11 Aug 2020
What is the current state of the law on the patentability of CIIs?

Articles L. 611-10 (2) and (3) of the French Intellectual Property Code reproduce the provisions of Articles 52(2) and (3) of the EPC. Thus, business methods and computer programs as such are among the list of items that are excluded from patentability. Similar to the EPO position, this does not however exclude patentability of a claim containing a feature rendering the claim not merely a business method or computer program as such.

Administrative practice of the Institut National de la Propriété Industrielle (INPI) is framed by a directive on patents updated in May 2020 (Chapter VII Patentability, 1- Inventions, 6 Computer programs).1

Approaches of technical character in French case law also vary on a case-by-case basis, so that for many years no clear position has emerged in the case law.

The essential element approach, which postulates that a thing is technical when its essential element is technical, was for example used by the Paris Court of Appeal in the Schlumberger case in 1981 to admit the patentability of a computer-implemented oil exploration device.2

The Paris Court of First Instance applied the technical contribution approach, which consists of taking into account the claimed invention as a whole in order to examine whether it contributes to the state of the art, in a “Starsight” decision handed down in 2013.3 The patent in question concerned a process and a device to access information regarding television programmes. Here, the judges considered that the patent did not contain any indication demonstrating the existence of a technical contribution. The Court confirmed that a computer program could not constitute a patentable technical feature. Furthermore, the Court considered that the alleged invention was not an invention, because it did not encompass a technical contribution.

The criterion of further technical effect has also been used several times by the French Courts. For example, the Paris Court of First Instance referred to the notion of additional technical effect in a “Free” decision handed down 2015.4 The invention related to the switching of multimedia sessions from a mobile terminal to local network equipment.

Finally, in an Infomil vs. Atos case dated 2007, the Paris Court of First Instance adopted a reasoning similar to the any hardware approach. The patent at issue concerned a method and apparatus for the selective distribution of discount coupons. The Court considered that the intellectual method performed by the device did not prevent the invention from being patentable in relation to that device. It was the lack of inventive step that led to the revocation of the patent. According to the French doctrine, it emerges from this ground that the claiming of known technical means guarantees the technical character of an invention relating to an intellectual method. However, the inventive contribution must be technical. In this Infomil vs. Atos case, the patent was declared void because this contribution lay in the issuing of commercial benefits. This was therefore not an inventive contribution of technical character.[5] The any hardware approach was unanimously disapproved by French doctrine. Nevertheless, the Paris Court of Appeal adopted again a position close to the any hardware approach in a decision handed down in 2016 about a search engine operating by categories and keywords.6

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Clément Monnet
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