an enquiry by the tribunal into whether it was obvious to pursue a particular approach with a reasonable or fair expectation of success as opposed to a hope to succeed. This would depend upon all the circumstances, including an ability rationally to predict a successful outcome, how long the project might take, the extent to which the field was unexplored, the complexity or otherwise of any necessary experiments, whether such experiments could be performed by routine means and whether the skilled person would have to make a series of correct decisions along the way.

Whether a route was obvious to try was only one of many considerations the court might take into account. The question of obviousness had to be considered on the facts of each case. The weight to be attached to any particular factor had to be considered in the light of all the relevant circumstances, which might include the motive to find a solution to the problem addressed, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success. No formula could be substituted for the words of the statute. The nature of this evaluation of evidence underpinned an appeal court's reluctance to interfere with a trial judge's decision on obviousness unless he had erred in principle.

GB – United Kingdom

Court of Appeal of 12 December 2012 – Novartis AG v Generics (UK) Ltd [2012] EWCA Civ 1623

Keyword: inventive step – obviousness – obvious to try

The appeal was against the revocation of Novartis' Supplementary Protection Certificate ("SPC") and its basic patent on the ground of lack of inventive step. The SPC and the patent protected a drug called rivastigmine, the (-) enantiomer of a racemic compound referred to as RA7. This compound was disclosed in two prior publications by Professor Weinstock and was one of a number of compounds proposed by Professor Weinstock for the treatment of Alzheimer's disease ("AD"). However, the publications did not suggest that it should be resolved into its individual enantiomers, as was claimed in the patent in suit. The issue at trial was therefore whether, in the light of either of the Weinstock publications, it would have been obvious to a skilled team working in the pharmaceutical industry to select RA7 and resolve it into its individual enantiomers and use the (-) enan-tiomer as a medicinal product for the treatment of AD.

The judgment of Floyd J was upheld. He had identified the difference between the invention and the disclosure of the Weinstock publications in these terms: "... The steps from Weinstock to the inventive concept are ... : (a) the choice of RA7 (b) its resolution into its enantiomers and (c) the preparation of a pharmaceutical containing the (-) enantiomer. It is of course implicit in Weinstock that the ultimate target is a pharmaceutical for the treatment of AD." On the evidence before him he found that each of these steps was obvious.

Kitchin LJ accepted that a patentee is entitled to have the issue of obviousness assessed by reference to the invention he has described and claimed. This was made clear in Conor v Angiotech [2008] UKHL 49. In deciding whether the invention was obvious to the skilled but unimaginative addressee at the priority date the court would have regard to all the circumstances of the case including, where appropriate, whether it was obvious to try a particular route with a reasonable or fair expectation of success. What is a reasonable or fair expectation of success would again depend upon all the circumstances and would vary from case to case. Sometimes, as in Saint Gobain v Fusion-Provida [2005] EWCA Civ 177, it might be appropriate to consider whether it was more or less self-evident that what was being tested ought to work. So, simply including something in a research project in the hope that something might turn up was unlikely to be enough. But Kitchin LJ rejected the submission that the court can only make a finding of obviousness where it is manifest that a test ought to work. That would be to impose a straightjacket upon the assessment of obviousness which was not warranted by the statutory test and would preclude a finding of obviousness in a case where the results of an entirely routine test are unpredictable.

The correct approach had been recently explained in MedImmune v Novartis [2012] EWCA Civ 1234 (see foregoing summary); it might be appropriate to take into account whether it was obvious to try a particular route to an improved product or process. However, in areas such as pharmaceuticals and biotechnology, which were heavily dependent on research, workers were faced with many possible avenues to explore but had little idea if any one of them will prove fruitful. Nevertheless they did pursue them. Denial of patent protection in all such cases would act as a significant deterrent to research. The judgments of the English courts and of the boards of appeal therefore often revealed an enquiry by the tribunal into whether it was obvious to pursue a particular approach with a reasonable or fair expectation of success as opposed to a hope to succeed. The notion of something being obvious to try was useful only in a case where there was a fair expectation of success (see Johns-Manville Corporation's Patent [1967] RPC 479).

Kitchin LJ concluded that the approach adopted by Floyd J revealed no error of law. To the contrary, he had approached the matter entirely properly. The skilled team would consider that resolution of the racemate might bring practical benefits and would see resolution as a routine step.

NL – Netherlands

Supreme Court (Hoge Raad) of 7 June 2013 – Lundbeck v Tiefenbacher/Centrafarm – Escitalopram

Keyword: inventive step – envisageable product

Lundbeck is the holder of European patent 0 347 066, which was granted for new enantiomers and their isolation and relates to escitalopram. The patent had been invalidated in its entirety by the District Court of The Hague at first instance. The Hague Court of Appeal (24 January 2012) had held the method for obtaining escitalopram to be novel and inventive. Lundbeck thus acquired the exclusive rights to the product directly obtained by means of said method. However, this did not extend to the product escitalopram as such. Lundbeck's claim that it was impossible at the priority date to obtain the substance was held to be irrelevant. The Supreme Court overturned the Court of Appeal's decision.

