Re: [Patents] "Further technical effect"

[James Heald <j.heald@ucl.ac.uk>]

halber@idea.net.pl wrote:
> 
> Gregory Aharonian wrote:
> 
> > What is your definition of the word "technical"?
> 
> As I understand the EPO (or German) jurisdiction did not give up the
> definition of “technique” as controlled use of natural forces. 
> The change
> consists in the fact that “technique” ceased to be foremost 
> factor taken
> into consideration by answering the question of patentability.
> 
> Some EPO decisions are in complete harmony with CULT proposals. For
> example look to decision Boards of Appeal of March 2002 (case T 49/99)
> http://legal.european-patent-office.org/dg3/pdf/t990049eu1.pdf
> 

Koch & Sterzel sought to patent a new control program for an existing
type of X-ray machine.

According to the decision in (T 26/86, 
http://legal.european-patent-office.org/dg3/biblio/t860026ep1.htm)

(sec 3.4):

        "... The Board is unable to share this view [of the German Federal
Court] because it makes the field in which an invention essentially lies
crucial to the issue of whether that invention is or is not technical in
nature. The Board holds that an invention must be assessed as a whole.
If it makes use of both technical and non-technical means, the use of
non-technical means does not detract from the technical character of the
overall teaching. The European Patent Convention does not ask that a
patentable invention be exclusively or largely of a technical nature; in
other words, it does not prohibit the patenting of inventions consisting
of a mix of technical and non-technical elements. 

<EMPHASIS (mine)>
        "Apart from the fact that the Board fails to find any legal basis in
the European Patent Convention for the theory of the Federal Court of
Justice concerning the essence of inventions, 
</EMPHASIS (mine)>

        "it also sees practical objections to a need to give a weighting to
technical and non-technical aspects because according to the Federal
Court of Justice the criterion to be applied is which aspect makes the
essential contribution to the invention's success. Not only is such a
decision fraught with difficulties in practice; it also has the effect
of making the teaching unpatentable in its entirety if the greater part
is non-technical and even though the technical aspect which is found to
be subordinate is in fact judged to be novel and to involve inventive
step. The Board therefore regards it as unnecessary to weigh up the
technical and non-technical features in a claim in order to decide
whether it relates to a computer program as such. If the invention
defined in the claim uses technical means, its patentability is not
ruled out by Article 52(2)(c) and (3) EPC and it can be protected if it
meets the requirements of Articles 52 to 57 EPC."



The current EPO position appears to be an evolution from this decision.

According to the recitals of the directive, to belong to a field of
technology, the computer-implemented invention must have Technical
Character (recital 10); furthermore to be patentable its inventive step
must make a Technical Contribution to the state of the art (recital 11);
ie its *specific contribution* must have Technical Character (recital
12).

Some explanation of the difference was given in an interview by Dai Rees
in 2001
(http://www.derwent.com/ipmatters/caught_in_a_web/interview_rees.html),

DR: We distinguish between the technical character of an invention, and
the technical contribution In talking about the technical effect, we
mean the technical character. Now the technical character is a very weak
test of patentability, as it is very easy to find a technical effect in
many things: the technical effect of a telephone is that it transforms
and transports sounds from one place to another. 

Q: But the telephone would have met both tests? 
DR: Yes. The invention of the telephone also provided a technical
contribution to the state of the art, so it would have been regarded as
patentable by the EPO. 

Q: Can you expand on the difference between technical character and
technical effect? 
DR: A lampshade has a technical character: it is manufactured and its
technical effect is that it shades light. In that sense a new lampshade
is not excluded from patentability. If lampshades were normally painted
with pictures of roses, but somebody painted them with tulips instead we
would then apply the next test, asking what contribution to the art the
new lampshade made that was not already known. 

Q: And here it would fail? 
DR: Right. As the change was merely aesthetic, or commercial, it would
fail this test, and so would not be patentable. 

Q: This is different to the US approach? 
DR: Yes. It is a critical difference. The US talks about a patent being
allowable for any new method of manufacturer, and that includes both
manufacture and process. That requirement more or less corresponds to
our definition as to what constitutes the technical character. 

Q: The US does not look for a technical contribution? 
DR: The US merely stipulates that the invention should be new and
useful. We have the requirement for a technical contribution to the
state of the art. Therein lies the difference. 



My understanding is therefore that, in the EPO thinking, the "specific
contribution" need not be technical per se (eg if it is a computer
program), but must somehow improve the ability of the device as a whole
to carry out its technical function (ie not just add a pretty
screensaver).

[[Though I still don't see how Sohei would pass this test (my other
post)]].

Trying to convert this position succinctly into legislation, without
overturning any previous EPO decisions, appears to be one of the
contributory factors worsening Arlene McCarthy's mental condition...