Patentability of predictive computer programs: French perspective

07/04/21
Patentability of predictive computer programs: French perspective

Patent

The European Patent Office, in its highly anticipated decision G1/19 from March 10th, 2021, confirmed patentability of computer-implemented simulations with regard to inventive step especially.

It results from Article 52 (1) of the EPC that only “technical” inventions are patentable. In this spirit, Article 52 (2) of the EPC excludes from inventions mathematical methods and programs for computers.

 

Patent EP 15 46 948 for computer-implemented simulations of pedestrians’ movement through an environment, at stake in G1/19 case, did not present any direct link or effect with physical reality. However, the EPO considered that an invention about simulation process comprising only numerical input and output, without any interaction with physical reality, may contribute to the technical character of the invention. By ruling so, the EPO secures and opens large way for predictive computer programs patent filing.

 

As a matter of fact, French jurisdiction already had to deal with such patents related to computer programs for prediction.

 

The Appeal Court of Paris, on January 15th, 2021 (RG No 18/15295), rendered a decision validating a patent on methods, systems, and software for identifying functional biomolecules (EP 17 61 879).

 

In this case, the American company Codexis holds a European patent covering a method of calculating protein sequences, generating and using models implying non-linear, vector product terms. The defendants are a professor specialized in biochemistry who offers an online protein sequence prediction method and the Peaccel company, of which he is the VP Research.

 

Codexis considered this tool used the same mathematical formula as its patent and required defendant condemnation for patent infringement.

 

The defendants answered by claiming nullity of the patent because of lack of novelty and inventive step. It is interesting to note that when claiming default of inventive step, the professor only referred to combination of two prior art applications but did not refer to technical and excluded inventions according to Article 52 of the EPC. Though Article L. 614-12 of the French Intellectual Property Code states that French part of a European patent shall be declared invalid by a court decision on any of the grounds referred to in Article 138(1) of the EPC, such article referring back to Article 52 of the EPC.

 

It results from these dispositions that patentability of the Codexis predictive computer program could have been discussed with regard to Article 52 of the EPC and French jurisdiction could have declared invalid the French part of this predictive computer program patent. Instead, the court limited its decision to the argument raised by the parties, i.e. novelty and inventive step in its common understanding.

 

We understand that field players before French courts preferred not to raise such argument since themselves recently filed a predictive computer program European. Similarly, numerous entities presented their Amicus curiae’s observations before the EPO in the framework of G1/19 case to push for patentability of computer-implemented solution.

 

Finally, with regard to infringement, the Appeal Court considered that the mathematical formulae of the defendant’s tool and the challenged patent were not identical since the expert report mentions a more complex formulation for the patent. It also emphasized that the defendant’s inspiration of Codexis’ publication do not characterize an infringement. Similarly, infringement by equivalence was rejected since it was not demonstrated that the selection of quadratic terms in the tool fulfilled the same function as the vector product terms in the patent.

 

It results from French recent case law that EPO’s decision G1/19 shall not raise any difficulties before French jurisdictions which already recognize patentability of predictive computer programs. Moreover, such patentability appears to be strongly defended by field players who avoid making this point a legal issue.

 

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