Patent Eligibility : The Sick-man Of Patent Law

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5. Patent eligibility – the ‘sick-man’ ofpatent law1

Erika Ellyne

1. INTRODUCTION

‘Marking off boundaries in intellectual property is essentially a policychoice which has major implications for innovation. Boundaries that aremarked off too broadly may impair the ability of individuals to create,innovate or improve upon the works of others. Boundaries that are set toonarrowly, or that fail to protect the most socially valuable aspects ofwritings or inventions, may diminish the incentive to create or innovate.To promote science and the useful arts, policymakers must strike anoptimal balance between what belongs to a creator and what belongs tothe public domain.’2

This quote clearly sets out the major challenge of patent law: tobalance incentive and access, private interests and public interests, and todelineate that which is eligible for patent protection from that whichbelongs to the public domain. In the following pages, we investigatethese relationships and their manifestation (or lack thereof) in patenteligibility practices.

Section 2 sets out the patent rationale to induce innovation, butsimultaneously balance access and public policy concerns. Section 3explains the normative role of patent eligibility and its function in thisrespect. Section 4 investigates the practice of patent eligibility; retracingthe evolution of patent eligibility standards, in particular the technical

1 Paper selected from Young Scholars Competition, Bucerius Law SchoolConference ‘Access Challenges of the 21st Century: Emerging Issues of Intellec-tual Property and Knowledge Governance’, May 18–19, 2012. The author wouldlike to thank Julian Cockbain and Sari Depreeuw for their comments andguidance.

2 US Congress Office of Technology Assessment, Intellectual PropertyRights in an Age of Electronics and Information, OTA-CIT 302,1986, 61.

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effects doctrine, in the praxis of the Technical Boards of Appeal (TBoA)of the European Patent Office (EPOff).3 Section 5 discusses how patenteligibility standards have been eroded and the effects on the assessmentof inventive step. Lastly, in section 6, we will draw some conclusions andcomment on the challenges patent eligibility faces.

2. THE PATENT RATIONALE

In this section, we briefly examine the patent rationale.4 In general, twotheories are used to explain the patent institution: the incentive theoryand the social contract theory. Some authors take these theories asindependent or even exclusive one of the other, whereas other authors seethem as linked hand in hand.5 We believe the latter to be more accurate.Intellectual property was born from the articulation of both theories.6Both social contract theory and the incentive theory are utilitarian; theincentive theory seeks to maximize general welfare and the social

3 European Patent Convention, October 1973, revised in November 2000and entered into force in 2007, Articles 4, 21.

4 Some short remarks on terminology: innovation is generally distinguishedfrom invention. The former is a longer process from the conception to thecommercialization of a porduct. Invention is one step in this process. The extentto which the patent incentivizes commercialization and its reach down theinnovation line is disputed among authors. For some, patents are primarily toencourage the commercialization of inventions and not just to encourageresearch, for others patents do not go far enough. For present purposes though,we adopt the view that patents are aimed at incentivizing innovation, includinginventions and their commercialization within the patent itself, one finds ‘new’,‘inventive’ information and knowledge. Inventions provide a form of knowledgein that they integrate information. T.M. Sichelman, Commercializing Patents,Stan. L. Rev. 2010, Vol. 62, pp. 341–411. See also R.S. Eisenberg, Patents andthe Progress of Science, in: D. Vaver (ed.), Intellectual Property Rights: CriticalConcepts of Law, London, Routledge, 2006, p. 93; S.M. Benjamin and A.K. Rai,,Who’s Afraid of the APA? What the Patent System Can Learn from Administra-tive Law, Georgetown L. J., 2007, pp. 269, 275 et seq.: D. Guellec and B. vanPotteslberghe de la Potterie, The Economics of the European Patent System: IPPolicy for Innovation and Competition Oxford, Oxford University Press, 2007,p. 58.

5 M. Buydens, L’intérêt Générale, une Notion Protéiforme, in: M. Buydensand S. Dussolier (eds), L’intérêt Général et L’accès à L’information en PropritétéIntellectuelle, Brussels, Bruylant, 2008, pp. 6, 24; M. Vivant, Le Système desBrevets en Question, in: B. Remiche (ed.), Innovation et Intérête Général,Brussels, Larcier, 2007, p. 27.

6 M. Buydens, supra note 5, p. 29.

140 Access to information and knowledge



contract dimension serves as a means of transparency, which helps topreserve the liberty and equality that are also part of general utility.7

2.1 Incentive Theory

The incentive theory is part of the dominant economic paradigm ofintellectual property and is the most widely accepted approach.8 Theparticular nature of information, as an intangible public good, leads to aseries of economic problems in a purely free market environment.9 Inshort, these are: free riding, Arrow’s information paradox, and theinability for inventors to fully capture or internalize the total value oftheir invention.10 These problems lead to a sub-optimal rate of invention,as inventors lack sufficient incentives to invest in the development ofinventions. This is devastating in terms of social welfare, thus, patent lawsteps in to correct these market failures through the implementation of a(species of) property right, which is thought to be the cheapest and mostefficient method for holding out incentives.11 The overall objective of thepatent system, in this respect, is to achieve efficiency and maximizeoverall welfare.12

7 Ibid.8 N. Elkin-Koren and E. Salzberger, The Law and Economics of Intellectual

Property in the Digital Ages, London, Routledge, 2013.9 This means they are non-rival and non-exclusive. N. Elkin-Koren and E.

Salzberger, supra note 8, p. 59; F.S. Kieff, On the Economics of Patent Law andPolicy, in: T. Takenaka (ed.), Patent Law and Theory, Cheltenham (UK)/Northampton, MA (USA), Edward Elgar, 2008, p. 26; hereafter F.S. Kieff, seeabove in this note. See also B. Martin, Against Intellectual Property, in: P. Drahos(ed.), Intellectual Property, Farnham, Ashgate, 1999, p. 518; D. Guellec and B.van Potteslberghe, supra note 4, p. 49.

10 K. Arrow, Economic Welfare and the Allocation of Resources for Inven-tion, in: Universities National Bureau (ed.), The Rate and Direction of InventiveActivity: Economic and Social Factors, UMI, 1962, p. 11, available at: http://www.nber.org/chapters/c2144.pdf; F.S. Kieff, supra note 9, p. 26; D. Guellec andB. van Potteslberghe, supra note 4, p. 49.

11 N. Elkin-Koren and E. Salzberger, supra note 9, p. 57.12 Efficiency in the incentive paradigm is generally measured in terms of

wealth maximization: N. Elkin-Koren and E. Salzberger, supra note 9, p. 58 ; formore on efficiency, see R. Peritz, Competition Policy in America, Oxford,Oxford University Press, 1996, pp. 240–5; C. Hettinger, Justifying IntellectualProperty, Phil. & Pub. Aff., 1998, Vol. 1, p. 48; D. Guellec and B. vanPotteslberghe, supra note 4, p. 49; M. Carroll, One Size Does Not Fit All:A Framework For Tailoring Intellectual Property Rights, Wash. Coll. of L.Research Paper No. 2010-07, p. 1367, available at: http://papers.ssrn.com/sol3/

Patent eligibility – the ‘sick-man’ of patent law 141



Arnold Plant summarizes the main rationale of the incentive theory,‘the aim of all advocates, whether inventors themselves or not, is to makeinventing pay better, and those at any rate who are not inventors hope formore inventions as a consequence’.13 This is done by ‘giving an inventorthe control for a definite period over the disposal of his invention, tomake it easier for him to derive an income from it’ and to ‘extend thesphere of private property so as to increase the profitability of ‘inventing’and of the exploitation of inventions …’14

2.2 Contract Theory

Contract theory theorizes the patent as a type of ‘contract’ between thepatentee and society. The former discloses the invention to the benefit ofthe latter, thereby adding to the ‘public storehouse of knowledge’. Inexchange, for having made the invention public and contributing to thegeneral benefit of society, the patentee is granted a temporary monop-oly.15 The emphasis is on the ‘bargain’ between the society and thepatentee: the benefit that accrues to the public from the disclosure ofinvention in exchange for the patent right.16 The challenge facing patentlaw is to ensure that both sides of the patent ‘bargain’ are balanced. Thatis to say that a socially-beneficial invention accrues to the public and that

papers.cfm?abstract_id=1585464; R. Spinello and M. Bottis, A Defense ofIntellectual Property Rights, Cheltenham (UK)/Northampton, MA (USA),Edward Elgar, 2009, p. 167.

