One of our interests on Tangible IP is the never ending story of software patents. Just to recap: the European Patent Office is currently considering the degree to which computer-implemented inventions are patentable. On the other side of the Atlantic the US Supreme Court has head arguments in the re Bilski case and we’re waiting for a decision.
I’m indebted to Pierre Breese, the author of the French-language blog “Chronique de la propriété intellectuelles” for his entry mentioning a decision issued by the Parisian TGI patent court. It concerns the validity of the European Patent EP 1 182 581 filed by the French company Exalead. The patent is directed towards a search engine.
The EPO Examiner initially rejected the patent on the grounds that it was not possible to determine the technical problem which was to be solved by the invention. The Applicant’s attorneys responded that the technical problem has been clearly described in the description and that this problem was solved by the claims. The EPO granted the patent.
Exalead then proceeded to sue another French company Sinequa who were providing a search engine service to the French Ministry of Culture and also to the French Senate. Sinequa argued that the patent was invalid. As part of their defence, Sinequa filed an identical patent application with the French Patent Office INPI who proceeded to reject the patent application on the bases that the claims were directed to a series of theoretical and abstract steps which included no technical means thus rendering a technical nature to the claims. The INPI Examiner concluded that the addition of the search engine into the claims was insufficient to confer a technical nature to the claims and thus the claims concerned a series of mental steps. The French court revoked the patent in France on this basis.
There are several points of concern in the decision. The French court seems to have adopted INPI’s arguments which were in direct contradiction to the decision of the European Patent Office on granting this patent. We don’t have any knowledge about the detailed arguments submitted to the court or the detailed reasoning of INPI but to merely revoke a granted European Patent on grounds that seemed to have been raised and overcome in the European granting procedure is stepping into dangerous ground.
Even more intriguingly is that there was a second patent application pending in France which had been filed by Exalead. Patrice – the author of the original blog entry – noted that this second (identical) patent application was not objected to by INPI.
Business and investment decisions can sometimes rest on the validity of IP rights. It’s clearly correct to have a review process to ensure that incorrectly granted patents can be revoked. It’s disturbing that a granted patent can be revoked on issues that were (apparently) considered during the patent prosecution. Without knowing the history of the case in more detail, it’s not clear whether the initial examination at the European Patent Office was not carried out with the usual degree of care – or whether there are stronger arguments for revoking the case that only came out during the French proceedings but have not found their way into the court’s decision. It would certainly have been helpful to understand the reasons for the revocation in more detail in order to allow businesses to find the boundary between a patentable computer-implemented invention and an unpatentable software process.