“Emotional Perception AI Limited v. Comptroller General of Patents, Designs and Trade Marks”
摘要
The Aerotel approach should not be followed, in the light of G1/19, and the UK should adopt the same interpretation of Art. 52 as the Enlarged Board. Such does not require UK courts to change their approach to the analysis of what amounts to an inventive step, although it may require some modification. The approach which should be adopted by courts in the UK is that contained in the Duns principles other than principle G (and the second paragraph of the Comvik headnote), as explained by the further reasoning in G1/19, in particular about the need for an intermediate step between “any hardware” and inventive step to determine which features in a “mixed” invention contribute to its technical character. The expression “program for a computer” in Art. 52(2)(c) of the EPC is applicable to an ANN. Whatever the specific form of the machine on which an ANN is implemented, the ANN constitutes, in essence, a set of instructions to manipulate data in a particular way so as to produce a desired result. In other words, an ANN is a program for a computer. The intermediate step is a necessary part of the process of applying Arts. 52 to 56 of the EPC. The effect of Art. 52(3) and the requirement of technicality inherent in Art. 52(1) is that the subject matter of an invention is patentable only to the extent that it is technical in character and not excluded by Art. 52(2). This in turn requires an analysis of the subject matter of an invention to ensure that only eligible features are taken into account in the assessment of inventive step. This analysis must be carried out by reference to the technical character of the invention, viewed as a whole. The intermediate step is, in terms of its function, concerned entirely with excluding features of the invention from subsequent consideration rather than with determining the patentability of the invention as a whole. Its object is to filter out features which do not contribute to the technical character of the invention viewed as a whole, so as to exclude those features form consideration at step (2) (inventive step). This feature-by-feature approach required by the intermediate step described in G1/19 stands in sharp contrast to the holistic check of the Aerotel approach. The sole criterion of the intermediate step is whether the feature contributes to the technical character of the invention as a whole. Thus, technical features may be filtered out because they make no such contribution and non-technical features may be left in because they do make such a contribution. The intermediate step only arises if the invention as a whole is considered to be technical in character, by reason of having passed stage (1) under Art. 52 of the EPC. Thus, it is not relevant, at the stage of the intermediate step, whether the technical character of the invention appears to be novel or inventive. The question whether the invention adds anything to the sum total of human knowledge is a stage (2) question on the Board’s approach, which at the intermediate stage has not yet been reached.