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SOFTWARE PATENTS, SEPARATION OF POWERS, AND FAILED SYLLOGISMS: A CORNUCOPIA FROM THE ENLARGED BOARD OF APPEAL OF THE EUROPEAN PATENT OFFICE

Published online by Cambridge University Press:  15 March 2011

Justine Pila
Justine Pila
Affiliation:
University Lecturer in Intellectual Property Law, University of Oxford; Official Fellow and Senior Law Tutor, St Catherine's College, Oxford. Email: [email protected].
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The Cambridge Law Journal , Volume 70 , Issue 1 , March 2011 , pp. 203 - 228
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Copyright © Cambridge Law Journal and Contributors 2011

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References

1 Convention on the Grant of European Patents (1973) 13 I.L.M. 268 (European Patent Convention). Currently all European Union (EU) States and some non-EU States (such as Switzerland) are signatories to the EPC.

2 See Paris Convention for the Protection of Industrial Property (Paris Convention, as amended) (Paris, 20 March 1883, 13 UST 1) Art 19.

3 EPC Art 1.

4 See EPC Part V.

5 See Patents Act 1977 s 72.

6 Remarkably, the House of Lords legislative committee responsible for the Patents Act 1977 seems to have been unaware of the existence of this text. See Hansard HL Deb., vol. 379, cols. 313–4 (24 January 1977) (Lord Elwyn-Jones) (citing “the difficulty of translation” as the reason for the U.K. legislative drafters' failure to “use the same language” as that used in the EPC).

7 Resolution on the Adjustment of National Patent Law annexed to the Convention for the European Patent for the Common Market (Community Patent Convention) (Luxembourg, 15 December 1975, 15 ILM 5).

8 See Hansard HL Deb., vol. 381, cols. 854–5 (29 March 1977) (Lord Elwyn-Jones).

9 [1995] UKHL 14, [12]. See also Gale's Application [1991] R.P.C. 305 (CA) 323 (Nicholls L.J.); Asahi Kasei Kogyo KK's Application [1991] RPC 485 (HL) 506 (Dillon L.J.); Aerotel Ltd. v. Telco Holdings Ltd. [2006] EWCA Civ 1371, [6] (Jacob L.J.).

10 See EPC Preparatory Doc BR/168/72 (15 March 1972) [26].

11 See T_0154/04 (DUNS LICENSING ASSOCIATES/Estimating Sales Activity) [2007] EPOR 38, [6].

12 See ibid. [5].

13 Another result has been a narrow interpretation of the Article 53 EPC exclusions, including those relating to plant and animal varieties. For an analysis see Pila, J, “Article 53(b) EPC: A Challenge to the Novartis Theory of European Patent History” (2009) 72 M.L.R. 436–462CrossRefGoogle Scholar.

14 Unreported decision of the TBA dated 11 November 2009, [1] (“The invention relates to a computer method for ordering a gift from a gift giver (purchaser) to a recipient”), [4.3] (“The Board does not deny that … the claimed system … involves technical considerations”).

15 For an extreme version of this reasoning see Dynamische Dokumentengenerierung Xa ZB 20/08 Bundesgerichtshofs (BGH) (22 April 2010), in which the German Federal Supreme Court interpreted “as such” to mean “non-technical”. I am indebted to Riener Bakels for this reference and translation.

16 [2007] EPOR 38, [8].

17 See, e.g., T_0424/03 (MICROSOFT/Clipboard Formats I) [2006] EPOR 39.

18 In the US see, e.g., State Street Bank & Trust Co v. Signature Financial Group Inc 149 F3d 1368, 1373. For the US Amazon gift order patent see US patent 5960411.

19 545 F 3d 943, 954.

20 See, e.g., Association for Molecular Pathology v. United States Patent and Trademark Office (AMP), 29 March 2010.

21 See Bilski v. Kappos 000 U.S. 08-964 (2010).

22 See Proposal (EC) 2002/92 for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions [2002] OJ C151/129.

23 Opinion of the Economic and Social Committee on the “Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions” [2003] OJ C61/154 (“ESC Opinion”). The following description of the Opinion is from J Pila, The Requirement for an Invention in Patent Law (Oxford 2010) 242.