The Supreme Court referred to the case law of the boards of appeal and cited T 595/90, which deals with the inventiveness of a product which could be envisaged as such but for which no known method of manufacture exists. According to T 595/90 a product which can be envisaged as such with all the characteristics determining its identity including its properties in use, i.e. an otherwise obvious entity, may become non-obvious and claimable as such, if there is no known way or applicable (analogous) method in the art to make it, and the claimed methods for its preparation are the first to achieve this and do so in an inventive manner.

The Supreme Court followed the established case law of the boards of appeal. It held that a substance of which the composition and possible features are in themselves known and which for that reason follows from the state of the art in an obvious manner as intended by Art. 56 EPC and Art. 6 Dutch Patents Act 1995, can nonetheless be non-obvious within the meaning of these provisions and therefore patentable if at the priority date the state of the art does not include a method for obtaining this substance and with the claimed method this substance can therefore be obtained for the first time in an inventive manner. After all, in such a case the substance too, although in itself known in terms of composition and possible features, does not follow from the state of the art in an obvious manner. That is why in the case at issue a substance patent could be obtained.

This was in keeping with the final-instance decisions in Germany and England with regard to the patent in question, which also decided in this vein (BGH 10 September 2009, Xa ZR 130/07; House of Lords, 25 February 2009, [2009] UKHL 12).

Editor's note: For the first-instance decision see second edition "Case Law from the Contracting States to the EPC" 2004 – 2011, OJ SE 3/2011, p. 234.

2. Problem-solution approach

AT – Austria

Supreme Patent and Trademark Chamber of 27 June 2012 (Op 1/12)

Keyword: inventive step – problem-solution approach – additional criteria

The patent in suit (EP 0 869 222) concerned a travelling rock crusher for breaking ground. It was undisputed that Annex A (describing such a crusher) contained all the features of the preamble of the patent's claim 1, and Annex B (describing an impact crusher) all the features of its characterising portion. So the decision hinged on whether it was obvious for the skilled person to look at Annexes A and B together.

The Supreme Patent and Trademark Chamber noted that applying the problem-solution approach ensured standardisation when assessing inventiveness (Op 5/05 PBl. 2006, 127; Op 4/07). This involved three steps:

1. Establishing the closest prior art

2. Formulating the objective technical problem to be solved

3. Applying the "could/would" approach, i.e. examining whether, given the closest prior art and the objective technical problem, the claimed invention would have been obvious to the skilled person.

The Chamber took Annex A to be the closest prior art, and the problem to be adapting a travelling rock crusher so that it could adjust quickly to changing ground conditions. The Austrian Patent Office's revocation division had taken the view that impact crushers were technically too distant from rock crushers, but the Chamber held that the skilled person would also have considered the teaching in Annex B, because Annex A itself disclosed an embodiment in which the rock crusher was used as a stationary impact crusher.

The Chamber also noted that, when assessing inventive step, further criteria in addition to the problem-solution approach could be applied, namely whether:

  • a technical prejudice had been overcome
  • the combination of known matter produced a surprising (synergy) effect well beyond the overall effect expected
  • a long-standing technical problem in the art had been solved, or
  • the original idea or an original formulation of the problem had given rise to a special effect or a surprising solution.

But even after considering these additional criteria as well, it still found that claim 1 was not inventive, and therefore revoked the patent.

3. Technical effect

AT – Austria

Supreme Patent and Trademark Chamber of 27 November 2013 (Op 3/13)

Keyword: inventive step – problem invention – technical character

The patent in suit (EP 0 625 767) was for a system for verifying that road users had paid tolls.

The Supreme Patent and Trademark Chamber ruled that one of its claims actually described only a problem, not its technical solution. But defining a problem was not in itself an invention.

That the EPO boards of appeal nonetheless recognised "problem inventions" was only seemingly a contradiction; a specific technical solution to the problem still had to be claimed. The sole peculiarity of such inventions was that the solution, with hindsight, was trivial and would therefore not normally have been patentable, whereas the actual problem was new and not obvious from the prior art. In such cases, the intellectual effort of identifying the problem could justify getting a patent for solving it.

However, this particular claim did not present any such solution. It merely described the problem: the verification device was "arranged" in a verification vehicle "in such a way" that a vehicle travelling at high speed and some distance behind could be verified. That was not a clear disclosure of a technical solution. It was not even apparent that performing verification from the vehicle actually required a particular technical solution at all. But without one there could be no invention within the meaning of the EPC.