13 A. Plant, The Economic Theory Concerning Patents for Inventions, in:David Vaver (ed.) Intellectual Property Rights: Critical Concepts of Law,London, Routledge, 2006, pp. 30, 32.

14 A. Plant, supra note 13, p. 32.15 R.S. Eisenberg, supra note 4, p. 87; M. Buydens, La Propriété Intellec-

tuelle, Evolution Historique and Philosophique, Brussels, Bruylant, 2012,pp. 309–15; F. Machlup and E. Penrose, The Patent Controversy in the Nine-teenth Century, J. Econ. Hist., 1950, Vol. 10, No. 1, pp. 1, 11.

16 M. Vivant, supra note 5, p. 28. ‘The inventor receives a monopoly becausein Coke’s words “the inventor bringeth to and for the Commonwealth a newmanufacture”. The emphasis here is not on some legalistic act of disclosure inthe patent specification, but rather on the patent applicant’s obligation to providesomething of social value in exchange for the monopoly privilege.’ P. Drahos,The Patent Social Contract and the Duties of the Patent Office, 5th AnnualKyushu University Law Conference, Fukoku (Japan), Februrary 2010, pp. 19, 20,available at: http://www.law.kyushu-u.ac.jp/programsinenglish/conference2010/draft01.pdf citing E. Coke, The Third Part of the Institutes of the Laws ofEngland (first published 1628, London (UK)/New York (USA), Garaland Pub-lishing, 1979), p. 184.




in exchange the inventor is granted an exclusive right. The protectiongranted must be commensurate to the invention, no more no less.

2.3 Access

Patents create artificial scarcity and are aimed at maintaining high prices,at least during the patent term, to assure the patentee a certain level ofincome through control of supply.17 Hettinger points out the inherentparadox of this situation: IP actually ‘restricts the availability and use ofintellectual products for the purpose of increasing the production andthus future availability and use of new intellectual products’.18 Martinphrases it with most clarity, ‘in order to promote the development ofideas, it is necessary to reduce the freedom with which people can usethem’.19 This induced scarcity of intellectual products is a limitation ofaccess. Hence, this is the oft-heard dichotomy of incentive versusaccess.20 In economic terms, this is a question of dynamic versus staticefficiency.21

There are a number of conflicting interests that the law must take intoaccount; those of the inventors, the consumers, market competitors andfollow up innovators.22 Carroll presents the consequences of granting IPrights succinctly:

These rights must be limited, however. While solving one problem, intellec-tual property rights create another by supplying rightsholders with powerfulweapons against end-users, direct competitors and follow-on innovators whoseek to bring socially beneficial innovations to market. To promote progress,intellectual property law must strike a balance, providing sufficient incentivesfor innovation without unduly stifling the efforts of follow-on innovators orthe liberties of end-users.’23

The patent system must balance these competing interests that vacillatebetween granting access to third parties and providing protection for the

17 A. Plant, supra note 13, p. 30.18 E.C. Hettinger, supra note 12, p. 48.19 B. Martin, supra note 9, p. 522.20 G. Lunney, Reexamining Copyright’s Incentives – Access Paradigm, Vand.

L. Rev., 1996, p. 483; F.S. Kieff, supra note 9, p. 35.21 D. Guellec and B. van Potteslberghe, supra note 4, pp. 52–3 ; N.

Elkin-Koren and E. Salzberger, supra note 9.22 H. Ullrich, Select From Within: The European Patent With Unitary Effect,

in: C. Geiger (ed.), What Patent Law for Europe?, Paris, Litec, forthcoming, p. 5,available at: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2159672.

23 M. Carroll, supra note 12, p. 1368.




patentee. Moreover, it must equally take into consideration public policyconcerns (external to the economic rationale) that come into play.24 In thenext section we see how patent eligibility is a mechanism used to do so.

3. PATENTABILITY AS A TUNING MECHANISM

Patent protection is limited to novel, non-obvious, industrially applicableinventions. However, prior to addressing these requirements, there is acardinal question to ask: is the subject matter indeed an invention? Thequestion whether by its nature the invention qualifies for protection isreferred to as patent eligibility. It is the foremost step in patentability. Inthe European Patent Convention, this falls under Articles 52 and 53.

Patentability and patent eligibility are one of the mechanisms by whichthe incentive effect is modulated. The criteria set out in these fieldsrespectively will determine what is being ‘incentivized’, what it is welook to increase. The other side of the coin is the question of access. Ifpatentability and, in particular, patent eligibility channel the patentsystem’s incentive effect, then they also set the limits of what will berestricted in terms of access. We explain more on patent eligibility’s rolebelow.

3.1 Patent Eligibility and its Functions

Patent eligibility demarcates what can constitute an invention, by apply-ing a set of subject matter limitations. In this regard, it is commonlycalled a ‘gatekeeper’. Patent eligibility is the prism through which theincentive effect, and hence restriction to access, is modulated andapplied. Here, the normative role, to direct the objective of the patentsystem, becomes obvious.25

All these explanations commonly point out one important function ofpatent eligible subject matter– its function as a limitation to embody anormative belief. Understood as such, the existence of patent eligiblesubject matter indicates a social choice that is based on these normativeconsiderations of the patent institution. This social policy consideration iswhat makes patent institution an instrumentalist institution that provides

24 We will not develop these in detail here, for example though, access tomedicine, medical treatment, ethical issues relating to gene technology or theenvironment, see H. Ullrich, supra note 22, p. 8.

25 J. Pila, On the European Requirement for an Invention IIC 2010, Vol. 41,No. 8, pp. 906, 915.




a limited property protection for a selective subject matter for a specifiedsocial goal. Thus, based on the above understanding, a more general butsignificant explanation could be drawn – that the existence of subjectmatter could be understood as a means of implementing utilitarianinstrumentalism as a normative foundation of patent law, by its functionas a categorical limitation (emphasis added).26

For Justine Pila, patent eligibility fulfills two functions. The first is tohelp set the threshold limits of the patent system by determining thecategories of subject matter for which a patent may be granted. Thesecond is to restrict the protection conferred by a patent to individualsubject matter conceived as inventions. In serving these functions, therequirement helps to fulfill the public benefit objectives of the patentsystem by mediating the balance struck by patents between individualpatentees and the public.27

Patent eligibility thus acts as a ‘pre- and post- patent determinant’.28

By defining an invention a priori and defining its constitutive element,this also informs its application and scope post grant. Moreover, itensures that the invention granted is sufficient and adequate to receivepatent protection, in this sense serving a public interest function.29

Lemley, Risch, Sichelman and Wagner describe patent eligibility as abalancing mechanism, in particular with regard to the American contextand the abstract ideas doctrine. The underlying rationale, however, canapply to the European situation as well. ‘It [the patent eligibilitydoctrine] is about encouraging cumulative innovation and furtheringsocietal norms regarding access to knowledge by preventing patenteesfrom claiming broad ownership over fields of exploration rather thanspecific applications of those fields.’30 So the theory is also about

26 N. Lee, Patent Eligible Subject Matter Reconfiguration and The Emer-gence of Proprietarian Norms – The Patent Eligibility of Business Methods,2002, available at: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=400100.