24 ESC Opinion, note 23 above, [3.12].

25 Ibid.

26 ibid. [3.16], [3.13].

27 ibid. [3.1.1].

28 ibid. [3.1.2].

29 ibid. [3.1]. For an assessment of this last criticism see Pila, J., “Dispute Over the Meaning of ‘Invention’ in Article 52(2) EPC: The Patentability of Computer-Implemented Inventions in Europe” (2005) 36 I.I.C. 173–191Google Scholar.

30 [2005] EWHC 1589 (Pat).

31 [2005] EWHC 1623 (Pat).

32 See Floyd, C., “Novelty under the Patents Act 1977: the state of the art after Merrell Dow” [1996] E.I.P.R. 480, 485–6Google Scholar.

33 [1996] R.P.C. 511 (Pat).

34 See [1997] R.P.C. 609 (CA).

35 See [1996] R.P.C. 511, 530.

36 See [2005] EWHC 1589, [26]–[27].

37 See [2005] EWHC 1623, [212].

38 [2005] EWHC 1589, [33]. This discussion is drawn from Pila, J., “On the European Requirement for an Invention” (2010) 41 I.I.C. 9Google Scholar.

39 [2005] EWHC 1589, [35].

40 ibid. [41].

41 Ibid.

42 See ibid. [215]–[216].

43 [2006] EWCA Civ 1371.

44 ibid. [25].

45 ibid. [27].

46 See further Pila, note 23 above, pp. 210–224.

47 [2006] EWCA Civ 1371, [75].

48 ibid. [25].

49 ibid. [76].

50 EPC Art 112(1)(a).

51 EPC Art 112(1)(b).

52 See [2007] EPOR 38, [V], [2]–[3]. The appellant also submitted three further questions.

53 See note 12 above and accompanying text.

54 ibid. [12]. The TBA was referring to Art 31.1 of the Vienna Convention on the Law of Treaties (Vienna, 23 May 1969, UNTS 1155, 331) (Vienna Convention), reproduced note 74 below.

55 The letter is published at http://www.ipo.gov.uk/p-pn-subjectmatter-letter.htm” (last accessed 4 February 2011).

56 See ibid.

57 See G_0003/08 (PRESIDENT'S REFERENCE/Computer Program Exclusion) [2009] EPOR 9.

58 See IPKat blog, “Lord Hoffmann on Patentability of Business and Software Methods”, http://ipkitten.blogspot.com/2009/11/lord-hoffman-on-patentability-of.html (13 November 2009) (last accessed 4 February 2011) (reporting Lord Hoffmann's remarks); L Hoffmann, “Software Patents” (Paper delivered at the 23rd Annual IPSANZ Conference, September 2009) (proposing an interpretation of EPC Art 52(2) & (3) that is consistent with the EPO interpretation; for a discussion see Pila (note 38 above)).

59 G_0003/08 (PRESIDENT'S REFERENCE/Computer Program Exclusion) [2010] EPOR 36. For an indication of reactions in the U.K. see IPKat blog, “G 3/08 (Software Patents) decision is out – Tufty the Cat vindicated”, http://ipkitten.blogspot.com/2010/05/g-308-software-patents-decision-is-out.html (12 May 2010) and related comments (last accessed 4 February 2011).

60 The others are G_0001/90 (REVOCATION OF A PATENT) [1991] EPOR 343 (regarding EPC Art 102); G_0001/92 (AVAILABILITY TO THE PUBLIC) [1993] EPOR 241 (regarding EPC Art 54(2)); G_0002/98 (X/Same Invention) [2002] EPOR 17 (regarding EPC Art 87(1)); G_0004/98 (ANON/Designation Fees) [2001] EPOR 42 (regarding EPC Art 91(4)); G_0003/95 (PLANT OR ANIMAL VARIETIES/Inadmissible Referral) [1994] EPOR 521 (regarding EPC Art 53(b)); G_0001/02 (FORMALITIES OFFICERS POWERS) [2003] EPOR 49 (regarding various procedural Articles and Rules); G_0001/04 (CYGNUS/Diagnostic Methods) [2006] EPOR 15 (regarding EPC Art 52(4)). Of the referrals considered in these cases, only that in G_0003/95 was held to be inadmissible. This was also the only case before G_0003/08 involving a substantive patentability provision.