The EPO too did not consider the EPC requirement of "technical character" to be fulfilled if an invention also included non-technical embodiments (T 619/02, OJ 2007, 63), as would have been the case here if e.g. the verification device was not fixed but simply hand-held – which was not excluded by either the claim or the description if used to interpret it.

The Chamber therefore revoked the whole patent.

BE – Belgium

Liège Commercial Court of 28 June 2012 (A/11/3039) – Aerocrine v Medisoft

Keyword: inventive step – hybrid invention with non-technical features

Aerocrine, a company specialising in medical technology for detecting and treating respiratory-tract inflammation, was the proprietor of several European patents. It was suing Medisoft for infringing them; Medisoft was counterclaiming for their revocation.

Citing EPO case law, the court set out in detail the principles (technical character, novelty, problem-solution approach to inventive step, added subject-matter) to be applied to Belgian parts of European patents. The patents in suit claimed a hybrid invention with technical aspects (such as the measurement apparatus) and non-technical ones relating to a scientific discovery. The court said it would consider only the technical elements of the claims.

On European patent 0 606 351, regarding inventive step, the court ruled that, according to the problem-solution approach, the applicant was allowed to describe the discovery when formulating the objective technical problem addressed by the invention. Inventive step, however, could reside only in the invention's technical features, i.e. the measurement apparatus, and in the present case it was lacking.

On European patent 0 724 723, the court noted that Aerocrine was indeed using the discovery, but only to formulate the technical problem. That was allowed. The reasons given in the German Federal Patent Court's decision of 1 February 2011 revoking the patent set out that it lacked inventive step. The Belgian court found that the skilled person would have been able to design an apparatus in accordance with claim 1 without having to exercise inventive skill.

DE – Germany

Federal Court of Justice of 18 December 2012 (X ZR 3/12) – Route planning

Keyword: inventive step – technical effect

European patent 1 147 375 was for a method of vehicle navigation offering selection and display options not only for the entire route – as known in the prior art – but also for individual route sections.

The Court cited its case law establishing that a method which, in order to bring about the desired result, used a program as an aid to controlling a computer in such a way as to achieve that result, was patentable if the claimed technical teaching provided guidance on how to solve a specific technical problem by technical means. However, only such guidance as determined, or at least influenced, the solution of a technical problem by technical means could be considered for the purpose of establishing inventive step. The options described in this patent did not, and were therefore irrelevant. Guidance on selecting data could not be considered if its only technical aspect was an instruction to use computer means for the selection (endorsing Federal Court of Justice of 26 October 2010 – X ZR 47/07 – Display of topographic information). This applied even if the guidance reduced the number of computational steps needed.

The only remaining features eligible for consideration in examining inventive step were obvious to the skilled person in the light of the prior art. The claimed subject-matter was therefore not patentable.

DE – Germany

Federal Patent Court of 4 April 2013 (2 Ni 59/11 and 2 Ni 64/11) – Slide to unlock

Keyword: inventive step – presentation of information – patentability of software

European patent 1 964 022 was for a means of unlocking a portable electronic device with a touchscreen. A set of features in claim 1 related to the movement of the unlock image along a pre-defined display path on the touchscreen in line with the user contact.

In the revocation proceedings, the Court had to decide whether the subject-matter of the invention was merely a computer program as such, and so non-patentable. It also had to examine whether the teaching provided guidance on how to solve a specific technical problem by technical means, as required according to the Federal Court of Justice's case law (24 February 2011 – Website display). Only such guidance as determined, or at least influenced, the solution of a technical problem by technical means could be considered for the purpose of establishing inventive step (Federal Court of Justice, GRUR 2011, 125 – Display of topographic information).

The Court ruled that the features in question could not determine or influence the solution of a technical problem and were therefore irrelevant for assessing inventive step. What the invention achieved was to unlock a handheld electronic device with a touchscreen in a simple, pre-defined and user-friendly way and indicate the progress of the unlocking process. This addressed a partial technical problem in so far as a particular form of user input was detected and recognised as a command to start the unlocking process, with the result that the process then had to be carried out. There was therefore no general bar to patentability under Art. 52(2) and (3) EPC.

However, the indication of progress in the unlocking process, in the form of the (accompanying) movement of the unlock image, was merely for the user and in no way solved any technical problem. It did not influence the device itself or its technical function. It was merely a graphic presentation of information giving users "visual feedback" informing them that the device had detected their initial unlock gesture and that the device was monitoring further progress. This had no technical effect. Contrary to what the defendant had submitted, a user-friendly display was not a specific technical problem but rather a problem of optimising user acceptance. The solution to this problem was not technical and therefore non-patentable. The patent was revoked accordingly.

