AIPLA-CNCPI joint meeting - March 3, Software based inventions French and European case law ; enforcement

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1 AIPLA-CNCPI joint meeting - March 3, 2009 Software based inventions French and European case law ; enforcement Gabriel de KERNIER Conseil en propriété industrielle Cabinet Netter - Paris G. de Kernier, Paris 2009 National case law ; enforcement 1

2 AIPLA-CNCPI joint meeting - March 3, 2009 National case law G. de Kernier, Paris 2009 National case law ; enforcement 2

3 French Case Law (infringement) Infringement suits INFOMIL / ATOS et al, T.G.I Paris, November 20, 2007, patent invalid ; in appeal SYRDREC / Groupement Carte Bancaire et al, T.G.I Toulouse, August 1, 2005, patent invalid ; in appeal G. de Kernier, Paris 2009 National case law ; enforcement 3

4 INFOMIL v/ ATOS (infringement) ATOS (FR) and INFOMIL (FR) are two companies selling software for «couponing» in supermarkets => clearly business related INFOMIL sues on FR corresponding EP designating France designation of France withdrawn to avoid waiting for the EPO decision The defendants file opposition in EP G. de Kernier, Paris 2009 National case law ; enforcement 4

5 INFOMIL v/ ATOS (infringement) The opposition division revokes the EP patent Lack of inventive activity The T.G.I. of Paris invalidates FR Lack of inventive activity, like the EPO Both EPO and FR decisions are appealed EPO Board of Appeal revokes the EP patent Lack of inventive activity, like the EPO Decision on the same day than G03/08 referral Still pending before the Paris Court of Appeal G. de Kernier, Paris 2009 National case law ; enforcement 5

6 FR inter partes Conclusions French courts are reluctant to validate a patent revoked by EPO. FR courts are reluctant to invalidate an EP patent, unless a strong case is shown. Exceptions for undue extension (art ) EPC) e.g. Banque Centrale Européenne v/ Document Security Systems Filing a nullity suit in France is generally a bad idea. G. de Kernier, Paris 2009 National case law ; enforcement 6

7 EPO Practice Today examination: A/ No objection of non patentability under CBE 52.2, provided that the claim contains a technical element, either publicly known or not B/ determining the closest prior art document, and B1) assessing novelty both on technical and non technical features B2) determining the objective technical problem, without taking into consideration the non technical features, and B3) examining the inventive step, without taking into consideration the non technical features. G. de Kernier, Paris 2009 National case law ; enforcement 7

8 The Problem (G 03/08) EPO EPO Case law has usually satisfying outcomes But the reasonings of the various Boards of Appeal are diverging Referral to Enlarged Board of Appeal not by applicant G. de Kernier, Paris 2009 National case law ; enforcement 8

9 G 03/08 - Background (I) T 258/03 (Auction method/hitachi) No exclusion under 52.2: it could not be necessary for the hardware components of the claim to be new for the method to possess technical character. Revokation for lack of inventive step(reason 5.8) : "Still, the Board is convinced [why?] that this way of ranking the bids is a routine programming measure well within the reach of the person skilled in the art of data processing". G. de Kernier, Paris 2009 National case law ; enforcement 9

10 G 03/08 - Background (II) T 1177/97 SYSTRAN It is rather a non-technical constraint determined by the linguistic expert and given to the skilled person as part of the framework of his task, namely implementing the known low frequency dictionary look-up process by applying the "longest match principle". These technical differences, nevertheless, are not inventive since they originate from a non-technical constraint to the technical problem, the implementation of which is obvious. G. de Kernier, Paris 2009 National case law ; enforcement 10

11 EPO Context The choice of a single examination method The problem/solution approach An evolution with inertia No Supreme Court National jurisdictions come after G. de Kernier, Paris 2009 National case law ; enforcement 11

12 G 03/08 - Referral Can a computer program only be excluded as a computer program as such if it is explicitely claimed as a computer program? Can a claim avoid exclusion under 52(2)c) and 3) merely by explicitely mentioning the use of a computer or a data storage? If no, is a further technical effect necessary to avoid exclusion? Must a claimed feature cause a technical effect on a physical entity in order to contribute to the technical character? G. de Kernier, Paris 2009 National case law ; enforcement 12

13 EPO Conclusions (EPO and software) Technical members of the Boards of Appeal Members of the Enlarged Board of Appeal partially choosen among those of the Boards of Appeal Different approaches Art is rarely used Discrepancy / national jurisdictions British, French (ex parte), German... G. de Kernier, Paris 2009 National case law ; enforcement 13

14 AIPLA-CNCPI joint meeting - March 3, 2009 Enforcement G. de Kernier, Paris 2009 National case law ; enforcement 14

15 AIPLA-CNCPI joint meeting - March 3, 2009 Enforcement Claim = hardware + software Most often, the hardware and software are supplied to the final user by different persons Only the final user is a direct infringer Need for numerous inefficient infringement suits the suppliers are liable only for indirect infringement G. de Kernier, Paris 2009 National case law ; enforcement 15

16 Who is direct infringer? France Method claim The end user infringes, provided that Not acting privately Not acting for research purposes Even if the end user has no idea of what happens in the computer + sofware being used G. de Kernier, Paris 2009 National case law ; enforcement 16

17 Who is direct infringer? France Apparatus claim The end user infringes, provided that Not acting privately Not acting for research purposes The patent has been notified to the end user G. de Kernier, Paris 2009 National case law ; enforcement 17

18 SYRDREC v/ Carte Bancaire et al. Main claim (abridged) Monetary cards, cashing points identifier and balance data for both the cards and cashing points a computer executing an algorithm for checking card identifier and verifying that remaining credit exceeds transaction amount Claim = hardware + software G. de Kernier, Paris 2009 National case law ; enforcement 18

19 Who infringes what? G. de Kernier, Paris 2009 National case law ; enforcement 19

20 AIPLA-CNCPI joint meeting - March 3, 2009 The desperate enforcement : «delivery of means» (FR-CPI L.613-4) It shall also be prohibited, save consent by the owner of the patent, to supply or offer to supply, on French territory, to a person other than a person entitled to work the patented invention, the means of implementing, on that territory, the invention with respect to an essential element thereof where the third party knows, or it is obvious from the circumstances, that such means are suited and intended for putting the invention into effect. A serious additional burden of evidence! G. de Kernier, Paris 2009 National case law ; enforcement 20

21 What do attorneys fight for? Efficiently enforceable claims : Preferably product claims Software cases : computer program claims G. de Kernier, Paris 2009 National case law ; enforcement 21

22 AIPLA-CNCPI joint meeting - March 3, 2009 THANK YOU FOR YOUR ATTENTION Gabriel de KERNIER CNCPI Cabinet NETTER France contact@cabinetnetter.com G. de Kernier, Paris 2009 National case law ; enforcement 22