61 See G_0003/08 note 59 above, [10.8.2].

62 See ibid. [10.13.2].

63 ibid. [7.2.7].

64 Ibid.

65 [2008] EWCA Civ 1066.

66 See ibid. [61].

67 See note 9 above and accompanying text.

68 Floyd, note 32 above, pp. 485–6.

69 See G_0002/08 (ABBOTT RESPIRATORY/Dosage Regime) [2010] EPOR 26 at [5.9], [5.10.2], [6.5], [7.1.1], [7.1.2] (describing the Boards' interpretation of EPC 1973 Art 52(4) to permit Swiss-form claims as “praetorian”, and as obviated by the 2000 revision of Art 54(5)).

70 See note 48 above and accompanying text.

71 Cf G_0004/98, note 48 above, [8].

72 See G_0003/08 note 59 above, [4]–[5].

73 See ibid. [4.2].

74 See ibid. [10]–[13].

75 See ibid. [7.1]–[7.2].

76 Article 31.1 provides: “A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose.” On the obligation of EPO Boards to comply with the Vienna Convention see G_0003/08 (n 59) [7.2] and the authorities cited therein.

77 See ibid. [7.2.1].

78 See ibid. [7.26].

79 See ibid.

80 See ibid. (“As a democracy is prohibited from signing an international treaty which would undermine its citizens' constitutional guarantees, the EPO must therefore support these fundamental principles”).

81 See ibid.

82 See ibid. [7.2.5].

83 See Leith, P., “Judicial or administrative roles: the patent appellate system in the European context” [2001] I.P.Q. 50–99Google Scholar. Professor Leith's article contains a fascinating study of the legal (including judicial) and administrative structure and culture of the EPO.

84 G_0003/08, note 59 above, [7.2.5].

85 See ibid. [7.2.6].

86 See ibid. [7.3.1].

87 See ibid. [7.3.5].

88 See ibid. [7.3.1].

89 See ibid. [7.3.2].

90 See ibid. [7.3.3].

91 See ibid. [7.3.8].

92 Ibid.

93 See note 48 above and accompanying text.

94 G_0003/08, note 59 above, [7.2.6].

95 See Vienna Convention Art 31.1, note 76 above.

96 Cf G_0003/08, note 59 above, [7.2].

97 See G_0002/98, note 60 above, [6.3] (“In order to understand the legislative intent underlying [an EPC provision], it is necessary to consult the historical documentation related to the EPC.”)

98 See G_0001/90, note 60 above, [16]; G_0002/98, note 60 above, [6.3]–[6.8]; G_0004/98, note 60 above, [12], [22]; G_0001/02, note 60 above, [6.2], [6.3.1]–[6.3.3]; G_0001/04, note 60 above, [7.4], [8]. Cf G_0001/92; G_0003/95. For a discussion of the use made by the EBA of the EPC travaux in respect of EPC Art 53(b) – the focus of the G_0003/95 referral – see Pila, note 13 above.

99 EPC Preparatory Doc BR/169/72 (15 March 1972) [117] (emphasis added). Compare the account of (former EFTA Secretariat and Luxembourg Conference participant) Dennis Thompson in Thompson, D., “The Draft Convention for a European Patent” (1973) 22 I.C.L.Q. 51CrossRefGoogle Scholar, 77 (describing the value of a referral under Article 112(1)(b) as being “simply to ensure a uniform application of the law in the future”).

100 EPC Preparatory Doc BR/12/69 (18 December 1969) [55].

101 See ibid.

102 See ibid.

103 See EPC Preparatory Doc “Preliminary Draft Convention for a European System for the Grant of Patents: Articles 88 to 152 prepared by Working Party I (24 to 28 November 1969)” 96.