DE – Germany

Federal Court of Justice of 23 April 2013 (X ZR 27/12) – Vehicle navigation system

Keyword: inventive step – exceptions to patentability – presentation of information

European patent 973 011 was for a method and apparatus for providing route guidance in a vehicle navigation system. The known navigation systems already provided some level of voice guidance but, unlike the patented system, did not offer street or next-exit names as voice instructions.

Citing its existing case law (Federal Court of Justice of 24 May 2004 – Online banking; of 26 October 2010 – Display of topographic information; and of 18 December 2012 – Route planning), the Court observed that Art. 52(2)(d) EPC excluded the patentability of presentations of information, just as Art. 52(2)(c) EPC did for computer programs (in both cases, as such – Art. 52(3) EPC). Presentations of information could be considered to involve an inventive step only if and to the extent they determined, or at least influenced, the solution of a technical problem by technical means.

Guidance for the skilled person on how to have the voiced navigation instructions include particular details (here: street names) in particular circumstances related to the content of the information visually or audibly presented by the navigation system and was therefore irrelevant for the purposes of examining whether the claimed technical teaching involved an inventive step.

Ultimately, the patent proprietor's appeal against the Federal Patent Court's revocation of the patent was dismissed.

DE – Germany

See also Federal Patent Court of 13.11.2012, joined cases 3 Ni 43/10 (EP), 3 Ni 24/11 (EP), 3 Ni 25/11 (EP) and Federal Court of Justice of 13.01.2015 (X ZR 41/13) under Chapter V.2. "Quetiapine".

FR – France

Paris Court of Appeal of 26 April 2013 (12/07634) – Core/Miral v Axxom/Castorama/Browaeys Brame

Keyword: inventive step – combined methods – technical effect

Company C designed, imported and exported ladders. As joint owner of European patent 1 448 865 for an "extending ladder and associated manufacturing methods", it sued company A for infringement.

On inventive step (Art. 56 EPC), company A argued that the patent combined two groups of features – of the collar and the guiding means – and the patentability of each feature had to be examined separately.

The Court pointed out that a combination of technical means was patentable only if it had its own function which produced a technical effect distinct from the sum of those of its component parts.

In this case, the guiding means' features involved guiding a column into a tube of greater diameter using a ring and a sleeve coupled to a second column for improved slidability, whereas the collar's features involved surrounding the tubes and spacing the connectors fixed to their distal ends and supporting the rungs when the ladder was folded, so as to separate the successive connectors in the folded position.

The Court further took the view – like company A and the lower court – that combining these two groups' features did not achieve any additional technical effect. This meant the patentability of each feature had to be examined separately.

Having first examined claim 1's features relating to the guiding means, then those concerning the collar, the Court confirmed that the claim was revoked for lack of inventive step.

GB – United Kingdom

Court of Appeal of 29 July 2013 – Generics [UK] Ltd t/a Mylan v Yeda Research and Development Co. Ltd and Teva Pharmaceutical Industries Ltd [2013] EWCA Civ 925

Keyword: inventive step – technical contribution – post-published evidence

Mylan sought revocation of Yeda's patent, which related to a synthetic copolymer known as copolymer-1.

One of Mylan's obviousness attacks was to challenge the technical contribution propounded by the patent. According to Floyd LJ, this gave rise to an issue of law. The trial judge had held that if a patent specification made a technical effect "plausible", it was not open to Mylan to challenge the existence of that effect by the use of later evidence. In order to understand why he did so it was necessary to review some authority in the EPO and the UK.

Neither the EPC nor the Patents Act 1977 included amongst the available grounds of invalidity of a granted patent an objection that the patent did not make a technical contribution to the art. However the "problem and solution" approach adopted by the EPO under the EPC to the ground of lack of inventive step necessarily involved isolating from the patent (in comparison with the prior art) some technical contribution or effect. The EPO adopted this approach in order to formulate a technical problem which was solved by the patent – achieving that technical effect – as a precursor to asking whether the patent solved that problem in an obvious or non-obvious way.

The technical effects had to be shared by everything falling within the claim under attack. This followed from the fundamental principle of patent law that the extent of the monopoly conferred by a patent must be justified by the technical contribution to the art. If some of the products covered by a claim demonstrated a particular property, but others did not, then the technical problem could not be formulated by reference to that property. Either the products which did not exhibit the property had to be excised from the claim by amendment, or the problem had to be formulated by reference to some other technical contribution common to the whole claim. These principles emerged from T 939/92. In T 1329/04, the board dealt with the extent to which the technical effect relied upon needed to be supported by evidence disclosed in the specification or could be proved by later evidence, finding that an effect could be relied on if the specification disclosed enough to make the relevant effect "plausible".

