France’s Supreme Court puts patentability of computer-implemented inventions under the spotlight

Background

The EPO has consistently accepted that any claimed method implying the use of technical means, whether it is comprised in the state of the art or not (a computer, a screen, or even a pen and paper), will qualify the claimed subject-matter as an ”invention” under Article 52(1) of the European Patent Convention (EPC). This means it will pass the first hurdle for patentability: eligibility. This has been the position since the notorious Hitachi decision[1].

The approach followed by the French PTO (INPI) has been significantly different over the last decades. In practice, the eligibility hurdle has been more difficult to overcome in France than with the EPO.

For many years, and still now for French patent applications filed before 22 May 2020[2], INPI was not entitled to reject applications for lack of inventive step. Therefore, if a claimed invention was considered patent-eligible, INPI could only reject the patent application for that invention if it blatantly lacked novelty.

This rule had a consequence on how INPI treated computer-implemented inventions (CIIs). If the INPI had applied EPO’s “Hitachi” approach, then practically all CIIs would lead to a granted patent, without any inventive step filter.

Consequently, to filter some of those applications, INPI assessed whether the “core” of the invention solved a technical problem.

Two Supreme Court decisions of 11 January 2023 may imply that this approach should now be abandoned in France.

• The first of these decisions relates to a patent application filed by Bull on a communication terminal.
• The second decision relates to a patent application filed by Thales on a method for displaying flight information on a cockpit screen.

(1) The Bull case

Patent application

In 2016, Bull applied for a French patent covering a communication terminal (e.g. used for military units) comprising means to display simultaneously a given property (e.g. user connectivity) for every user of a group of individual users. This was instead of having to:

• Display sequentially said property value of each user (one by one);
• Memorize them all; and
• Calculate the aggregated value of said property for the given group of users.

Based on the French equivalent of Article 52(2) EPC, INPI rejected the application. It considered the claimed subject-matter as a “method for performing mental acts” itself. Therefore it was non-patentable, because it would merely claim generic computer means to perform a calculation.

Paris Court of Appeal decision

In a noteworthy decision, the Paris Court of Appeal overturned the French PTO decision[3]. It highlighted that the invention relates to a communication terminal comprising technical means (a microprocessor, memory, … etc)[4]. Consequently it cannot be a method for performing mental acts itself:

“The subject matter of claim 1 relating to a terminal for establishing communications comprising different technical means interacting with each other does not relate to a method in the field of intellectual activities as such. It is therefore not excluded from patentability as such.”

INPI filed an appeal against that decision before the Supreme Court.

Supreme Court decision

Remarkably, in its decision of 11 January 20235[5], the Supreme Court not only rejected the appeal but did not even provide grounds. It considered the appeal as being “obviously unlikely to succeed”.

Whether a particular feature should be considered technical or not technical is not subject to the control of the Supreme Court because it is a matter of fact. However, the legal approach chosen by the Court of Appeal was not invalidated. This may be seen as implicitly endorsing the “Pension Benefit” approach for devices[6]. This means considering the presence of technical means in a device claim as a sufficient condition for eligibility.

But, as explained later, this interpretation still needs to be confirmed.

(2) The Thales case

Patent application

Thales applied for a French patent covering a method for displaying waypoints of a flight plan on a cockpit screen, characterised in that:

• Waypoints are displayed in a window comprising a scaled timeline [feature A].
• The timeline being longer than the window height, so that the window only displays a part of the timeline, said part being decided by the user (e.g. pilot) [feature B].

The French PTO rejected the application, considering the claimed subject-matter as a combination of presentation of information and mathematical method.

Paris Court of Appeal decision

Following an appeal filed by Thales, the Paris Court of Appeal overturned the French PTO rejection. Feature A was considered as non-technical but the court ruled that feature B is a technical step (distinct from the information itself). Despite feature A being non-technical, Feature B alone was sufficient to qualify the claimed subject-matter as patent-eligible.

Supreme Court decision

Following an appeal filed by The French PTO, the Supreme court cancelled the Court of Appeal’s decision on 11 January 2023[7]. It considered that the Court of Appeal had neither established the existence of a “technical contribution” made by the patent application, nor explained in what way the claimed means had a technical character.

In other words, it is not sufficient to state that a certain feature is technical. The Court of Appeal should have explained the reasons for which Feature B is more than just related to the content of the presented information (i.e. more than just an abstract feature).

Consequently, the Supreme Court pointed out the lack of grounds in the Court of Appeal’s decision, but did not question the fact that the technical character of a single feature in the claim can be sufficient to conclude that the claimed subject-matter is eligible. This may be seen as implicitly endorsing the “Hitachi” approach for methods[8], i.e. considering the presence of technical means in a method claim as a sufficient condition for eligibility.