27 J. Pila, Software Patents, Separation of Powers, and Failed Syllogisms: ACornucopia from the Enlarged Board of Appeal of the European Patent Office,Cambridge L. J., 2010, Vol. 70, No. 1, pp. 203, 237 et seq., available at:http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1612518.

28 J. Pila, supra note 27, p. 2.29 Ibid.30 See M. Lemley, T. Sichelman, M. Risch and R.P.Wagner, Life After Bilski,

Stan. L. Rev., 2011, p. 1315.




preventing over-claiming that could inhibit future innovation, not over-restricting access, and thus ensuring that the scope of claims is commen-surate with the invention.31

In essence, patent eligibility answers the question of what inventionsshould be subject to patent rights to ensure the patent bargain andbalance. This is a normative determination rife with public policyconsiderations.32 Some subject matter, if patented, would come at toohigh an economic and social cost. If such inventions were indeedpatented, this would tip the scales of the patent balance too far in onedirection undermining the efficiency of the patent system.33 Hence, theseareas are cordoned off by patent eligibility standards. These are ‘no-go’areas that patent eligibility rules circumscribe. The effect of which, is todelimit frontiers of the commons.

Patent eligibility plays a pivotal role, not only in patent law, but alsofor society at large, since defining the commons is of general societalconcern. The practice of patent eligibility should reflect the functions andconsiderations discussed above. However, as we will see, practice doesnot live up to the theory, as ‘[g]atekeeping rules often take on a life oftheir own, continually removing themselves with each judicial opinion oragency interpretation from the fundamental purposes behind patentablesubject matter’.34 In the next section, we see how this can indeed be saidof patent eligibility in Europe.

31 See Lemley et al., supra note 30, p. 1315; T. Sichelman, Funk Forward, in:R.C. Dreyfuss, J. Ginsburg and C. Rose (eds), Intellectual Property at the Edge:The Contested Contours of IP, 2013 (forthcoming), available at: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2035027.

32 Indeed policy considerations enter into play when describing and definingthe difference between a computer program, game rule, mathematical method assuch from a plain computer program, mathematical method. They enter into playwhen delineating technology, technical, technical contribution, technical effectand in fact finding and qualifying. N. Lee, Applying Institutional Choice Theoryto Patent Right Case of Patentable Subject Matter Debates, International Sympo-sium Hokkaido, 30 January 2009, available at: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1696023.

33 Indeed these subject matters, should they be subject to patent protectionwould engender too high transaction costs, externalities or opportunity costs,therefore they are better left out of the patent system. See H. Ullrich, supra note22, p. 6 ; H. Ullrich, Propriété Intellectuelle, Concurrence et Régulation, RevueInternational De Droit Economique, 2009, pp. 399–450, p. 439

34 T. Sichelman, supra note 31, p. 8.




4. THE PRACTICE OF PATENT ELIGIBILITY

The European Patent Convention (EPC) harmonizes European patentabil-ity standards, particularly paying deference to the Boards of Appeal caselaw.35 Some jurisdictions follow these standards more closely than othersdo.36 Despite the fact that Boards of Appeal case law is not technicallybinding on other courts, it does exercise decisive influence. NationalCourts try to diverge as little from precedent as possible and administra-tive offices align their practices with it.37

35 Pila goes as far as to say that in practice, the Boards of Appeals are treatedlike supranational courts: J. Pila, supra note 27; C. Floyd, Novelty under thePatents Act 1977: the State of the Art After Merrell Dow, EIPR 1996, pp. 480,485 et seq. N. Lee, supra note 32, p. 13; S. Harmon, From Engagement toRe-Engagement: the Expression of Moral Values in European Patent Proceed-ings, Past and Future, E. L. Rev., 2006, pp. 642, 644.

36 For member state case law, see European Patent Office, Case Law Fromthe Contracting States to the EPC 3004-2011 (Report), available at: http://www.epo.org/law-practice/case-law-appeals/national-patent-decisions.html.

37 The contrary would encourage forum shopping. The approach set out bythe Boards of Appeal ‘would then have to be followed not only by the EPO butin practice also by national patent offices and courts throughout Europe. Thisbroader effect follows since the national patent laws in the countries that areparty to the EPC are intended, as far as possible, to apply the same criteria forpatentability as the EPC and the examiners of the national patent offices and thejudges of the national courts strive towards a common interpretation of thesecriteria across Europe.’ What is more, while many patents are granted by theEPO or by national patent offices applying the EPO interpretations, very few areever litigated. In this respect, too, the influence of the EPO is considerable. J.Cockbain and S. Sterckx, The Patentability of Computer Programs in Europe: AnImproved Interpretation of Article 52(2) and (3) of the European Patent Conven-tion, J.W.I.P., 2010, Vol. 13, No. 3, pp. 366, 371; S. Thambisetty, IncreasingReturns in the Patent System: Institutional Sources and Consequences for law,LSE Law, Society and Economy Working Papers, 2009, pp. 11 et seq., availableat: http://www.lse.ac.uk/collections/law/wps/WPS2009-07_Thambisetty.pdf.UKIPO is mandated to harmonize patentability standards between the UKpatents Act and the EPC (14 et seq.). Thambisetty discusses collective action,adaptive expectation and positive feedback with regard to the European patentsystem landscape, which reinforces the Boards’ case law. The German juris-dictions do follow a very similar line, applying the same two-step test, though ithas been characterized as more cautious than that of the EPO. S. Marsnik and R.Thomas, Drawing a Line in the Patent Subject-Matter Sands: Does EuropeProvide a Solution to the Software and Business Method Patent Problem?,Boston Coll. Int’l & Comp. L. J., 2011, Vol. 34, No. 2, p. 227; K.J. Melullis,Some Problems of Patent Law from a German Viewpoint, 13th European Patent




As mentioned previously two articles relate to patent eligibility, hereour focus will be on Article 52 and what has been termed ‘inherentpatentability’.38 This is the question of what is an invention and whatconstitutes it as such. Article 53 on the other hand, relates to explicitpublic policy exceptions: the subject matter excluded recognized asinventions, but excluded for policy reasons.39

Article 52

(1) European patents shall be granted for any inventions, in all fields oftechnology, provided that they are new, involve an inventive step and aresusceptible of industrial application.

(2) The following in particular shall not be regarded as inventions within themeaning of paragraph 1:(a) discoveries, scientific theories and mathematical methods;(b) aesthetic creations;(c) schemes, rules and methods for performing mental acts, playing

games or doing business, and programs for computers;(d) presentations of information.

(3) Paragraph 2 shall exclude the patentability of the subject-matter oractivities referred to therein only to the extent to which a Europeanpatent application or European patent relates to such subject-matter oractivities as such.

