1. Excluded subject-matter and activities

1.1 Discoveries

DE Germany

Federal Court of Justice, 19 January 2016 (X ZR 141/13) – Receptor tyrosine kinase

Keywords: patentable inventions – discoveries

European patent 0 959 132 was for a nucleic acid encoding receptor-type protein kinase, and a method for detecting said acid, which owing to genetic mutations can be used as a marker for diagnosing leukaemic illness. The Court dismissed the objection that this was a non-patentable discovery.

Under Art. 52(2)(a) and (3) EPC, discoveries as such – like scientific theories and mathematical methods – are not patentable. The Court, unlike the US Supreme Court (in 566 U.S. (2012) – Mayo v Prometheus), ruled that a teaching that involved performing a technical act which used a discovery to achieve a specific outcome was patentable under European – and German – law, regardless of whether the teaching also contained "inventive added value" above and beyond the use of the naturally occurring correlation discovered. After all, any technical act was based on the purposeful use of laws of nature. Therefore, when assessing whether the technical solution involved an inventive step (an issue also relevant for computer-implemented inventions), it was not possible to ignore the question of whether the aspect of physical, chemical or biological law underlying the invention's technical teaching was obvious to the skilled person.

So it was no bar to patentability for the technical teaching to be confined to an instruction to provide the nucleic acid molecule named in the claims. Nor was any other view derivable from R. 29(1) EPC, which – like Section 1a(1) of Germany's Patent Law – provided that "the human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene, cannot constitute patentable inventions". That only underscored the principle that whilst discovering a sequence could not be a patentable invention, disclosing that and how it could be isolated and made technically usable certainly could (R. 29(2) EPC, Section 1a(2) of the Patent Law). The claimant was mistaken in arguing that the sequence had to be "recognisably characterised" as isolated or produced by means of a technical process; any claim, by naming something, inherently characterised the protected technical teaching of providing that particular thing (by means of a technical process).

1.2 Mathematical methods

DE Germany

Federal Court of Justice of 30 June 2015 (X ZB 1/15) – Aircraft status

Keywords: patentable inventions – mathematical methods

At issue was a patent application concerning a method for determining an aircraft's status, namely its position, velocity and altitude. The technical problem consisted in providing a method that enabled quick and reliable estimates of those parameters. Mathematical calculations were used to determine the most possible reliable values.

The Court found that – like computer programs – mathematical methods, which were excluded from patentability as such under Section 1(3) No. 1 German Patent Law, were patentable only if they solved a specific technical problem by technical means. They could not be patented if they were claimed in isolation from a specific technical function. Features that merely applied a mathematical method had to be disregarded for the purpose of establishing inventive step.

A mathematical method could not necessarily be considered non-technical, however. Working with the forces of nature was technical (Federal Court of Justice judgments X ZB 15/67 – Red dove; and X ZB 33/03 – Offer of interactive support). The laws underlying those forces were generally described with the aid of mathematical methods; applying those methods to achieve a particular technical result was therefore of a technical nature. A mathematical method could be considered non-technical only if, in the context of the teaching claimed, it bore no relation to the targeted application of natural forces. A mathematical method was sufficiently related if it was used to obtain more reliable aircraft status data from the measurements available and thus influence how the system used to determine this data operated.

The Court also observed that subject-matter did not have to constitute technological progress in order to be patentable. Subject-matter that was novel and involved an inventive step could not be excluded from patentability simply because it did not offer any discernible advantage over the prior art.

1.3 Computer programs

AT Austria

Supreme Court, 25 August 2016 (4 Ob 94/16a)

Keywords: patentable inventions – computer programs

At issue was a patent (filed as A 106/2012) for a method of reading and writing data. The Austrian Patent Office had allowed an opposition and revoked the patent for lack of technical character. Based on an approach taken in the EPO case law, Vienna Higher Regional Court had then overturned that decision, holding that computer programs were not excluded from patentability if, when run on a computer, they produced a further technical effect.

The Supreme Court upheld the lower court's finding on technical character, observing that this was a matter strictly separate from novelty and inventive step (T 1173/97). A measure was technical if it served a technical purpose. Whether claimed subject-matter had the requisite technical character had to be determined on a case-by-case basis after assessing it as a whole; whether it had non-technical features in addition to its technical ones was irrelevant. To be patentable, it had to solve a technical problem by technical means.

Technical character could not be established solely on the basis that a method's purpose could be achieved only by using a computer, because computer programs as such were non-patentable and so had to have some further technical effect. It was by requiring such technical character in the form of a technical contribution in a field not excluded from patentability that the line between non-patentable and patentable computer programs was drawn. The requisite technical effect had to be derivable from the program's actual content as it operated in the context of solving the underlying technical problem. The decisive point, therefore, was whether, taking the requisite overall view, the teaching served to solve a specific technical problem going beyond mere data processing.

FR France

Paris District Court, 18 June 2015 (14/05735) – Orange (formerly France Télécom) v Free and Freebox

Keywords: patentable inventions – computer programs

Orange sued Free for infringement of the French part of its European patent 2 044 797. One of the requests in Free's counterclaim was that claims 12 to 15, which, it argued, were for a computer program as such, be revoked.