104 ibid. See also EPC Preparatory Doc BR/94/71 (6 April 1971) 39.

105 EPC Preparatory Doc BR/26/70 (30 January 1970) [36].

106 EPC Preparatory Doc BR/70/70 (21 December 1970) 149.

107 EPC Preparatory Doc BR/132/71 (28 October 1971) [45]. From the travaux it seems that only the Netherlands dissented, “as it considered the wider wording more suitable”.

108 Note 105 above. A subsequent request by certain delegations to delete the provision thus agreed “since in their opinion it was of no help to ask the Enlarged Board of Appeal to give decisions outside proceedings on a case” was rejected. See EPC Preparatory Doc BR/168/72 (15 March 1972) [136]. See also Thompson, note 99 above, 77 (“During the course of the discussions it had been proposed that the President could refer any question, even if only hypothetical, to the Enlarged Board, in order that it might give a consultative opinion similar to the practice of the International Court of Justice, the Privy Council or the Conseil d'Etat. This, however, was rejected on the grounds that it would establish precedents which might conflict with actual points referred by the Boards of Appeal, and also that it would be unfair to establish precedents binding on future parties who did not have the opportunity of arguing their case before the Enlarged Board.”).

109 See Boyce v. The Queen [2004] UKPC 32, [2005] 1 A.C. 400, [70] (“To say that a constitution is based upon the principle of the separation of powers is a pithy description of how the constitution works. But different constitutions apply this principle in their own ways and a court can concern itself only with the actual constitution and not with what it thinks might have been an ideal one.”)

110 Floyd, note 32 above, p. 480.

111 http://www.epo.org/patents/law/legislative-initiatives/autonomy.html (last accessed 4 February 2011).

112 See Draft basic proposal for a revision of the EPC implementing the organisational autonomy of the Boards of Appeal of the European Patent Office within the European Patent Organisation, CA/46/04 (28 May 2004).

113 The text of the Questions are reproduced above.

114 See G_0003/08, note 59 above, [10.7.2].

115 See ibid. [11.2], especially [11.2.7]–[11.2.9].

116 In addition to the French version of Article 112(1)(b), this resolution finds support (unsurprisingly) in the Report of the French Delegation on the 1970 First Preliminary Draft, where the then draft Article 112(1)(b) was described as requiring “contradictory decisions” of two Boards of Appeal; see EPC Preparatory Doc “Reports on the First Preliminary Convention for a European System for the Grant of Patents” (1970) 25.

117 See G_0003/08, note 59 above, [11.2] (quoting from the referral).

118 ibid. [11.2.3].

119 The EBA's characterization of the President's argument here is contradicted by the language of her referral, which states that “claims for a computer program and a computer implemented can be seen as having an identical scope”, and not that she herself regarded them as having one. See [2009] EPOR 9, [30], relevantly quoted ibid. [11.2], [11.2.1] (emphasis added).

120 See G_0003/08, note 59 above, [11.2.7].

121 ibid. [11.2.3] (emphasis added).

122 See ibid. [10.8.2].

123 The account is from T_0154/04, note 12 above, [5], which is the main authority cited by the EBA for the Art 52(2) & (3) principles it summarized; see G_0003/08, note 59 above, [4.1], [10.7.1], [10.13.1], [10.13.2].

124 T_0154/04, note 12 above, [5].

125 Ibid.

126 Ibid.

127 See Pila, note 38 above.

128 Cf. Pila, note 23 above, pp. 153–5 (recording the legislative history of the computer programs exclusion, including a 1971 U.K. proposal to define “computer programs” as non-inventive mathematical methods which was rejected so as not to “tie the hands of the [EPO] and of the national courts”, and broad support for a 1972 distinction between “computer programs as such” and “related inventions”).

