Thursday, 7 October 2010

G1/09 - an elegant definition of "pending"

The Enlarged Board has now decided how "pending" is to be interpreted.

By change the definition, they have introduced a flexible system that should result in fewer cautionary divisionals (pleasing the EPO), possibly fewer oral proceedings (again pleasing the EPO), and elimination the need to file an appeal after a refusal to be able to file a divisional (pleasing applicants and saving them money - at least the EUR. 1180 and any attorney handling fees)

Pending is surprisingly defined around Art.67(4) - its lack of importance in the past being demonstrated by the few lines of explanation in reference books such as Visser.

After refusal:
Reason 4.2.4 states that an application is considered pending [R.36(1)] until the expiry of the period for filing an appeal. So it is no longer necessary to file an appeal just to be able to file a divisional

Reason 4.2.6 clarifies that there is no difference anymore between a decision in oral proceedings and a decision in written proceedings. In both cases, the appeal period runs from the written notification of the decision.

So, it is no longer necessary to file a precautionary divisional prior to oral proceedings - if the decision is not favourable, you have plenty time afterwards to decide whetehr to appeal or to file a divisional.

Also, if you request oral proceedings merely to prevent being surprised by a written decision, that is no longer necessary. After receiving the decision, there will be at least 2 months to file a divisional and/or to appeal.

But the applicant (and his representative) cannot completely relax: it is still necessary to have at least one of the 24 month periods of R.36(1) running to be able to validly file the divisional.

Friday, 28 May 2010

G 3/08 - Enlarged Board case: Programs for computers

Case: G 3/08, Programs for computers

The referral of the President to the Enlarged Board of Appeal was dismissed as inadmissible because there was no conflicting case law found. In this decision, the Board interpreted the notion "different decisions" in Art. 112(1)(b) EPC to mean "conflicting decisions". When there are no conflicting decisions, the Board does not have the capacity to make a decision. Moreover, legal development by itself cannot form the basis for a referral, only because case law in new legal or technical fields does not always develop in a linear fashion and earlier approaches may be abandoned or modified. So, the object and purpose of Art. 112(1)(b) EPC is to have an Enlarged Board decision re-establish legal uniformity when it has clearly been disrupted, not to intervene in legal development. Note that obiter dicta may be taken into account when determining whether two decisions are conflicting.

Even though the case was inadmissible, the decision strongly confirms the existing case law regarding programs for computers by pointing out that there hardly are any conflicing decisions. The Board only identified one potential point of conflict, namely a difference between positions taken in
T 1173/97 ("With regard to the exclusions under Art. 52(2),(3) EPC, it does not make any difference whether a computer program is claimed by itself or as a record on a carrier") and
T 424/03 ("the subject-matter of claim 5 has technical character since it relates to a computer-readable medium, i.e. a technical product involving a carrier").
However, according to the Board, this difference was a legitimate development of the case law. Moreover, the earlier decision T 1173/97 was not followed in any subsequent case law on this point, whereas T 424/03 has not been challenged in any later decision.

The Board summarized the present position of the case law as follows. A claim in the area of computer programs can avoid exclusion under Art. 52(2)(c),(3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium. However, if a claim to program X falls under the exclusion of these provisions, a claim which specifies no more than "Program X on a computer-readable storage medium" or "A method of operating a computer according to program X" will always still fail to be patentable for lack of an inventive step under Art. 52(1) and Art. 56 EPC. Merely the article applied is different.

Most importantly in this decision, the Board has confirmed that features which are by themselves excluded subject-matter do not contribute to inventive step. The decision points to T 154/04 for a summary of the system for delimiting the innovations for which a patent may be granted. The Board further notes that they are not aware of any divergence in this case law.

The decision further elaborates on the difference in scope between a computer program and a computer-implemented method. In short, there is a logical distinction between a method carried out by a computer and the sequential list of instructions which specify that method.

Tuesday, 16 March 2010

G 1/07 - Treatment by surgery

Case: G1/07, Medi-Physics, Inc.

The Enlarged Board of Appeal of the European Patent Office has recently issued their decision in referral G1/07, about the interpretation of the expression "methods for treatment of the human or animal body by surgery". Such methods are excluded from patentability according to Art. 53(c) EPC 2000. The application which is the subject of the referring decision is about an imaging method in which Xe-129 is used as a contrast agent. The scope of the claims encompasses an injection of polarized Xe-129 into the heart.

In the decision, the Enlarged Board makes some interesting remarks First, it is stated in the decision that the Vienna Convention does not provide a general principle of narrow interpretation of exclusions from patentability. Rather, the Vienna Convention gives the general rule that 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.

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