On those claims' patentability, Orange did not dispute that they were for a computer program, but argued that their grant was in keeping with EPO practice. Taking it therefore as established that claims 12 to 14 were for a computer program as such, the Court held that Art. 52 EPC, however, was clear and needed no interpretation: computer programs as such were excluded from patentability because they were covered by copyright. To overcome the request for those claims' revocation, it was not enough simply to argue that the EPO permitted claims for computer programs in practice by calling them instead "program products". Granting patents contrary to the law on the basis of no more than linguistic artifice was unacceptable: there was neither any provision in the EPC nor any difficulty arising when interpreting it that allowed patents to be granted for computer programs – even if they were called "program products"; on the contrary, computer programs as such were expressly excluded from patentability. The Court therefore revoked claims 12 to 14 as not patentable.

On claim 15, the Court found that the storage medium had nothing technical about it, being merely "dressing" that could therefore not circumvent the fact that computer programs were not patentable. Besides, there was no further information on it in the patent's description, so Orange had been granted protection and the resulting monopoly for an object that did nothing but store non-patentable computer programs. It was thus not Art. 52(3) – as Orange argued – but Art. 52(2) EPC that applied to the claim, which the Court therefore also revoked as not patentable too.

Editor's note: The revoked patent was subsequently limited. Freebox appealed against the limitation, which was applied with retroactive effect, but Paris Court of Appeal dismissed its appeal as inadmissible by decision 15/21319 dated 9 September 2016.

FR France

Paris Court of Appeal, 16 December 2016 (14/06444) – Dassault v Sinequa

Keywords: patentable inventions – computer programs

Dassault had sued Sinequa for infringement of its European patent 1 182 581, granted for an invention which was described as a tool and process for unified search using categories and keywords and was designed for use in retrieving information and, more specifically, displaying search-query results. At first instance, Paris District Court (19 March 2010 (08/01998)) had concurred with Sinequa's defence that claims 1 to 14 were for a mental act as such and revoked the French part of the patent.

According to the patent specification, the prior art comprised three search engines (Alta Vista, Yahoo and Google). Dassault contended that its category and keyword indexes were technical because they enabled users to search in a database of entries.

The Court found that, although the patent distinguished between categories and keyword groups, it did not provide any information allowing a clear distinction to be made on a technical basis. The meaning of keywords or categories would be important for users, but a computer had no awareness of their meaning when processing them for a search. Dassault having conceded that a semantic analysis was the only way to identify and distinguish keywords and categories, the Court considered that the cognitive content of data was a factor in their selection and that, therefore, they were of an intellectual nature devoid of any technical character. As abstract concepts resulting from intellectual choices that inevitably involved a degree of subjectivity, they could not be technical means identifiable by the skilled person, no matter how that person was defined.

Having considered the various functional steps set out in claim 1 as occurring in response to a user's initial query, the Court found that, since performing searches among databases entries was already known from the prior art at the time of filing, their technical contribution could consist only in combining keywords and categories to produce a refined search query. The second phase of claim 1 involved a dynamic selection but, in the absence of any definition of "dynamic", that too could not be regarded as having any technical substance.

The Court conceded that results obtained by an automated process could differ from those obtained manually by a librarian and widen the field of search, but held that the intellectual process behind both sets of results was nevertheless the same; the factors involved affected only the results and not the underlying process.

The Court also ruled that, since the invention could be used more generally for any search in any kind of database, however it was indexed, the references to the internet in the description, even supposing they could confer technical character, did no more than provide an example of how the claimed invention might be carried out.

The patent stated that results were transmitted to users in response to an initial query which could then be refined by a second query launched by the search server, but it did not say how those aspects were technically combined. Search results in the form of keywords and categories had already been known from the prior art at the time of filing. Dassault's invention was intended to improve on them by way of an associated search, but neither the description nor the drawings specified any technical feature of such a search. Ultimately, the Court found, no technical means of implementation was disclosed. The functional steps set out in claim 1 therefore amounted to nothing more than a simple presentation of a method and could not establish technical character.

Nor could the reference to a "server" confer technical character: a server was a standard basic search tool and its search and display functions basic computing operations. The Court therefore upheld Paris District Court's revocation of the patent at first instance.

Editor's note: See also Paris District Court, 18 November 2016 (13/11351) – Xaga v Ewalia (PIBD (2017) 1066-III-114).

1.4 Methods for doing business

FR France

Paris Court of Appeal, 26 February 2016 (15/01962) – Sesame Active System v INPI Director General

Keywords: patentable inventions – business methods

Following a decision by the head of the French Patent Office (INPI) to refuse its patent application No. 1 254 388 for a system and method of road haulage, Sesame Active System appealed to Paris Court of Appeal, alleging that INPI had arbitrarily recategorised its system claims as method claims. The Court dismissed this allegation of distortion.