Decision T 939/92 was considered in Conor Medsystems Ltd v Angiotech Pharmaceuticals Inc [2008] UKHL 49 and Dr Reddy's Laboratories (UK) Ltd v Eli Lilly and Co Ltd [2010] RPC 9. The question of what happened in relation to the objection of inventive step when it turned out that a technical property or effect made plausible by the specification turned out not to exist in fact had not been addressed. It was argued successfully before the judge at first instance that later evidence could not be adduced to contradict the existence of the plausible effect, by reference to T 1329/04. However, Floyd LJ pointed out that in order to determine whether an invention was obvious at the priority date one needed to decide an anterior and purely factual question: what is the invention?

There was no general principle that all the evidence which is admitted on the issue of obviousness must be evidence which was available at the priority date. The reaction of those skilled in the art to the invention (something which occurs after the priority date) could, e.g., be secondary evidence of inventiveness. Equally it was common to admit evidence of subsequent commercial success, although it was necessary to make sure it was commercial success of the invention (see Schlumberger Holdings Ltd v Electromagnetic Geoservices A/S [2010] EWCA (Civ) 819). The problem and solution approach to obviousness required the court or tribunal to judge inventiveness by reference to what it was that the invention brought with it: its technical effect or advance. Like any other fact relevant to an issue, however, it had to be open to being refuted.

The rule in T 1329/04 that a technical effect relied upon must be made plausible by the specification, and cannot be established for the first time by subsequent evidence had not been in issue, but it did not provide a basis for the different rule arrived at by the judge as to whether subsequent evidence might be used to negate an effect made plausible by the specification. Floyd LJ could not see any principled objection to the admission of evidence as to the true nature of the advance made by the invention in connection with an objection of lack of inventive step. However, the mere fact that the primary technical contribution relied upon by the patentee was negated by evidence did not lead inexorably to the conclusion that the patent was obvious. The patentee might advance an alternative less ambitious technical contribution. The party attacking the patent would still have to persuade the court that the invention was obvious, and do so by reference to what the skilled team would have known and done at the priority date.

4. Skilled person

DE – Germany

Federal Court of Justice of 12 December 2012 (X ZR 134/11) – Polymer composition

Keyword: inventive step – knowledge of skilled person

The Court considered that, whereas novelty depended on whether a citation disclosed a feature "directly and unambiguously", such disclosure was not necessarily required for a finding that there was no inventive step. The crucial question was, instead, whether the subject-matter of the invention was obvious to the skilled person in the light of the prior art at the priority date. This meant that the skilled person had to be able, using the knowledge and skills acquired during his training and from his professional experience, to develop the claimed solution to the technical problem from the existing art. But he also had to have reason to take the approach according to the invention, and this usually required, besides mere recognisability of the technical problem, additional inducements, suggestions, pointers or other information prompting such action (Federal Court of Justice of 30 April 2009 – Operation of a safety device; of 8 December 2009 – One-piece eyelet; of 20 December 2011 – Installation device). In assessing whether the prior art as set out in a citation rendered the claimed solution obvious to the skilled person, account had to be taken not only of what he would gather directly and unambiguously from the citation but equally of what he could deduce from it using his specialist knowledge.

FR – France

Court of Cassation of 13 December 2011 [10-27413] – SAS Technip France v SA ITP

Keyword: inventive step – definition of the skilled person

Technip appealed against the Paris Court of Appeal's judgment of 22 September 2010 refusing its request that claims 1 to 16 of ITP's French patent 9 604 812, directed to a pipe for pipelines with a heat-insulating double casing, be invalidated for lack of inventive step. The Court of Appeal had defined the skilled person as an engineer specialising in pipeline design and manufacture. According to Technip, however, the French patent did not concern only pipelines but related also to the technical field of piping in general, and merely cited submarine pipelines for transporting oil products as a non-restrictive example of the invention's application.

The court held that the invention related to the manufacture of highly impermeable and durable heat-insulating double-casing pipelines suitable for very long distances and capable of surviving transport, assembly and immersion, as well as coping with major constraints in terms of the fluids conveyed, which had to be kept at constant temperatures. Given this finding, the Court of Appeal had not misread the scope of the patent in holding that the invention could not extend beyond pipes subject to the same requirements as submarine gas and oil pipelines and had rightly defined the skilled person as an engineer specialising in pipeline design and manufacture.

FR – France

Paris Court of Appeal of 13 January 2012 (10/17727) – Sandoz v Eli Lilly

Keyword: inventive step – skilled person – evidence

Ruling at first instance by judgment of 2 July 2010, the Paris District Court had dismissed Sandoz's request for revocation of Eli Lilly's European patent 0 577 303 for a stereoselective glycosylation process for preparing nucleosides including gemcitabine.

On appeal, the court held that it was for Sandoz to show that, based on the prior art available at the patent's priority date, the skilled person would have reasonably expected to succeed in arriving at the invention without having to take any inventive step himself. According to the case law of the EPO boards of appeal, the question was not whether the skilled person could have arrived at the invention by adapting the prior art but rather whether he would have acted in the hope of achieving the advantages actually offered by the approach to the technical problem, because the prior art had indicated that this was possible.