Questions remaining

The tone of the Court of Appeal and the Supreme Court’s judgments in both cases are a sign of cultural change because solving of a technical problem was not the key aspect leading to the rulings. Whether this cultural change can be understood as an alignment of the trial judges with the EPO’s approach remains to be seen.

Indeed, some aspects of the Bull Court of Appeal decision still pose some questions:

• To dispute the eligibility of Bull’s claim, INPI emphasised before the Court of Appeal that the communication terminal only used generic computation means to perform intellectual operations and therefore did not solve any technical problem.
• If the Court of Appeal had applied the Pension Benefit approach for devices, it could have merely responded that the question of eligibility is not subject to solving a technical problem (using new technical means), but to the presence of at least one technical feature in the device claim, regardless of whether this technical feature is new or not.
• Instead, the court felt it necessary to add some further justification to the eligibility of Bull’s invention. It explained that it did not merely solve a cognitive problem, but a technical problem (i.e. have a global display of the situation for a given group of users).
• Another formulation used by the Court of Appeal sounds rather cautious: “Thus, the use of technical means to implement a method in the exercise of intellectual activities, excluding human intervention in whole or in part, may confer on said method a technical character and thus allow it to be considered as an invention, just as the patentability of a mixture of technical and non-technical characteristics is admitted.”
• In summary, the Court of Appeal (by assessing whether a technical problem is solved although it did not seem needed) and the Supreme Court (by refusing to detail the grounds of its decision) both remain rather cautious. They did probably not want to define a once-for-all method to assess eligibility.

Similarly, the Thales decision of the Court of Appeal leaves some grey areas:

• The methodology followed by the court may appear quite similar to the “Hitachi” doctrine applied by the EPO: if at least one feature of the method claim is technical, then the subject-matter is eligible. That highlights the importance of the “as such” condition of Article 52(3) EPC.
• However, the court focused its analysis on the characterising features, in contrast to the “Hitachi” approach. Under Hitachi, the mere use of a screen (the feature in the preamble of the Thales claim) would have been sufficient to qualify the claimed subject-matter as an “invention” and submit it to the next level of examination, i.e. inventive step. Regardless of whether it is interactively controlled to produce a new technical effect or merely used to display pre-configured information, a screen is a technical means.

To add some uncertainty, the Supreme Court suggests in the Thales case that a first way to justify the technical character of the patent claim is explaining how the claimed-subject matter would bring a “technical contribution”. The use of such expression will ring a bell to those familiar with the Vicom[9] or Aerotel[10] doctrine. It may suggest that the state of the art should be considered when deciding whether some patent claim qualifies as a technical “invention”, in contrast to the EPO’s “Hitachi” approach.

Consequently, it remains to be seen whether the Supreme Court sees a “technical contribution” as a necessary condition or merely a sufficient condition to pass the eligibility hurdle. The court then suggests that a second way to justify the technical character of the patent claim under analysis is explaining why Feature B (an essential feature) was technical. If, feature B was a generic technical means, we would be comfortable to see in this suggestion a sort of “Hitachi” test. But in Thales’ patent, Feature B was an essential feature.

Teachings from these cases

Both decisions of the Court of Appeal seem to lean towards an eligibility test which depends more on the technicality of at least one of the claimed features than the solving of a technical problem. The Supreme Court seems to implicitly accept this approach. However, it seems a bit early to conclude that the Paris court of first instance and the Court of Appeal will adopt the EPO’s “Hitachi” doctrine.

Now that INPI is entitled to conduct a full examination including inventive step, the other upcoming question is whether the French jurisdiction will take the Comvik[11] approach when assessing inventive step.

At a time where the interest for national patents is growing in parallel with the UPC, a harmonised approach would probably be desirable. The one chosen by the EPO is probably not perfect, but it has at least an advantage: hundreds of decisions over recent years have participated to the construction of a well-framed case law.

[1] Technical Board of Appeals of the EPO, T258/03, point 4.7 of the reasons

[2] Article 122 of law n°2019-486 of 22 May 2019 (so-called “PACTE” law)

[3] Cour d’Appel de Paris, 22 November 2019, RG 18/21161 (following an appeal filed by Bull)

[4] In doing so, the Court adopted a rather limited reading of the claim which does not recite any of this equipment (microprocessor, memory, screen, being in the description only, not in the claim)

[5] Cour de Cassation, 11 January 2023, Bull v. INPI, 20-10.935

[6] Technical Board of Appeals of the EPO, T931/95, point 5 of the reasons

[7] Cour de cassation, 11 January 2023, Thales v. INPI, 19-19.567

[8] Technical Board of Appeals of the EPO, T931/95, point 5 of the reasons

[9] Technical Board of Appeals of the EPO, T 208/84

[10] Aerotel Ltd. v Telco Holdings Ltd [2006] EWCA Civ 1371

[11] Technical Board of Appeals of the EPO, T 641/00