Much jurisprudence has developed around the application of thesenon-inventions ‘as such’. There are 27 Technical Boards of Appeal

Judges’ Symposium, Special Edition, Thessalonica, 2007, p. 2, available at:http://archive.epo.org/epo/pubs/oj007/04_07/special_edition_2_judges_symposium.pdf. For a long time, while the UK did follow the same track as theEPO, the interpretative approaches to patentability do now diverge. What isinteresting is the controversy that has surrounded the diverging case law, theattitude of the UK Courts, and their need to motivate it. This reaction actuallydemonstrates the influence and the perceived need to follow TBoA case law.However, despite the different process adopted, in the end, findings of patentabil-ity do generally align and further cases have brought the two approaches closertogether. J. Pila, supra notes 31, 33, 43; C. Floyd, supra note 35; S. Marsnik andR. Thomas, supra note 37, pp. 2–303.

38 Article 53 is also applied in patent eligibility, however this is a legally andanalytically distinct test : J. Pila, The Future Requirement for an Invention:Inherent Patentability as a Pre- and Post Patent Determinant, in: G. Ghidini andE. Arezzo (eds), Biotechnology and Software Patent Law: A ComparativeReview on New Developments, Cheltenham (UK)/Northampton, MA (USA),Edward Elgar, 2011.

39 J. Pila, supra note 38.




(TBoA) that interpret the EPC. The Boards are divided along technicalfields and the International Patent Classification System.40 As we willsee, much of the case law revolves around the computer programsexclusions, for which the TBoA 3.5.01 is responsible. However, the ‘assuch’ limitation and interpretation applies in the same way to all Article52(2) non-inventions.41 What started off in the TBoA 3.5.01 has spreadacross the Technical Boards.

At the dawn of the drafting of the EPC, the term ‘invention’ was leftundefined, as it had been in the Strasbourg Convention.42 It is commonfor patent subject matter legislation to be deliberately general, ‘becausethe technological process that the law regulates is by definition unpredict-able and thus it is socially undesirable to confine the scope of patentablesubject matter based on the technology of the time of legislation’.43 Theobjective is to keep the system flexible and adaptive. In Europe, a type of‘negative definition’ was agreed upon. Dutch and German delegationsdrafted a (non exhaustive) set of ‘non-inventions,’ which made its wayinto the European Patent Convention (EPC).44

Flexibility on the other hand, provides the judiciary and administrativebodies a certain amount of discretion and latitude in its interpretation,which can lead to some legal and market uncertainty.45 A middle waymust be found that mitigates this uncertainty but does not sap patenteligibility standards of their flexibility.

4.1. The ‘Any Technical Character and theAny HardwareApproach’

Long-standing jurisprudence has read into Article 52 the requirement of‘technical character’ as the necessary and sufficient condition to consti-tute an invention.46 Before the any technical character approach, the

40 http://www.epo.org/about-us/boards-of-appeal.html.41 J. Cockbain and S. Sterckx, supra note 37, p. 371.42 Convention on the Unification of Certain Points of Substantive Law on

Patents for Invention, (Strasbourg Convention), Strasbourg, 27 November 1963),available at: http://conventions.coe.int/Treaty/en/Treaties/Html/047.htm: This hadnot seemed to cause any ‘practical problems.’, J. Pila, supra note 38, p. 144.

43 N. Lee, supra note 32, p. 12.44 J. Pila, supra note 38, p. 145; J. Pila, Article 52.2 of the Convention on the

Grant of European Patents: What Did the Framers Intend? A study of theTravaux Préparatoires, IIC 2005, Vol. 36, No. 7, pp. 755, 763 et seq.; J. Pila,supra note 25, pp. 911 et seq.

45 N. Lee, supra note 32, p. 13.46 Case T 1227/05 Circuit Simulation I/Infineon Technologies, TBoA 3.5.01

[13.12.2006], 3, available at: http://www.epo.org/law-practice/case-law-appeals/




contribution approach was followed when assessing the patent eligibilityof claims, however, this approach met its end with the Pension BenefitsSystems (PBS) and Hitachi cases of the TBoA 3.05.01. It was reformedbecause it did not differentiate between the threshold test of constitutingan invention with the subsequent (relative) determinations of novelty andinventive step.47

The PBS and Hitachi cases established, first for product claims and,then for process claims, that the use of any technical means is sufficienttechnical character to qualify the subject as an invention: ‘the presence oftechnical character which may be implied by the physical features of anentity or the nature of an activity, or may be conferred to a non- technicalactivity by the use of technical means’.48 The Board recognized that itsconclusions led to a very broad understanding of the term invention,which included writing using pen and paper. Hence, ‘in general, amethod involving technical means is an invention within the meaning ofArticle 52(1) EPC’.49 This has been termed the ‘any technical means’ or‘any hardware approach’. Furthermore, the findings in Hitachi are of abroad sweeping nature for all claims under Art. 52(2). Not only do anytechnical means suffice to qualify a subject as an invention, but ingeneral, the case supports a broad view of inherent patent eligibility: solong as one of the aspects mentioned (apparatus, activity or means) is

recent/t051227ep1.html; Case T 930/05 Modellieren eines Prozessnetzwerkes/XPERT, TBoA 3.5.01[10.11.2006], available at: http://www.epo.org/law-practice/case-law-appeals/recent/t050930du1.html; Case law of the Boards of Appeal(TBoA) of the EPO (Report), 6th ed., 2010, available at: http://documents.epo.org/projects/babylon/eponet.nsf/0/1ae7315e321e933ec12577bd0024d650/$FILE/Case_law_of_the_boards_of_appeal_2010_en.pdf, 1, 1.1; see also J. Cockbain andS. Sterckx, A Sun-Tanned or 3D smurf? Patentability of Computer Programs inEurope, J.I.P.L.P., 2011, Vol. 6, No. 5, pp. 254–61. This criterion emanates from aparticular reading of Art. 52(2). The supposed common factor to the list of non-inventions being their lack of technical character. Case law of the Boards of Appeal(TBoA) of the EPO (Report), 6th ed., 2, 1.1; Case 1173/97 IBM/ Computer Program,TBoA 3.5.01 [01.07.1998], available at: http://www.epo.org/law-practice/case-law-appeals/recent/t971173ex1.html.

47 Case T 931/95 Controlling Pension Benefits System/PBS PARTNERSHIP[2000] OJ 2001 441 available at: http://www.epo.org/law-practice/case-law-appeals/recent/t950931ex1.html, 6; Case T 258/03 Auction Method/HITACHI[2004] OJ 2004, 575, available at: http://www.epo.org/law-practice/case-law-appeals/recent/t030258ex1.html.

48 T 258/03, supra note 47, p. 16, 4.5.49 T 258/03, supra note 47, p. 16, 4.6–7.




considered technical, then an invention exists. Further case law developsthis idea further.

