The decision of the EPO's Technical Board of Appeal T0154/04 Duns Licensing Associates LP dated 15 November 2006 has just been published. It pulls no punches in criticising the approach of the UK’s Court of Appeal.

The decision relates to an application to patent a method of estimating product distribution. The Technical Board gives a thorough examination of how best to approach Article 52 of the European Patent Convention (EPC). Article 52 contains the requirements of patentability and also provides a non-exhaustive list of items which are excluded from patentability, including methods of doing business and programs for computers “as such”. The principles put forward by the Technical Board include:

  • There are four independent criteria for patentability: (i) an invention; (ii) novelty; (iii) inventive step; and (iv) that the invention must be capable of industrial application.
  • Only a lay person would consider that the definition of invention requires novelty and inventive step – the criteria are independent. Novelty is a requirement of patentability.
  • The definition of invention does require “technical character” and nothing in Article 52 excludes something with “technical character” from patentability.
  • To examine patentability it is necessary to construe the claims of the patent to define the “technical features” which contribute to the “technical character”.
  • It is permissible to have a mix of technical and non-technical features appearing in the claim but assessments of novelty and inventive step can only be based on technical features.
  • When considering a “problem/solution” approach, the problem must be a technical one but it can be formulated using an aim to be achieved in a non-technical field.

The Technical Board went on to claim that these principles have a clear and consistent basis in the European Patent Convention and in the case law of the Boards of Appeal and the Enlarged Board of Appeal.

The Technical Board also considered Jacob LJ’s judgment in Aerotel Ltd v Telco Holdings Ltd (& ors); Macrossan’s Patent Application [2006] EWCA Civ 1371. It noted that his approach, one of technical effect, “…is not consistent with a good faith interpretation of the European Patent Convention…”.

This fairly stinging opinion was followed up with the view that the Aerotel/Macrossan approach is “irreconcilable with the European Patent Convention ... for the further reason that it presupposes that “novel and inventive purely excluded matter does not count as a ‘technical contribution’”. The UK courts and the UK Intellectual Property Office (UKIPO) have already adopted the four-step Aerotel/Macrossan approach.

Alexandra Brodie, a director in Wragge & Co LLP’s High Tech Team, says, “The upshot of this very public spat is that an applicant for a business method or software patent may be certain of one thing only – that there is scope for any decision given by the UK Courts and UKIPO to be wholly different to any decision given by the EPO despite the fact that they are supposed to be applying the same law.”