Comparison of EPO and UK Practice
The judgment proposes several questions to be put to the Enlarged Board of Appeal in an effort to resolve perceived conflicts between the different decisions of the Boards of Appeal. In response to this, Alain Pompidou, then president of the European Patent Office (EPO), wrote to Lord Justice Jacob to say that while clarification of certain issues relating to excluded subject matter would be welcomed, there were currently insufficient differences between relevant Board of Appeal decisions that would justify a referral. Instead, a referral would be appropriate if the approach taken by one Board of Appeal would lead to the grant of a patent whereas the approach taken by another Board would not. On 22 October 2008, Pompidou's successor Alison Brimelow did refer a number of questions to the Enlarged Board. In its opinion G 3/08, the Enlarged Board rejected the referral as inadmissible.
The practice of the EPO to deem non-technical subject matter, such as new music or a story, as part of the prior art was criticised in the judgment as not being intellectually honest. A similar criticism was also raised during appeal T 1284/04, in response to which the EPO Board of Appeal stated that:
| “ | the COMVIK approach does not consider the non-technical constraints as belonging to the prior art, but rather as belonging to the conception or motivation phase normally preceding an invention since they may lead to a technical problem without contributing to its solution. Such aspects have never been taken into account for assessing inventive step, irrespective of whether or not they were known from the prior art. | ” |
The EPO Boards of Appeal, in T 154/04 further states that the examination of whether there is an invention within the meaning of Article 52(1) to (3) EPC has to be strictly separated from and not mixed up with the other three patentability requirements referred to in Article 52(1) EPC.
| “ | This distinction abstracts the concept of "invention" as a general and absolute requirement of patentability from the relative criteria novelty and inventive step, which in an ordinary popular sense are understood to be the attributes of any invention (...). | ” |
In relation to the "ordinary popular sense" according to which novelty and inventive step are understood to be attributes of all inventions and in relation to the corresponding meaning of the term invention, the Board considered that:
| “ | The "technical effect approach" endorsed by Lord Justice Jacob in the Aerotel/Macrossan judgement (...) seems to be rooted in this second ordinary meaning of the term invention, a practice which might be understandable "given the shape of the old law" (Lord Justice Mustill, loc.cit.), but which is not consistent with a good-faith interpretation of the European Patent Convention in accordance with Article 31 of the Vienna Convention on the Law of Treaties of 1969. | ” |
The "contribution" or "technical effect" approach followed in the Aerotel/Macrossan judgement was abandoned by the Boards of Appeal of the EPO ten years ago and the board in T 154/04 confirmed that there were "convincing reasons" for abandoning this approach.
The Board further considered that
| “ | The "technical effect approach (with the rider)" applied in the Aerotel/Macrossan judgement is irreconcilable with the European Patent Convention also for the further reason that it presupposes that "novel and inventive purely excluded matter does not count as a 'technical contribution'" (Aerotel/Macrossan, e.g. paragraph No. 26(2)). This has no basis in the Convention and contravenes conventional patentability criteria (...)" | ” |
Read more about this topic: Aerotel V Telco And Macrossan's Application
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