In the Odour Selection case, where the claim was to a perfume makingprocess, the TBoA 3.4.02 distilled the essence of the PBS and Hitachicases to a more general, all-encompassing principle: that any technicalaspect to a claim would render it an invention:

… the relevant, minimalist criterion to be applied in the present case is that ifno technical aspect at all can be identified in the claimed invention, then notechnical character can be attributed to the invention as a whole. This criterionconstitutes in fact the underlying principle in decision T 931/95 (supra, point3 of the reasons) considered during the first-instance proceedings and indecision T 258/03 (supra, point 4) both concerning the question of whether ornot the use of technical means in a method is a sufficient condition toconclude to the technical character of the method.50

In Duns Licensing, a landmark case concerning a business method,51 theTBoA 3.5.01 set out the case law on invention patentability in sevenprinciples. The Board explains the reasoning behind the technical char-acter doctrine: ‘The enumeration of typical non-inventions in Article52(2) EPC covers subjects whose common feature is a substantial lackof technical character. The formulation of the law ultimately derivesfrom the classical notion of invention adopted, which distinguishesbetween practical scientific applications and intellectual achievements ingeneral.’52

50 Case T 619/02 Odour selection/Quest International, TboA 3.4.02[22.03.2006], 2.2 available at: http://www.epo.org/law-practice/case-law-appeals/recent/t020619ep1.html.

51 A set of five questions were suggested for posing to the Enlarged Board,some of which were specifically taken from the British Aerotel appeal. TheTBoA did not refer the questions. Case T 154/04 Estimating Sales Activity/DunsLicensing Associates, TboA 3.5.01 [15.11.2006], available at: http://www.epo.org/law-practice/case-law-appeals/recent/t040154ex1.html.

52 Our emphasis added: T 154/04, supra note 51, 8. The guidelines, amendedin 1985, repeat the argument set out above and institute ‘technical character’ as arequisite to patentability: ‘It will be noted that the exclusions on this list are alleither abstract (for example, discoveries, scientific theories and so on.) ornontechnical (for example, aesthetic creations or presentations of information). Incontrast to this, an “invention” within the meaning of Article 52, paragraph 1,must be of both a concrete and a technical character (see IV, 1.2 (ii)).’ The ‘longstanding legal practice of the states’ (which supposedly reflects such anapproach) and the rules 27 and 29 (of the time) now expressed in rule 43, whichstates, in fine, that claims should be described or drafted in terms of theirtechnical features, have also been invoked as grounding for the technical



user

user - Oct 13, 2013 6:22 PMcan further be substituted with Subsequent, so: Subsequent case law...


The TBoA 3.5.06 recapitulates the current approach to patent eligibil-ity in a few compelling sentences: ‘It is the established case law of theTBoA that claimed subject matter specifying at least one feature notfalling within the ambit of 52(2) EPC is not excluded from patenteligibility by the provisions of article 52(2) and (3) EPC.’53 The mentionof any technical means is sufficient to constitute technical character: ‘Asthe method according to independent claim 1 or 2 is computer-implemented, it uses technical means and by that very token hastechnical character’.54 In the Pitney Bowes case, TBoA 3.5.02, withregard to mail delivery methods; the mere mention of ‘email’ wasdeemed sufficient to constitute technical means and thus qualify as aninvention.55

The ‘any technical character’ approach has come to mean that anyclaim specifying any feature of a technical nature (with technical effector technical features) whatsoever cannot be rejected under Article 52(2),no matter the role it plays, if it is predominant or not.56 This alsosubsumes the use of technical means. This approach applies to all

character test. OJ EPO 1985, 8 March, pp. 173, 177–179, available at: http://archive.epo.org/epo/pubs/oj1985/p157_186.pdf; Case T 22/85 IBM System forAbstracting Documents [1990] OJ EPO, 1–2, 17–18; EPC, supra note 3, rule 43.

53 Case T 1658/06 Digital Rights Management/Microsoft, TboA 3.5.06[14.1.2011], 3, available at: http://www.epo.org/law-practice/case-law-appeals/recent/t061658eu1.html.

54 Case T 1227/05 Circuit Simulation I/Infineon Technologies, TBoA3.2.2[13.12.2006], available at: http://www.epo.org/law-practice/case-law-appeals/recent/t051227ep1.html; see also Case T 1225/10 Nintendo Game Program andGame Apparatus, TBoA 3.2.04 [11.01.2011], available at: http://www.epo.org/law-practice/case-law-appeals/recent/t101225eu1.html.

55 ‘In the present case, the independent method claims of all requests containa step which relates to the transmission of information per e-mail. As this formof communication necessarily requires the use of technical means, such ascomputers, the methods for mail delivery as set out in claim 1 of all requestscomprise at least one step involving technical means for their implementation. Inaccordance with the case law of the boards of appeal, these methods can thus beregarded as “inventions” within the meaning of Article 52(1) EPC …’ Case T912/05 Pitney Bowes, [TboA 3.5.02 [15.04.2008], available at: http://www.epo.org/law-practice/case-law-appeals/recent/t050912eu1.html; the first case wasrejected for lack of technical character (though any hardware test applied). SeeCase T 388/04 Pitney Bowes Inc. [2006] OJ EPO 1/2007.

56 J. Cockbain and S. Sterckx, supra note 46, p. 259. This article very clearlyexplains the evolution of patent eligibility interpretations and in particular thediscrepancies of the Enlarged Board of Appels in Case G 3/08 Programs forComputers [2011] OJ EPO 10; Case T 1227/05, supra note 54; Case T 930/05




excluded categories under Article 52(2).57 As can be seen from the abovecases, it has been adopted and applied across a range of TechnicalBoards.

This has set the threshold of patent eligibility very low, to the pointeven of emptying the concept and article of all its function. Looking atthe most controversial non-invention, the computer program, we remarkthat henceforth it suffices to claim a computer or data carrier for theclaim to pass muster. In practice, this has the effect of rendering Article52(2) totally ineffective, nugatory, lame.58 Patent eligibility and circum-vention of the ‘non-inventions’ categorization under Article 52(2) hasbecome a mere question of drafting, a practice admonished by theEnlarged Board of Appeals.59

4.2. What is Technical?

The ineluctable question that arises in the ‘any technical character’approach is, of course, what is technical? How does one define technical?

On the one hand technical is assimilated to physicality. In Clad MetalsLLC, the TBoA 3.2.04 states: ‘Any apparatus constituting a physicalentity or concrete product has technical character …’60 Technical charac-ter is then distinguished from technical purpose: the finding of technical

Modellieren eines Prozessnetzwerkes/XPERT, TboA 3.5.01 [10.11.2006], avail-able at: http://www.epo.org/law-practice/case-law-appeals/recent/t050930du1.html: ‘It is legitimate to have a mix of technical and ‘non-technical’ featuresappearing in a claim in which the non-technical features may even form adominating part of the claimed subject matter.’ Case T 0154/04 Estimating SalesActivity/Duns Licensing Associates [2006] OJ 2006 (G), (C), available at:http://www.epo.org/law-practice/case-law-appeals/recent/t040154ep1.html; Art-icle 52(2) EPC does not exclude from patentability any subject matter or activityhaving technical character, even if it is related to the items listed in this provisionsince these items are only excluded ‘as such’. EPC, supra note 3, Art. 52(3).

57 J. Cockbain and S. Sterckx, supra note 37, pp. 56, 371.58 J. Cockbain and S. Sterckx provide a very compelling example of a

newly-found fluorescent blue sand in Bavaria, usable in its natural state as analternative to a child night light. It has a technical effect in its natural form andcould be claimed as ‘blue florescent sand’. J. Cockbain and S. Sterckx, supranote 46, p. 261.