Sesame's patent application was concerned with how to optimise the loading of haulage vehicles on both their outward and return journeys, given that their reloading was "critical for profitability and sometimes even a matter of economic survival". The economic importance of the underlying problem – i.e. co-ordinating cargo and haulage offers to identify the best possible matches for both journey legs, with a view to maximising the cost-effectiveness of each transport – was undisputed.

The Court observed that the novel means of co-ordinating supply and demand proposed as a solution to this economic problem of profitability consisted of a "system" characterised in that it comprised sets and subsets of economic data on deliveries to be made (type of goods and delivery place and date) and on available haulage vehicles (capacity and location), as well as a "central unit" for comparing these data. The data "registers" were not characterised in terms of technical features (format, compression, etc.) but only in terms of the (economic) kind of data in them. The mere fact that the data was classed in three sets (type of goods/time/place) and two subsets (clients/hauliers) was simply a way of organising information and not technical in itself. Nor was any technical information on the central unit provided; it was characterised only by its performance of mental acts in the form of data comparisons designed to identify matches.

Besides, this data processing did not solve the underlying problem, because it merely left hauliers with a range of options for optimising profitability. The solution was instead provided by a computer system automating the process, of a kind commonly used in human activities, especially business, and not configured in any particular way. It, too, was characterised not in terms of technical features but only by reference to how it could be used to collect and compare data. The solution, therefore, was a business method excluded from patentability under Art. L. 611 10(2) French Intellectual Property Code; the mere fact it was automated using a computer or claimed in the form of a generic computing device made no difference to this.

The Court therefore upheld INPI's decision to refuse the patent application.

1.5 Presentations of information

DE Germany

Federal Court of Justice, 26 February 2015 (X ZR 37/13) – Image stream

Keywords: patentable inventions – presentations of information

The patent in suit (EP 1 474 927) was for a system and method for displaying an image stream.

The Court took the view that the teaching of the invention was of a technical nature and not excluded from patentability under Art. 52(2)(d) and (3) EPC, because it was not limited to the presentation of information as such (Federal Court of Justice judgment X ZR 188/01 – Recording medium, on Section 1 German Patent Law).

When assessing patentability, the Court also considered the following two features of claim 1: (1) displaying simultaneously at least two subset image streams, and (2) each subset image stream includes a separate subset of images from the original image stream. These features related to the problem of how to display an ordered sequence of images – whatever their content – such that the user could comprehend them quickly and efficiently. According to the Court, although such instructions related to the presentation of (visual) information, they focused not on displaying particular content or displaying it in a certain layout, but rather on presenting visual content in a way that accounted for the physical characteristics of human perception and absorption of information. They thus aimed to improve or usefully adapt human perception of the information shown, or even to enable humans to perceive it at all, in a particular way. Such instructions solved a technical problem by technical means and had to be considered for the purpose of establishing inventive step.

DE Germany

Federal Court of Justice, 25 August 2015 (X ZR 110/13) – Slide to unlock

Keywords: patentable inventions – presentations of information

European patent 1 964 022 concerned unlocking a portable electronic device (mobile telephone) with a touchscreen by performing (finger) movements ("gestures") on the touchscreen surface. Users could unlock the device by moving their finger in a pre-defined gesture on the touchscreen surface, whereas the device remained locked if the movement did not correspond to the given gesture. The claim included the movement of an unlock image along a pre-defined, displayed path on screen in line with this user contact.

The Federal Patent Court had found that the indication of progress in the unlocking process, in the form of the (accompanying) movement of the unlock image, was merely for the user. It was simply a graphic presentation of information giving users "visual feedback" informing them the device had detected their initial unlock gesture and was monitoring further progress. It was to be disregarded for the purpose of establishing inventive step.

The Federal Court of Justice, however, took the view that the feature "in line with user contact" had to be considered in the assessment of inventive step. It was a technical solution to the technical problem of visually indicating unlocking progress to the user and thus increasing user certainty.

In order to ensure due observance of the exception to patentability under Art. 52(2)(d) and (3) EPC, instructions on presenting certain content with a view to influencing human perception or comprehension that were included in a claim were – just like instructions on programming a computer in a particular manner (Art. 52(2)(c) EPC) – to be disregarded as such. Instructions concerning information to be presented in accordance with the teaching of the invention could be considered patentable on account of involving an inventive step only to the extent that they determined or at least influenced the solution to a technical problem by technical means (Federal Court of Justice judgments X ZR 47/07 – Display of topographic information; X ZR 27/12 – Vehicle navigation system; and X ZR 37/13 – Image stream). The requirement that such instructions be considered "to the extent that" they at least influenced the solution to a technical problem meant that the information-related features of a claim had to be examined to establish whether the information to be presented was not also an embodiment of a technical solution not specified as such elsewhere in the claim (here: the visual confirmation of the unlock movement). In such instances, the technical solution had to be considered for the purpose of establishing patentability, for it would not be justifiable, when examining inventive step, to ignore the technical effects of presenting information simply because they had been claimed only in the form of the presentation of certain information.