129 See Pila, note 38 above.

130 This is supported by the history of Article 52(2) & (3), the view of social theorists, and the EBA's insistence in G_0003/08 that it was not “attempt[ing] to define the term ‘technical’ ” (G_0003/08, note 59 above, [9.2]). On the first two points see ibid.

131 See A. T. & T. Knowledge Ventures LP [2009] EWHC 343, [15] (Lewison J.).

132 See G_0003/08, note 59 above, [10.13] (suggesting that “no exposition” of the Boards' understanding of Article 52(2) & (3) “would be complete” without consideration of their approach to inventive step and novelty).

133 See Merrell Dow [1995] UKHL 14, [37], [38], [47], [54]; CFPH [2005] EWHC 1589, [93].

134 See G_0003/08, note 59 above, [10.13.1], [10.13.2].

135 T_1616/08, note 14 above, [4.3].

136 G_0003/08, note 59 above, [10.13]. See also [10.11].

137 Cf ibid. [7.3.7] (“Legal rulings are characterised not by their verdicts, but by their grounds. That is the only way of assessing the courts' opinion, and the ability to assess that is in turn the key to legal certainty.”); but cf [10.11].

138 See G_0003/08, note 59 above, [10.8.2].

139 See ibid. [10.13.2].

140 See note 81 above.

141 See note 79 above; G_0003/08, note 59 above, [7.2.2] et seq.

142 See G_0003/08, note 59 above, [5], [7.2.3], [10.8.2].

143 See note 7 above.

144 [2008] EWCA Civ 1066.

145 See ibid. [44], [46].

146 See Pila, note 38 above. On the duties of the U.K. courts to cooperate with the EPO (and their limits) see Eli Lilly v. Human Genome Sciences Inc. [2010] EWCA Civ 33, [41].

147 Cf T_0154/04 note 12 above, [2] (emphasizing that the EPC “leaves it to the discretion of the boards whether to give reasons in any decision deviating from other decisions”); T_0182/88 (UNIVERSITY OF CALIFORNIA/ Dimeric Oligopeptides) [1990] OJ EPO 287. Cf G Paterson, The European Patent System: The Law and Practice of the European Patent Convention (London: Sweet & Maxwell, 1992) 1–68 (describing the duty to give reasons as “one of the general principles of law recognized in Community law”).

148 See G_0003/08, note 59 above. [7.3.6] (on transparency); [12.21] (on consistency).

149 ibid. [7.2.7].

150 Ibid.

151 [2000] OJ C337 E/278.

152 Proposal for a Council Decision conferring jurisdiction on the Court of Justice in disputes relating to the Community patent, COM (2003) 827 final.

153 Proposal for a Council Decision establishing the Community Patent Court and concerning appeals before the Court of First Instance, COM (2003) 828 final.

154 See “Results of the Competitiveness Council of Ministers, Brussels, 11th March 2004 Internal Market, Enterprise and Consumer Protection Issues”, MEMO/04/58 (12 March 2004).

155 See Proposal for a Council Decision establishing the Community Patent Court and concerning appeals before the Court of First Instance, Opinion of the Court of Justice of the European Communities (8 November 2004) Document No 14349/04.

156 See Council of the European Union, Working Document (“Draft Agreement on the European and Community Patents Court and Draft Statute”) 5072/09 (8 January 2009).

157 See note 128 above, quoting from BR/135/71 (17 November 1971) [96].

158 Floyd (note 32 above) 480.

159 See, e.g., Badger Co Inc's Application [1970] R.P.C. 36 (PAT); Gevers' Application [1970] R.P.C. 91 (PAT); Burroughs Co (Perkins') Application [1974] RPC 147 (PAT); IBM's Application [1980] F.S.R. 564 (PAT). For a discussion of these cases see Pila note 23 above, pp. 101–103.

160 See note 19 above and accompanying text.

161 See Slee & Harris's Applications [1966] R.P.C. 194 (Superintending Examiner).

162 Note also the mathematical methods exclusion, particularly as regards the U.K. proposal that computer programs be defined as non-inventive mathematical methods (see note 126 above).

163 See note 20 above and accompanying text; also note 13 above.