59 Case G 2/06 Use of Embryos/ WARF [2009] OJ EPO, 306, 326; J.Cockbain and S. Sterckx, supra note 46, p. 326.

60 The claim pertained to a cooking vessel and a metal ring it incorporated.Accordingly, the skived ring, which is a concrete physical feature of the cooker,and can be described in technical terms is a technical feature. Case T 2258/10




features or technical means ‘is irrespective of whether or not it can beassociated with a technical effect or serves a technical purpose orfunction’.61

On the other hand, technical character can also derive from ‘technicaleffect’ a disembodied concept. In the Helix angle case, the claimsreferred to ‘a method of determining the optimum helix angle of a helicalformation (4) for a conduit …’ which was deemed to lack technicalcharacter in examination.62 The TBoA 3.3.02 reversed the decision. TheBoard explained:

The present invention, as defined in claim 1 of the main request, is clearly ofa technical character … the problem addressed by the present invention is atechnical one. The result (helix angle) is undoubtedly a technical result. Itenables conduits containing such helical formations to be produced in anadvantageous manner. It cannot be said that the invention is merely adiscovery, scientific theory or mathematical method, the invention is embod-ied within a method of determining a particular technical matter. Furthermore,the invention is not a mere presentation of information, since it involvesdetermining a subject of objective technical significance. To put it anotherway, the invention is not defined solely by presenting a number which has notechnical significance; the invention is defined by the fact that by carrying outthe method, the optimum angle for the helical formation in order to minimizeturbulent flow and dead spots within flow through the conduit is deter-mined.’63

This depicts the multiple acceptations of ‘technical’ and the ambiguityaround the term. In this first case, technical was deemed synonymouswith and reduced to ‘physical’ and a difference was made betweentechnical form and technical purpose and/or function.64 At the other endof the spectrum, in the second case, technical has an abstract dimensionassociated with technical purpose or function. The Board uses ‘technical’to answer what is technical in a tautological manner: the invention has

Clad Metals LLC, [2011] TboA 3.2.04, 3, available at: http://www.epo.org/law-practice/case-law-appeals/recent/t102258eu1.html.

61 ‘Moreover, technical character is determined by the presence or use oftechnical means alone, irrespective of purpose, even if that purpose is purelynon-technical.’ T 2258/10 Clad Metals, supra note 60, 3.

62 T 1909/08 Tayside Flow Technologies Limited, TBoA 3.3.02 [22.12.2011],available at: http://www.epo.org/law-practice/case-law-appeals/pdf/t081909eu1.pdf.

63 T 1909/08, supra note 62.64 This already illustrates divergent interpretations and applications of

‘technical’.




technical character, because the matter is technical and the result hastechnical significance. Though, this provides little explanation or eluci-dation as to what ‘technical’ means concretely.65

Interestingly, when drafting and negotiating the EPC, the terms ‘tech-nical’ and ‘technical character’ were purposefully left out and rejected aslegal bases. Even then, technical meant too many things to too manylegal traditions.66

5. INVENTIVE STEP

An invention must fulfill the inventive step criterion under Article 56EPC; it must be non-obvious to a person skilled in the particular art.Inventive step is determined following what is called the problem-solution approach.67 This consists of construing the invention as atechnical solution to a technical problem and determining if this technicalsolution would have been obvious to a person skilled in the art. In thisinvestigation, a decisive element is the determination of the features thatwill be taken into account and their categorization as either part of theproblem or part of the solution. In particular, the issue of whether andhow Article 52(2) exclusions can be taken into account in the assessmentof inventive step.

Due to the TBoA 3.5.01’s interpretation of the history and nature ofArticle 52(2) non-inventions supposedly lack technical character, thusthese non-inventions could not provide any technical contribution nor

65 In essence, the claims were deemed technical due to the nature of thesubject area and the ‘advantages’ the method procured (better, faster, moreefficient conduit flow). Yet, it remains unanswered what makes a subject area andthe ‘advantages’ technical?

66 J. Pila, supra note 27, p. 141. An example is provided by the Scandinaviandelegation: ‘The expression technical is… ambiguous. The word techniquecovers the method of accomplishing all kinds of performances. It may also be ageneral term for all manual skills that are used in such performances, forexample, those of the artisan, masseur, pianist and so on. The use of the word inthe law therefore seems to be of little purpose also with regard to the fact that theword commonly used in a growing number of applications, cf. the technique ofadvertising, or selling and so on. These fields lie completely outside of the terminvention in the patent sense as it has been developed in court and patent officepractice.’ Joint Scandinavian Patent Committees, Draft Patent Law and Extractsfrom Explanatory Notes (Preliminary Report), EXP:Brev,, 1962, (62) 2.

67 Case T 641/00 Two Identities/Comvik [2002] OJ EPO 2003, 352,5, available at: http://www.epo.org/law-practice/case-law-appeals/recent/t000641ep1.html.




contribute to any technical effect.68 Therefore, they were to be left out ofthe assessment of inventive step; they could not be considered as part ofthe solution.69

However, patent eligibility is never so simple and clear. It is not amatter of just ignoring non-technical aspects.70 It became clear thatnon-inventions, could very well lead to a technical effect. The TBoA3.5.01 explains that it must ‘make sure that non-technical aspects do notsupport a finding of inventiveness; on the other hand, actual contributionsto the technical character by any feature of an invention must be takeninto account when assessing inventive step.’71 In recent case law, oneTBoA 3.3.8 has even come out explicitly stating:

It is established case law that non-technical features, such as mental activities,are not to be ignored in assessing inventive step, insofar as they interact withthe technical subject-matter of the claim for solving a technical problem andthereby contribute to the technical character of the claimed subject-matter …Thus, for assessing inventive step of the method of claim 1, the first andfundamental question to be answered is whether, also in the light of thedescription (see pages 1 to 7 of the patent), the mental activities of steps B to

68 J. Cockbain and S. Sterckx, supra note 37, p. 390; T 641/00, supra note67, 4.

69 At best they could be taken into consideration as part of the problem, as anaim to be achieved. T 641/00, supra note 67; Case T 0531/03 Discountcertificates/CATALINA, TBoA 3.4.03 [17.3.2005]; ‘the Technical Board ofAppeal 3.4.03 stated that, in the assessment of inventive step, features relating toa non-invention within the meaning of Art. 52(2) EPC 1973 (“non-technicalfeatures”) could not support the presence of inventive step … an attempt to takeinto account the contribution of non-technical and technical aspects on an equalfooting in the assessment of inventive step would be inconsistent with theConvention, since the presence of inventive step would, in such an approach, beattributed to features which were defined in the Convention as not being aninvention.’ European Patent Office, Case Law of the Boards of Appeal, Patent-ability, Treatment of Technical and Non Technical Features available at: http://www.epo.org/law-practice/legal-texts/html/caselaw/2010/e/clr_i_d_8_1_3.htm; J.Pila, supra note 44, pp. 222 et seq.

70 ‘Non-technical features, to the extent that they do not interact with thetechnical subject matter of the claim for solving a technical problem, in otherwords, non-technical features “as such”, do not provide a technical contributionto the prior art and are thus ignored in assessing novelty and inventive step.’, T154/04, supra note 51, 5(f).

71 Case T 928/03 Video game/KONAMI, TBoA 3.5.01 [2.26.2006].




E interact with the technical activity of step A so as to yield a tangibletechnical result.’72

This is an approach that has also been proposed by Cockbain andSterckx.73 These authors refuse to label the non-inventions as non-technical.74 The excluded subject matter should be taken into accountwhere it interacts with the non-excluded features to become more than acombinations of two independently functioning elements.75

Discerning which aspects are to be taken into account is a challengingundertaking as technical and non-technical features combine, and siftingthrough their respective effects is arduous and intricate.76 Actually, a

72 Case T 0784/06 Genotype determination/BECKMAN, TBoA 3.3.8[23.6.2010], available at: http://www.epo.org/law-practice/case-law-appeals/pdf/t060784eu1.pdf.

