Case No. B-1711/2023 (FAC) | Hearing of 26 March 2024 | ‘Technicity’
Swiss patent applications are not currently examined on the merits. Thus, appeals against the refusal of a Swiss patent application are rare. And even rarer are appeals of potentially wider interest.
This one is different.
The patent application at stake
The IPI has refused the Swiss patent application no. CH 070623/2021.
The announcement of the hearing holds that the patent application has been refused because the invention described therein and defined in the patent claims did not constitute an invention within the meaning of the PatA, i.e. it did not have a technical character. It merely defines an insurance calculation and thus a business method.
Please find the IPI file wrapper below.
The IPI’s decision to refuse the application begins on p. 315, the (amended) claims that were finally at stake in IPI proceedings begin on p. 210. The various amendments made to the claims are explained in applicant’s response to the first office action (p. 216 et seqq.).
According to the announcement, Swiss Re requests on appeal that the IPI’s decision be set aside and the patent granted, or alternatively that the case be referred back to the lower instance for further prosecution. Swiss Re essentially argues that the IPI went beyond the requirements of the legislator and the case law with its examination of the technical character by covertly examining inventive step.
Le’s put all this into perspective first.
BackgrounD on Technicity: A clash of approaches
The IPI examines the implicitly required ‘technicity’ of an invention by way of a ‘Ganzheitsbetrachtung’, i.e. a holistic approach:
But what does the IPI’s ‘holistic’ approach actually imply? Here is what the IPI Guidelines say:
On the other hand, the EPO only requires at least one technical feature for a claim to pass the technicity hurdle (which is often referred to as the ‘any hardware’ approach); see e.g. T 1173/97 (IBM) and hns 3 and 4 of T 931/95 (‘pension benefits’) of 8 Sept 2000 (emphasis added) :
3. An apparatus constituting a physical entity or concrete product, suitable for performing or supporting an economic activity, is an invention within the meaning of Article 52(1) EPC.
4. There is no basis in the EPC for distinguishing between “new features” of an invention and features of that invention which are known from the prior art when examining whether the invention concerned may be considered to be an invention within the meaning of Article 52(1) EPC. Thus there is no basis in the EPC for applying this so-called contribution approach for this purpose.
The IPI’s ‘Ganzheitsbetrachtung’ of a claim in the assessment of technicity strongly reminds me of the ‘contribution approach’ that had been applied at the EPO a looong time ago. Back in the days, at least some prior art had to be taken into account when determining whether a certain subject-matter was excluded for lack of technicity. But this is a thing of the past. The current EPO Guidelines hold:
The question of whether there is an invention within the meaning of Art. 52(1) is separate and distinct from the questions of whether it is susceptible of industrial application, is new and involves an inventive step.
This is why the ‘contribution approach’ always felt strange (to me, at least): It confused technicity with questions of novelty and inventive step when looking for the actual (technical) contribution to the art. This has been overcome at the EPO decades ago. The Enlarged Board of Appeal of the EPO could not be any clearer in their summary of case-law; see e.g. G 1/19:
Accordingly, the mere fact that a claim recites a computer makes the claimed subject-matter as a whole technical. Simply because a computer, undoubtedly, is a technical thing:
And the FPC?
The FPC is committed to apply the EPO’s COMVIK approach, and the Supreme Court endorsed it, too. (COMVIK goes hand in hand with the ‘any hardware’ approach. I cannot readily see how one could have the latter without the other.) The FPC had held that COMVIK is appropriate (‘angezeigt’) since the FPC may also examine obviousness and because it helps to avoid an undesirable split of the legal situation. Notably, the FPC decided to do so for Swiss patents, too:
In my view, however, this is not (only) appropriate because the FPC may also examine obviousness. Where would we be without harmonization on the very basic question of ‘what is an invention?’ — i.e., the metes and bounds of the implicit requirement of technicity? It may easily get messy if different approaches were used for assessment of patent applications in/for one and the same country on such a very basic issue. See e.g. the EWHC judgment ‘CFHP’ ([2005] EWHC 1589 (Pat)), neatly summarizing the differences between the approaches of the UK IPO and the EPO (¶¶43-53):
In short, the difference between the two approaches is that the EPO filters out excluded subject-matter at the stage of considering obviousness – at the last stage – while the UK Patent Office does so at the first stage (when considering excluded subject-matter). Or to put it a little more precisely, what the UK Patent Office does is to consider the exclusion under the description ‘novelty’, but the EPO does so under the description ‘inventive step’.
Note that both the EPO and the UKIPO do examination on the merits (unlike the IPI). Even in such cases, one has to be wary of the fact that different approaches may result in different outcomes (¶48 et seqq.):
So why is it that the difference may matter all the same? It is because, as Renan and Lord Hoffmann said in other contexts, la verité est dans une nuance. Even if the two approaches are the same functionally they may, conceivably, produce different results when it comes to matters of evaluation. That is because cases have to be decided by human beings; but the human mind is affected by the context in which a question is posed. And technological invention cannot reliably be divorced from business context.
