Following Peter's post on the High Court decision in IGT v Comptroller [2007] EWHC 1341 (Pat), a November 2006 decision of the European Patent Office (“EPO”) Board of Appeal (T 0152/04) has just come to light which holds, in no uncertain terms, that the Court of Appeal decision in Aerotel Ltd. v Telco Holdings Ltd & Ors Rev 1 [2006] EWCA Civ 1371 is bad law.
The Board of Appeal held that the technical effect approach adopted by Aerotel was “irreconcilable” with the European Patent Convention (“EPC”). The Board of Appeal held that the correct approach was to treat the claimed invention as a whole when assessing patentability, as the combination could be technical even if features taken individually had to be considered non-technical. A patentable invention could have a mix of technical and non-technical features appearing in a claim, in which the non-technical features may even form a dominating part. However, non-technical features, to the extent that they do not interact with the technical subject matter of the claim, are ignored in assessing novelty and obviousness.
Essentially, where the Board of Appeal differs from the Court of Appeal is that, in determining whether a claimed invention is in fact an invention, one applies a two stage test: (1) identify the invention claimed; and (2) check whether the claimed invention produces a technical effect.
One does not (as opposed to the Aerotel approach), also identify the contribution made and then determine whether the contribution falls solely within any of the matters excluded from subject. However, applying the Board of Appeal approach, novelty and obviousness can only be determined only with regard to the technical features of an invention. Therefore if the contribution made by the invention lies only in its non-technical features, it follows that the technical features would not be novel or would be obvious, and the invention would not be patentable.
It seems to me that the two different approaches will generally reach the same destination by a different route, the difference being that the Aerotel approach will cause the patent application to fall down at the “invention” hurdle whereas under the Board of Appeal approach, it will clear this hurdle only then to fall down at the next hurdle.
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