73 J. Cockbain and S. Sterckx, supra note 37, p. 390.74 Ibid.75 ‘We would argue that the correct interpretation of the law is that a mixed

media claim is not excluded by Article 52(2) and (3) EPC if the non-excludedfeature causes the claimed subject matter to be other than the excluded feature assuch, but that if the two features independently are not inventions (for example,if one feature lacks novelty and the other feature is not an invention for thepurposes of Article 52(1) EPC by virtue of Article 52(2) and (3) EPC), then thecombination must lack inventive step if in the combination each feature functionsindependently, in other words, achieves no more than it would in any othercombination.’ J. Cockbain and S. Sterckx, supra note 37, p. 390 (emphasisadded).

76 The Electronic Multi-player Poker case is illustrative of the difficulty facedin the assessment of technical or non-technical features and their effects. Withregard to a method claim to operating an electronic video poker machine, thenovel feature was the duplication or maintenance of a drawn card on the screenover many hands. This duplication step is of a technical nature however it alsoembodies a game rule. Consequently the Board must ‘differentiate between theunderlying purely abstract and thus non-technical notion of sharing as a gamerule, and its technical expression by duplication as in step c). This enables theBoard to identify any effects inherent in sharing per se, and those further effectswhich result purely from its technical implementation by duplication … only thelatter are of importance in the assessment of inventive step’. When consideringonly duplication per se, that is, sharing as a game rule, the Board found that thetechnical effect of time efficiency allowing for a higher volume of play per time,was inherent to sharing as a game rule independent of its implementation andconsequently was to be ignored in the assessment of inventive step. Whenaddressing the technical effects of duplication through technical means – that isto say appearance on the screen – the only particular effect the Board could findwas that of increased readability. The Board found this to be an entirely obviousmeasure and thus not up to inventive step part. The ‘ingenuity’ resides in the




certain amount of uncertainty persists. Different cases adopt differentstandards.77 For that matter, there have been a few requests by patenteesto refer questions to the Enlarged Board of Appeal. They have beenturned down, however.78 Developments in this field merit further study,for now it is enough to highlight the uncertainty and ambiguity thatpersists. We see further issues of incoherence that the approach incites inthe next section.

5.1. Further Technical Effect and Further Incoherence

The ‘further technical effect’ doctrine evolved from the case law relatingto computer programs. This approach was formulated in the IBM case ofT-1197/97: ‘A computer program product is not excluded from patent-ability under Article 52(2) and (3) EPC if, when it is run on a computer,it produces a further technical effect which goes beyond the “normal”physical interactions between program (software) and computer (hard-ware).’ This approach has been subsumed under (if not completelyreplaced by) the ‘any hardware’ or ‘any technical character’ doctrine forpatent eligibility. It has, however, recently reappeared elsewhere in the

modification of the game rules which is a non technical feature and thereforecannot contribute to the assessment of inventive step. Case T 336/07 IGT/Electronic Multi-Player Poker, TBoA 3.2.04 [2006] EPO 18 2008, 3.4, 4.3–4.3.5.

77 T 619/02, supra note 50, 4.2; T 336/07, supra note 76, 2.2.78 Case T 224/08 Visaprint Technologies Limited, TBoA 3.5.04 [24.1.2012].

The questions referred were: ‘1. Can features of a claim for a European PatentApplication, which, when taken in isolation belong to the matters excluded frompatentability under article 52(2) EPC, be ignored during consideration ofobviousness under article 56 EPC? 2. If the answer is in the Affirmative, arefeatures which contribute to the technical character of a claimed invention to beconsidered in the consideration of obviousness under 56 EPC even if suchfeatures, when taken in isolation, belong to the matters excluded from patentabil-ity by article 52(2) EPC? 3. If the Answer is in the affirmative, what constitutescontribution of a feature in a claim, which when taken in isolation, belong tomatters excluded from patentability by article 52(2)EPC, to the technicalcharacter of a claimed invention and what level of contribution to the technicalcharacter of the claimed invention is required for such feature to be considered inthe consideration of obviousness under article 56 EPC?’; Case T 1782/09 GameApparatus and Control Method Therefor, TBoA 3.2.04 [5.5.2011], available at:http://www.epo.org/law-practice/case-law-appeals/recent/t091782eu1.html; CaseT 1543/06 Game Machine/GAMEACCOUNT, TBoA 3.2.04 [29.6.2007], avail-able at: http://www.epo.org/law-practice/case-law-appeals/recent/t061543eu1.html; Case T 688/05 Ticket Auctioning System/TICKETMASTER, TBoA 3.5.01[19.9.2007].




assessment of inventive step. In a number of cases pertaining to multi-media games, such as video or computer games, the question of technicalimplementation of game rules has led to some interesting revelations,which we will recapitulate here. These clearly demonstrate the incoher-ence of the ‘any technical character’/ ‘any hardware doctrine’ doctrine.

In the IGT Poker Game case, the Board 3.2.04 took as its startingplace, the findings from the Comvik case, whereby inventive step is onlyto be assessed on the basis of features contributing to technical charac-ter.79 The Board 3.2.04 reformulated this, as an invention, ‘cannot rely onexcluded subject matter alone, even if novel and non-obvious (in thecolloquial sense of the word), for it to be considered to meet the require-ment of inventive step’.80

The Board 3.2.04 recognized the superficiality of the ‘any hardware’test and sought to prevent its circumvention. The Board states that itcould not have been the legislators’ intent to exclude 52(2) subject matter,while on the other hand, awarding protection to its technical implemen-tation ‘where the only identifiable contribution of the claimed technicalimplementation to the state of the art is the excluded subject-matteritself.’81 The Board concluded it must look at the particular manner oftechnical implementation of the excluded subject matter in the inven-tion.82 It then equated ‘manner of implementation’ with further technicaleffect; assessing that ‘the particular manner of implementation … mustfocus on any further technical advantages or effects associated with thespecific features of implementation over and above the effects andadvantages inherent in the excluded subject-matter.’83 The exclusion ofthose direct and natural, inherent technical effects should (in theory)avoid formalizing and circumventing Art. 52(2).84

79 T 336/07, supra note 76, 2.2; T 1543/06, supra note 78, 2.7–2.8.80 T 336/07, supra note 76, 2.3.81 ‘It is noted that here the term ‘contribution’ encompasses both means (in

other words, tangible features of the implementation) and effects resulting fromthe implementation’, T 336/07, supra note 76, 2.2; T 1543/06, supra note 78,2.7–2.9.

82 T 336/07, supra note 76, 2.2; T 1543/06, supra note 78, 2.7–2.9.83 T 336/07, supra note 76, 2.3–2.4; T 1543/06, supra note 78, 2.7–2.9.84 The Board compares this approach to that of another case: ‘This is

analogous to the approach of T 928/03, which considers the actual contributionof each feature to the technical character by, for each feature, stripping away itsnon-technical content leaving its technical residue so to speak. Thus, see reasons3.2, “the extent to which the characterizing features contribute to the technicalcharacter … in relation to the effects achieved by those features” must bedetermined.’ T 336/07, supra note 76, 2.2–2.6.