In this case, the skilled person would not have been prompted to implement the information disclosed and overcome the difficulties involved with a view to arriving at the invention without any inventive step.

The court observed that the party alleging that the description was insufficient bore the burden of proving this. It was a question of how likely it was that the skilled person would have been unable to carry out the invention solely on the basis of his own scientific and technical knowledge. This had to be proven beyond reasonable doubt, the benefit of the doubt being given to the patent proprietor. The court found that Sandoz had failed to discharge the burden of proof. The skilled person could find the conditions for implementing the invention in the numerous examples in the description illustrating the claims. The description and the claims had to be read with a view to understanding them and giving them a technical sense; it was less than constructive to examine them for arguments in support of the position that the invention could not be carried out. Sandoz had failed to show that the disclosure was ambiguous, but even if it had, it would still have had to prove that this would have prevented the skilled person from carrying out the invention despite his common general knowledge.

The court upheld the judgment given at first instance.

FR – France

Court of Cassation of 20 November 2012 [11-18440] – Boegli gravures c. Darsail

Keyword: inventive step – skilled person – definition

Based on an application filed on 3 October 2001 (EP 1 324 877), designating France and claiming priority of a Swiss patent application filed on 13 October 2000, a Swiss-registered company had been granted a European patent for a device for embossing and/or satin-finishing a flat material. Suspecting a Russian-registered company of marketing devices with the same features, it had sued it for infringement of claims 1, 2, 5 and 8 of its patent.

In the contested judgment, the Court of Appeal had revoked those claims for lack of inventive step. It had held that, depending on the packaging sheet processed and the degree of its surface relief, the technique involved pressing, stamping, embossing or satin-finishing and that the skilled person was neither a machine-tool designer nor a micro-mechanical engineer with knowledge of optics.

The court held that, in so ruling without precisely defining the skilled person, the Court of Appeal had infringed Art. L. 614-12 of the French Intellectual Property Code and Art. 56 and 138 EPC because whether the claims at issue involved an inventive step had to be assessed from the perspective of the skilled person in the technical field affected by the problem underlying the patent.

E. Industrial applicability

GB – United Kingdom

Supreme Court of 2 November 2011 – Human Genome Sciences Inc v Eli Lilly [2011] UKSC 51

Keyword: industrial applicability – biotechnology

The case concerned the patentability or otherwise of a protein called by HGS Neutrokine-α, antibodies to it and the polynucleotide sequence encoding for it. HGS were the first to discover its existence, doing so by "bioinformatics".

The judge at first instance held that all the claims of the patent (EP (UK) 0 939 804) were invalid on three grounds: they were not susceptible of industrial application, they were insufficient and they were obvious because of a lack of technical contribution. HGS challenged all these findings.

The Court of Appeal dismissed the appeal on the ground of lack of industrial applicability, upholding the judgment of the lower court in this respect, so the other grounds did not need to be considered. The patent proprietor, HGS, appealed. The Supreme Court allowed the appeal, dismissed the cross-appeal on the issue of insufficiency and remitted the case to the Court of Appeal to deal with outstanding issues (as to this see also chapter II. "Sufficiency of disclosure").

Despite the patent's very wide-ranging and generalised suggestions as to the uses to which Neutrokine-α and its antibodies might be put, its only relevant teaching ultimately arose concerning the tissue distribution of Neutrokine-α, its expression in T-cell and B-cell lymphomas, and the fact that it was a member of the TNF ligand superfamily. Accordingly, the question was whether the judge at first instance had been right to conclude that the inferences which would have been drawn from this in 1996 would not have been enough to satisfy Art. 57 EPC. He had considered that the functions of Neutrokine-α "were, at best, a matter of expectation and then at far too high a level of generality to constitute a sound or concrete basis for anything except a research project".

The Supreme Court acknowledged that there was very little authority in the UK on the topic of industrial applicability and so the applicable principles were to be found in the jurisprudence of the boards of appeal of the EPO. The judge's approach was not consistent with that of the boards concerning the requirements of Art. 57 EPC in relation to biological material, which could be summarised in the following general principles:

(i) The patent must disclose "a practical application" and "some profitable use" for the claimed substance, so that the ensuing monopoly "can be expected [to lead to] some ... commercial benefit" (T 870/04, T 898/05);

(ii) A "concrete benefit", namely the invention's "use ... in industrial practice" must be "derivable directly from the description", coupled with common general knowledge (T 898/05, T 604/04);

(iii) A merely "speculative" use will not suffice, so "a vague and speculative indication of possible objectives that might or might not be achievable" will not do (T 870/04 and T 898/05);

(iv) The patent and common general knowledge must enable the skilled person "to reproduce" or "exploit" the claimed invention without "undue burden", or having to carry out "a research programme" (T 604/04, T 898/05).