As an example, the EWHC referred to the pretty famous invention of the Thermos® flask — which was essentially a prior art Dewar vessel that had been mechanically stabilized — and held (¶52):
It is true that the Thermos flask was not a new business method: it was a new artefact. But, formally speaking, so is a computer when programmed to carry out a new business method.
Interesting, isn‘t it? I will come back to this.
Now, how did the hearing go?
It was an interesting hearing. From the various EPO decisions that have been cited, I find T 154/04 particularly interesting:
Putting it differently: Rejecting a patent application for lack of technicity even though a computer is featured in the claim (e.g. because it is deemed straight-forward to implement a business method on a standard computer) is a no-go. At the EPO, at least. Without reference to the prior art, one just cannot know that a computer is a standard thing. One can only know that when assessing novelty.
At one point, Swiss Re’s representative held with a smirk:
Der Name der Anmelderin ist ja ‘Versicherung’. Das ist schon falsch!
That was countered by the IPI with reference to two other Swiss patent applications of Swiss Re that were granted, i.e. CH 712 882 B1 and CH 714 036 B1. The presiding jugde spontaneously inquired what the difference between e.g. CH 882 and the refused patent application was. The IPI representative answered that there were indeed certain specific measurements featured in the claims; not so in the refused application.
The IPI referred to G 3/08 in support of their hesitiation to adopt the ‘any hardware’ approach:
In the IPI’s view, the EPO is in a position to follow this ‘distasteful’ approach merely because they can sort out the bad stuff later, in the assessment of inventive step. Which is what the IPI can’t do.
My two cents
I do see the IPI’s point. I understand that they are hesitant to allow claims that are, at the face of it, directed to a business method merely because a standard computer is featured in the claim.
But from a practitioner’s point of view, it feels wrong to have different standards in/for patents in Switzerland on the very basic question of what is an invention (i.e., what does it take for a claimed subject-matter to be considered technical?). I feel that the answer to this question must not depend on whether or not one undertakes examination on the merits (like the EPO) or not (like the IPI).
By the way, I strongly disagree with the IPI‘s first and foremost definition of an invention in the decision to refuse the application:
The IPI held (in bold):
[Eine Erfindung ist] eine neue, nicht naheliegende Lehre zum technischen Handeln.
This definition is frequently seen (even in the latest dispatch of the Federal Council in the current revision cycle of the PatA; see here). It goes back to Peter HEINRICH†; he was a brilliant scholar whom I admire. Still, I believe he got this wrong. This definition confuses novelty and non-obviousness with technicity. Notably, the Supreme Court judgment cited by the IPI does not put it this way; see 4A_609/2019, r. 8.2. The Supreme Court merely held:
Eine Erfindung ist eine Lehre zum planmässigen Handeln unter Einsatz beherrschbarer Naturkräfte zur unmittelbaren Erreichung eines kausal übersehbaren Erfolgs.
I agree! Putting it simple, making an invention is nothing more than coming up with something that reproducibly works. Period. It is widely agreed that a certain technicity is implied. But that’s it. An engineer who nowadays comes up with a wheel has made an invention. Her invention is not new. So be it. But it is an invention that she made. Late, maybe. But she did it. In my reading, Art. 1 paras. 1 and 2 PatA leave no doubt about this concept. Inventions that are not new or that are obvious are still inventions. Undoubtedly, the IPI would grant a patent for a wheel that is known since the 4th millenium BC. It has to.
Now, what about someone who comes up with a hugely complex (business) method of supply chain management which, in passing, features that (unspecified) goods are finally transported on (unspecified) wheels. Swiping aside the wheel (trivial!) and the goods (arbitrary!) and holding that the whole rest of the claim is just a business method: Can that be right? Not with the ‘any hardware’ approach. But, quite likely, with the ‘Ganzheitsbetrachtung’:
Implementing a business method with a wheel or on a computer does not make any difference to me in terms of ‘interaction with forces of nature’. See the Thermos example above.
I am eagerly awaiting the judgment!
✍ MW
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BIBLIOGRAPHY
Case No. B-1711/2023 (FAC) | Hearing of 26 March 2024 | ‘Technicity’
Swiss Reinsurance Company Ltd.
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Eidg. Institut für Geistiges Eigentum
Panel of Judges:
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- Dr. David ASCHMANN
- Dr. Vera Maria MARANTELLI-SONANINI
- Daniel WILLISEGGER
- Court Clerk:
- Gizem YILDIZ
Representative(s) of Swiss Re:
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- Dr. Fabian LEIMGRUBER (Thomann Fischer)
- Claudia ERBSMEHL (Thomann Fischer)
Representative(s) of IPI:
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- Peter BIGLER (in-house)
- Dr. Pascal WEIBEL (in-house)
- Linda HOFER (in-house)
ANNOUNCEMENT
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BASIC PCT APPLICATION
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