The Board recognized the ‘further technical effect’ doctrine fromprevious case law, T-1173/97 and T-935/97, and extended it to ‘othercategories of excluded subject-matter which may inherently possess some“technical” effect. In fact, inherent and arguably technical effects may beeasily identified for practically all excluded subject-matter …’85 Onecannot help but notice a contradiction: the initial basis for the technicalcharacter doctrine, leading up to this point, is premised on the fact thatArticle 52(2) exclusions share the common element of lacking technicalcharacter. However, these last statements are contradictory. This saps the‘any hardware’ and ‘any technical character’ theories of their initial legalmoorings.

The problems faced by assessment of inventive step illustrate that thesenon-inventions, do in fact have technical character and thus that the‘technical criteria’ is not an accurate or an effective fault line.

6. CONCLUSION

Would it change anything if Article 52(2), as it is now interpreted, wasdone away with altogether? Looking at the context where Art. 52(2) isapplied specifying technical means or any technical aspect in this contextis child’s play, a mere flick of the pen. The mention of a computer,processor, media carrier or even email will do the trick.

In effect, ‘no mixed media claims are excluded …’86 This places theemphasis on form and not substance, and in practice renders Article 52(2)dead letter law. This implies that it cannot perform its initial functions ofbalancing access and incentive and delimiting the public domain. Thus,in the long term, the underlying rationale of increased innovation isimperiled. Further, the once-flexible notion of invention now functions asa bright line rule. This demonstrates a lack of flexibility to adapt with thetimes that is essential to a notion such as that of ‘invention’.

The case law has taken the notion of ‘technical character’ as delin-eating the public domain and as the normative fault line in patenteligibility. By that rationale, patenting anything with ‘technical’ characteris efficient and will maximize general welfare, even though ‘technical’remains an ambiguous concept.

The repercussions on inventive step and the uncertainty on how to takeinto account Article 52(2) exclusions illustrates the incoherence and weak

85 T 336/07, supra note 76, 2.4–2.5; see also T 1543/06, supra note 78; CaseT 1225/10 Nintendo Co., Ltd., TBoA 3.2.04 [11.01.2006].

86 J. Cockbain and S. Sterckx, supra note 46, p. 384.




foundations of the ‘any technical character’ doctrine. Initially, the ‘anytechnical character’ approach was based on the premise that all exclu-sions under Article 52(2) are ‘non-technical’.87 The Article 52(2) exclu-sions can indeed be technical in nature and contribute to technical effect,the Boards of Appeal have also come to recognize this fact.88

It can be seen that the practice of determining patent eligibility is farfrom ideal, and has become far removed from its objectives. We canquestion how it has come to this or what can be done.

One factor that surfaces is the role and space that is to be given toscientific, technological fact in patentability. Patentability revolvesaround the interpretation of claims written by patent applicants, and theyare assessed purely on scientific factual grounds. Policy orientation inpatent law is translated through this prism, though it appears the policydimension is lost. More elements of a different nature are needed. Thesewould include social conceptions of the invention or technology, otherrelevant incentives, and market facts.89 In particular we should look topatent eligibility’s role in the wider regulatory framework. Patent law isfundamentally a type of market regulation90 and yet this dimension isobscured in patent eligibility matters. It seems to be time to move awayfrom a purely technical assessment to take into account additionalelements pertaining to the ‘market’.91

A second line of thought is to take a deeper look at the role and designof the European Patent Organisation (EPO), in particular, the TechnicalBoards of Appeal. These are powerful actors in the European patentsystem, responsible for defining patentable subject matter standards,which are to be mirrored across Europe in National Patent Offices and

87 Justine Pila has very persuasively argued against this theory. J. Pila, supranote 35, pp. 910–2; J. Pila, Dispute over the Meaning of ‘Invention’ in Article52(2) EPC – The Patentability of computer-implemented Inventions in Europe,Int’l. Rev. Industrial Prop. & Copyright, 2005, Vol. 36, pp. 186 et seq., availableat: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=593881.

88 See section 5, T 336/07, supra note 76, 2.4–2.5; T 1543/06, supra note 78;T 1225/10, supra note 54.

89 N. Lee, supra note 32, p. 18.90 For the patent as a type of market regulation see S. Ghosh, Patent Law and

the Assurance Game: Refitting Intellectual Property in the Box of Regulation,Canadian J. of L. and Jurisprudence, 2005, p. 307; S. Ghosh, Carte Blanche,Quanta and Competition Policy, J. of Corporation L., Innovation and Com-petition Policy, 2009, p. 1209; H. Ullrich, Intellectual Property: Exclusive rightsfor a purpose – The case of technology protection by patents and copyright,available at: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2179511.

91 This is the object of subsequent research.




even by judicial authorities.92 One may question if this is the properauthority for such an institution, whose institutional nature remainsvague.

The Technical Boards of Appeal are not Courts. They are quasi-administrative, quasi-judicial bodies.93 However, it is their case law thatis reintegrated into administrative prosecution.94 These Boards have cometo concentrate too much power between their hands and the case ofpatent eligibility is illustrative of a type of ‘legislating from the bench’.Without a countervailing authority; the influence of national courts, inthis respect, is paltry and in the absence of an active legislator, there is aproblem of checks and balances.95 However, with the advent of theEuropean Patent Package and the proposed Unitary Patent Court, changeis on the horizon.96

92 See N. Lee, supra note 32, p. 7.93 P. Leith, Judicial or Administrative Roles: The Patent Appellate System in

the European Context, Intell. Prop. Quarterly, 2001, p. 50; S. Thambisetty, supranote 37.

94 I. Schneider, Governing the Patent System in Europe: The EPO’s Supra-national Autonomy and its Need for a Regulatory Perspective, Science andPolitical Science, 2009, Vol. 36, No. 8, pp. 619 et seq.; S. Thambisetty, supranote 37.

95 There is problem of separation of powers within the EPO (Schneider) andwhen looking at the EPO as an administrative body within a larger Europeanframework. Though national courts do assess patent eligibility matters, asmentioned, their case law is not reintegrated into EPO practice. Only a limitednumber of patents are effectively litigated at the national level while many moreare granted and exist under EPO standards. As discussed, the TBoAs benefitfrom a certain deference due to their ‘European’ and specialized character, whichinfluences national courts. The fact that judicial approaches differ from countryto country further plays to the TBoAs’ advantage. Disparity only bolsters theirposition as a symbol of a harmonized, European interpretation (and thus as theauthority to follow). Furthermore, the Duns licensing case T 154/04 is anexample of the lack of influence of national courts on patent eligibility standards.The Aerotel ltd v. Teleco ltd (and Macrossan application) challenge to theTBoA’s interpretation was quashed, not embraced.

96 Though, whether this is change for the better remains to be seen. ThePackage is undermined by its complexity and the legal uncertainty that surroundsit. Council Regulation (EU) No. 1260/2012 of 17 December 2012 implementingenhanced cooperation in the area of the creation of unitary patent protection withregard to the applicable translation arrangements OJ L 361, 31.12.2012,pp. 89–92 Regulation (EU) No 1257/2012 of the European Parliament and of theCouncil of 17 December 2012 implementing enhanced cooperation in the area ofthe creation of unitary patent protection OJ L 361, 31.12.2012, pp. 1–8;




Greater study is needed into these areas and the systemic and institu-tional influences over patent eligibility. For now what is certain is that theapproach to patent eligibility is having a damaging effect on patentabilityas well as the legitimacy and efficiency of the patent system in general.

Agreement on the Unified Patent Court, Council of the European Union,Brussels, January 11, 2013, 16351/12.