Further specific principles were also set out, concerning new proteins and their encoding genes, as well as family or superfamily members.

The judge at first instance had found that the patent disclosed Neutrokine-α as a new member of the TNF ligand superfamily. In the light of the principles set out by the boards of appeal, this should have been sufficient, taking into account the common general knowledge, to satisfy the requirements of Art. 57 EPC. The Supreme Court derived considerable assistance from the approach set out in T 18/09 (the decision of the board of appeal on the same patent). Here the board had concluded that the disclosure of what was accepted to be a new member of the TNF ligand superfamily (coupled with details of its tissue distribution) satisfied Art. 57 EPC, because all known members were expressed on T-cells and were able to co-stimulate T-cell proliferation, and therefore Neutrokine-α would be expected to have a similar function.

The judge had held that the disclosure in the patent as to the uses of Neutrokine-α, even when taken together with common general knowledge, was no more than "speculative" and did not give rise to an "immediate concrete benefit". However, this argument proceeded on the implicit assumption that the disclosure of the patent was not sufficient in itself to satisfy the requirements of Art. 57 EPC. If, in the light of the board's approach, the known activities of the TNF ligand superfamily were enough to justify patentability for the disclosure of a novel molecule (and its encoding gene) which was plausibly identified as a member of that family, the fact that further work was required to see whether the disclosure actually had therapeutic benefits did not, at least without more, undermine the validity of a patent. For the same reasons, the cross-appeal alleging insufficiency had also to be dismissed.

The standard set by the judge at first instance for susceptibility to industrial application was a more exacting one than that used by the boards of appeal. He had looked for a description that showed that a particular use for the product had actually been demonstrated rather than that the product had plausibly been shown to be "usable", which included the use of the molecule for research. The board in T 18/09 had to be taken to have regarded this in itself as an industrial activity.

The decision of the Patents Court that the claimed inventions were not susceptible of industrial application at the date of the patent was therefore set aside.

F. Double patenting

FR – France

Paris District Court of 20 March 2012 (09/12706) – Teva v Eli Lilly

Keyword: second therapeutic use – patentability – prohibition on double patenting – general principle

Eli Lilly was the proprietor of European patents 1 438 957 and 0 584 952 for an invention using raloxifene to prevent osteoporosis by inhibiting the loss of bone mass, while avoiding the negative side effects associated with oestrogen therapy. Teva, which had placed a generic medicament based on raloxifene on the market, sought the patents' revocation.

Teva contended that the description in European patent 0 584 952 was insufficient because it did not include any test result applicable to post-menopausal women. Having examined this allegation, the Court concluded that Eli Lilly had conducted genuine animal model research and could not be accused of having provided merely speculative results. Nor could it be accused of having filed a patent application before obtaining results for post-menopausal women. The Court found the description to be sufficient.

Teva also alleged lack of novelty, asserting that the form of claim 1, drafted as a Swiss-type claim, showed that it was directed to a new therapeutic use of a known substance. This could not meet the novelty requirement under Art. 54 EPC 1973, to which the patents were subject in view of their filing date. The Court found that, even under the EPC 1973, a second therapeutic use could be regarded as valid, provided it could be established that that use was new or inventive and not already prior art.

On the alleged lack of inventive step, the Court found that bioavailability was not a prejudice to be overcome and that routine work on dosage was required when developing a medicament. That routine work tended to be long and onerous, and indeed it had been in Eli Lilly's case, but it did not involve an inventive step. As a consequence, claim 1 of European patent 0 584 952 was revoked for lack of inventive step.

On the subject of double patenting, the Court, citing Art. L.611-1 of the French Intellectual Property Code and decisions G 1/05 and G 1/06, observed that it was well established that only a single property right could be granted for an invention. It was not only at the grant stage that the prohibition on double patenting was applied; the courts also had to enforce this general principle, even if it was not explicitly mentioned in the EPC, because it was one ground for revocation among others. The Court held that the claim of double patenting in this case was well founded and that European patent 0 584 952 had to be revoked in its entirety.

It also revoked the French part of European patent 1 438 957.

Editor's note: The judgment on the appeal against this judgment is also reported in chapter I.C.3. "Novelty of use"; see Paris Court of Appeal of 12 March 2014 (RG 12/07203) – Eli Lilly v Teva. The Court of Appeal set aside the ruling on double patenting, holding that the request to revoke the French part of European patent 0 584 952 as a duplicate of European patent 1 438 957 had become redundant once the French part of the latter patent had been revoked.

