Posted: July 30th, 2014
Schiller Medical (Applicant), Technical Board of Appeal 3.4.01, EPO, 11 February 2014, Case No. T 533/09
Technical Board of Appeal 3.4.01 confirms the patentability of an electrical signal. The Board held that under the EPC the notion of invention was not linked to "tangible" (in the sense of "material") subject-matter. Electrical signals, the intensity of which could be measured at any time, in fact fell within the definition of "physical entity".
With the advent of modern analog and digital technology, the question arises whether or not electrical signal forms may be patented. This question has not been answered consistently in different patent systems. Whereas the US Court of Appeals for the Federal Circuit found in its (albeit not unanimous) opinion "In re Petrus A.C.M. Nuijten" of September 20, 2007 that a specifically encoded signal was not directed to statutory subject matter, Technical Board of Appeal 3.5.01 of the EPO held in its early decision T 163/85 (Colour television signal/BBC) of 14 March 1989 that a color television signal characterized by technical features of the system in which it occurred did not fall within the exclusions of Article 52(2)(d) EPC.
In a recent French case claiming a specific modulation of a train of defibrillation pulses separated by pauses, which resulted from dissecting the electrical discharge signal of a capacitor used for defibrillating the heart of a patient, Technical Board of Appeal 3.4.01 had to reconsider the issue of signal patentability. The application had been refused by the Examining Division inter alia because a train of elementary pulses constituted a physical phenomenon which was not sufficiently tangible for being regarded as a product (or a process) and thus was not industrially applicable (Article 57 EPC).
The Board held, however, that the requirement of a "tangible" (in the sense of "material") character for inventions was foreign to the EPC: the travaux préparatoires clearly showed that the legislators intended to retain a fairly broad definition of "invention", thereby deliberately abstaining from the formulation of any requirements concerning the category an invention must belong to. In this respect, the concept of invention pursuant to the EPC had to be distinguished from that of other patent systems, notably the US system, where patent-eligible subject-matter was limited to "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" (35 U.S.C. § 101).
Even if account were taken of decision G 2/88 (Friction reducing additive/MOBIL OIL III) of the Enlarged Board of Appeal defining basically two different types of claims, i.e. "a claim to a physical entity (e.g. product, apparatus) and a claim to a physical activity (e.g. method, process, use)", the claimed pulse train was of concrete nature insofar as it resulted from the modulation of an electrical signal (discharge of a capacitor used for defibrillation) and was susceptible to measurement at any time. Such a signal in fact fell within the definition of "physical entity" given by G 2/88.
Hence, the Board held that the nature of the claimed subject-matter was no obstacle to its patentability. Furthermore, the unequivocal possibility of realizing and using such a signal for defibrillation purposes warranted industrially applicability so that the requirements of Article 57 EPC were also met.
Read the entire decision (in French) here.
Reported by: Stefan V. Steinbrener, Bardehle Pagenberg