The Thalès judgment of 21 May 2019: is the French judge (finally) adopting the "Hitachi" approach to computer-implemented inventions?
Even though several recent decisions, particularly in the pharmaceutical sector (see e.g. our Interim prohibition order, suggest that French judges are tending to become more favourable towards patent holders, more «pro-patent» one might say, than they were previously, the judgment rendered by the Paris Court of Appeal on 21 May 2019 continues this trend for computer-implemented inventions.
On 17 December 2010, Thalès filed a French patent application for a method of temporal display of an aircraft's mission. On 17 July 2018, the INPI notified a decision of rejection based on the following grounds: Firstly, the subject matter of the patent application consisted of a presentation of information as such, excluded from patentability under Article L. 611-10(2) of the Intellectual Property Code; secondly, the subject matter of the application did not allow for the establishment of a search report, due to insufficient technical characteristics.
3. This decision was reformed on appeal following the appeal lodged by the applicant against the Director General of the INPI. Preliminarily, the Court recalls that a presentation of information is understood as a presentation characterised by its ability to transmit information, thus concerning both its cognitive content and the manner in which it is presented. In this case, claim 1, which was in question, was characterised: on the one hand, by the fact that the different steps are displayed in a first graphical window comprising a graduated time scale or « Timeline » (TL), with the different stages displayed alongside the corresponding schedule for their completion; on the other hand, in that if the length of the « Timeline » is greater than the length of the first graphic window, the graphic window then only displays a part of the « Timeline », part imposed by the user of the visualisation device. The Court ruled that if the first characteristic indeed concerned the transmission of information, the same was not true for the second characteristic, which was technical. Thus, this technical means, distinct from the information, rendered the entire claim valid. In parallel, the Court also ruled out any impossibility of carrying out a search report, recalling that this argument related to the sufficiency of the description, which was not a ground for refusal that the INPI had the power to examine.
4. So far, commentators have rightly noted that this decision appears somewhat anachronistic, in so far as the reform of INPI introduced by the PACTE law should grant more power to INPI in the examination of applications (see Philippe Schmitt and Renaud FulconisIn such a way that today's debate, which essentially concerns exclusions from patentability, should tomorrow be cut short with the examination of inventive step. Renaud Fulconis further noted that the argument that a search report could not be established seemed, in fact, unconvincing. This we readily agree with him on, insofar as it indeed emerges from the texts that examiners, particularly at the EPO, cannot refuse to draw up a search report unless it is actually impossible to carry out a significant search (for the EPO, according to Rule 63 EPC, this possibility is precisely provided for « if the European Patent Office considers that the European patent application does not comply with the provisions of the Convention, to the extent that a meaningful search of the prior art cannot be carried out in respect of all or part of the claimed subject-matter »Therefore, an inability to carry out a search requiring clarifications that the applicant may submit within two months is presumably being invoked, except in the specific case of Euro-PCT applications for which Article 39 of the PCT Implementing Regulations expressly provides that an examining authority may not carry out a search if the application concerns an element excluded from patentability, (such as a computer program or a presentation of information, for example). This practice of refusing to establish a search report in the presence of exclusions from patentability, which has developed over the last ten years by the EPO in the IT sector, therefore seems, in our opinion, to be taking the easy route as a bad guide while causing unjustifiable harm to legal certainty, insofar as it may appear somewhat arbitrary.
5. Regardless, a contribution of the commented judgment, which we nevertheless consider important, seems to have gone unnoticed until now: the French judge appears to adopt the approach Hitachi well known to European representatives in the field of IT. Let us simply recall that this approach, stemming from the decision Hitachi (T 258/03It aims to appreciate the patentability of computer-implemented inventions and advocates that any technical means is sufficient to consider that a claim does not relate to subject matter excluded as such from patentability by Article 52 EPC (essentially reproduced by Article L. 611-10 CPI). In contrast, the inventive contribution, examined under inventive step, must be of a technical nature. This method, which confers great flexibility in assessing the patentability of computer inventions, has never been clearly adopted by the French courts, which seemed to prefer a stricter structural approach aimed at determining whether the core of the invention lay in an exclusionsee for example Paris Court of Appeal, 16 December 2016, our comments in Propr. industr. 2017, study 20The French doctrine was almost unanimously opposed to the approach Hitachi (see however our work Technique et droit des brevets, LexisNexis, Business Law Library, vol. 89, Paris, 2016, no. 594). Be that as it may, in the judgment under review, the judge clearly states that the first characteristic, deemed non-technical, was «central» to the patent. However, it was ruled that the mere presence of a technical means was sufficient to consider the invention valid as a whole. Thus, this is the first time that the French judge has clearly adopted reasoning akin to the approach Hitachi, without the commentator therefore having to resort to interpretation a fortiori You from the contrary to arrive at this conclusionSee, on this subject, the two previous rulings mentioned in our aforementioned work at paragraphs 595 and 596.).
6. It should be noted that all of this appears all the more surprising as the rejection by the INPI was linked to a refusal to establish the search report by the EPO examiner. The French application had, in fact, been sent to the EPO for a prior art search, as is the case for all French applications not claiming foreign priority. And the EPO examiner refused to carry out the search on the grounds that the claims « related to an abstract and generic data display process, regardless of any technology. This object is excluded from patentability, like any abstract method of graphical representation as such, because it is equivalent to a mathematical method. »In other words, the EPO examiner did not even bother to examine the application, considering it was obvious that the claimed invention constituted a presentation of information.
7. Ultimately, there is little doubt that the Paris Court of Appeal has adopted an approach favourable to the holders of «software patents». It remains now for a French judge to seize the opportunity to confirm this choice to take the route of inventive activity to exclude an achievement characterised by a non-technical inventive contribution, as appeared to be the case in this instance. In any event, in the future, the PACTE law will allow the INPI to reject such an invention due to a lack of inventive activity.