GB – United Kingdom

Patents Court of 20 June 2014 – Koninklijke Philips Electronics NV v Nintendo of Europe GmbH [2014] EWHC 1959 (Pat)

Keyword: double patenting – post-grant amendments

In the course of infringement and validity proceedings Nintendo raised a double patenting objection to an amendment applied for by Philips. Birss J reviewed the relevant UK authorities and also the relevant EPO decisions since the court's discretion to allow amendments post-grant required it to have regard to the relevant principles applied in the EPO (s. 75(5) Patents Act 1977).

Birss J explained that the double patenting question became more significant when the two patents were not identical in form but found as a matter of substance to be for the same invention (e.g. IBM's (Barclay and Biggar's) Application [1983] RPC 283). In Marley's Roof Tile [1994] RPC 231, the Court of Appeal held that s. 73(2) Patents Act 1977, which deals with double patenting as between an EP (UK) patent and a national UK patent, applied to overlapping claims and not only to claims which were of the same (or practically the same) scope.

In the EPO, the question of double patenting arose in the context of divisional applications; a double patenting objection by the examiner to the claims of a later divisional application could be overcome by appropriate amendments. In G 1/05 and G 1/06, the Enlarged Board of Appeal accepted that the prohibition of double patenting existed on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter. The Enlarged Board therefore found nothing objectionable in the established practice of the EPO that amendments to a divisional application are objected to and refused when the amended divisional claims the same subject-matter as a pending parent application or a granted parent patent. The judge also considered decisions T 307/07, T 1391/07 and T 1423/07.

The principles which Birss J derived from the above cases may be summarised as follows:

1. Ordinarily, an applicant should not obtain two patents for the same thing filed at the same time. An applicant ordinarily has no legitimate interest in doing this.

2. "Double patenting" is not a ground of revocation of a patent (s. 72 Patents Act 1977, Art. 138 EPC). In particular circumstances double patenting can lead to refusal, or revocation on the Comptroller's initiative (s. 18(5) and s. 73(2) Patents Act 1977).

3. The EPO recognises a double patenting objection as a ground for refusing amendments to a divisional application, on condition that the proposed amended divisional claim claims the same subject-matter as a parent and that the applicant has no legitimate interest in obtaining the divisional claim. Generally, if the first condition is true the second is likely to follow but there can be cases (e.g. T 1423/07) where this is not so.

4. The EPO recognises that if the independent claim of a divisional has the same scope as an independent claim in the parent then double patenting exists and an amendment giving rise to that will be refused. It is a test of substance and not merely form. It is not the settled jurisprudence of the EPO that double patenting exists merely because the scopes of the two claims overlap.

5. One needs to take care when comparing the different procedural circumstances in which this point can arise. The EPO only deals with one patent at a time and so an EPO case considering a divisional application will not contemplate making changes to the claims of the parent to overcome an objection.

6. The Court of Appeal judgment in Marley's Roof Tile is directed to a point on statutory construction of s. 73(2) Patents Act 1977 and is not binding in relation to the exercise of discretion under s. 75 Patents Act 1977.

7. A patentee may have a legitimate interest in obtaining a divisional patent with claims which are broader than but encompass the scope of a parent patent. During prosecution of the parent the examiner may object to a broad claim but indicate that a narrower claim would be accepted. The patentee may not agree but want to obtain an early grant because a competitor has launched an infringing competitive product, which may be within the narrow claim on offer. Thus the patentee decides to take what is on offer and obtain grant of the parent patent with a narrow claim. Under s. 76 Patents Act 1977 and Art. 123(3) EPC post-grant amendments are not permitted to widen the scope of monopoly so, in order not to give up scope to which the patentee is entitled, a divisional application is filed. If the divisional is granted with a broader scope than the parent then the patentee's stance has been entirely vindicated.

A patentee in this case has a legitimate interest in obtaining the divisional in addition to the parent. It would be wrong to apply a double patenting objection based on overlapping scope such as in T 307/07 or Marley's Roof Tile. As a matter of UK law a double patenting objection as a ground for refusing a post-grant amendment to a claim should only be taken in the following circumstances:

i) The two patents must have the same priority dates and be held by the same applicant (or its successor in title).

ii) The two claims must be for the same invention: they must be for the same subject-matter and have the same scope. The scope is considered as a matter of substance. Trivial differences in wording will not avoid the objection but if one claim covers embodiments which the other claim does not, then the objection does not arise.

iii) The two claims must be independent claims. This follows from the rejection of the point on overlapping scope. If two independent claims have different scope then there is no reason to object even if the patents contain dependent claims with the same scope.

iv) If the objection arises in the Patents Court in which both patents are before the court then it can be cured by amendment to either patent.

v) Even if the objection properly arises in the sense that two relevant claims have the same scope, if the patentee has a legitimate interest in maintaining both claims then the amendment should not be refused.


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Case Law of the Enlarged Board

General Case Law