The Pozzoli-Duns test: Frankenstein monster or heirloom quilt?

The Supreme Court decision in the long running dispute between Emotional Perception AI and the UK Intellectual Property Office (“the EP AI decision”) has been with us over a week now, and at the time of writing we are still waiting for a UK IPO practice note. I’m not complaining: this is a major change, and they will need some time to get it right. But in the meantime, office deadlines wait for no one, and those of us with computer implemented invention cases under examination at the IPO must move forward. What do we think the decision means? How can we move forward in this brave new world?

To my reading, the Supreme Court Decision endorses two key approaches: the Duns principles (minus G, which centres on the Problem Solution approach) and Pozzoli. Pozzoli pops up twice: once as may be expected in the context of inventive step and once, as slightly more of a curve ball, in identifying the technical contribution.

The Supreme Court feels that combining the approaches need not create a Frankenstein monster. So, a question presents itself: can they be combined into a beautiful patchwork quilt, or will something more workaday result?

Having turned my hand to a cross-stitch sampler or two in the past, here’s my attempt.

All § references are to the Supreme Court decision so you can play along. And if you see any bad stitch work, do let me know.

Cutting out the pieces

The Duns principles are set out in §39 and we are reminded that “invention, novelty, inventive step, and susceptibility of industrial application – are essentially separate and independent criteria of patentability, which give rise to concurrent objections. Novelty, in particular, is not a requisite of an invention within the meaning of Article 52(1) EPC, but a separate requirement of patentability.”

At a high level, applying the Duns principles means having an ‘any hardware’ approach as an initial low hurdle (§66, §99), followed by an “intermediate step” to determine which features in a “mixed” invention contribute to its technical character (§100-111), and then identification of an inventive step. To add a little British flavour, you can determine inventive step using the Pozzoli method (§67).

The “any hardware step”

A low but necessary hurdle which does not require detailed discussion. Make sure each claim mentions hardware, job done (see §100).

The “intermediate step”

I’ll set this out in punishing detail below, but the ‘intermediate step’ would seem to include two sub-steps: identify the technical character, and then identify the claim features which contribute to the technical character. But we’re going to need to weave in just a bit of Pozzoli.

First, a bit of background. The intermediate step is introduced in §43, by reference to paragraph 38 and 39 of G1/19, which state:

38. It may be that a shift has taken place in the relative level of each of these two hurdles in the sense that it has become easier to clear the eligibility hurdle of Art 52 EPC … and more difficult to pass the inventive step hurdle of Art 56 EPC. As result of this shift, it could be said that there is now in effect an additional intermediate step to assess the ‘eligibility of the feature to contribute to inventive step’.

39. The two-hurdle approach for computer-implemented inventions actually entails three steps. Establishing whether a feature contributes to the technical character of the invention constitutes an intermediate step between assessing (i) the invention’s eligibility under Art 52 EPC, and (ii) whether the invention is based on an inventive step vis-à-vis the closest prior art. This additional intermediate step serves as a filter for features contributing to a technical solution of a technical problem in view of the closest prior art. Only those distinguishing features can contribute to inventive step.”

In §66, the EP AI decision sets out:

66. In our view, 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: see again para 39 of the Board’s reasons. This is for the purpose of excluding non-technical features (ie features which do not contribute to the technical character of the invention) when assessing at the next stage whether the invention involves an inventive step in relation to the prior art.

The EP AI decision provides further guidance in §100-111. As is set out in §101,

Non-technical features “as such” do not provide a contribution to the prior art and are therefore to be ignored in assessing novelty and inventive step at stage (2). But the phrase “non-technical features as such” means (and means only) “non-technical features which do not interact with the technical subject matter of the claim” […] Non-technical features which do interact with the technical subject matter of the claim are therefore to be included in step (2).

Further, as is set out in §104:

The intermediate step is further described in paras 38 and 39 of G1/19. In para 38 its purpose is described as being “to assess the eligibility of the feature to contribute to inventive step”. In para 39 it is said that the intermediate step of establishing whether a feature contributes to the technical character of the invention “serves as a filter for features contributing to a technical solution of a technical problem in view of the closest prior art. Only those distinguishing features can contribute to inventive step.

And, in §107:

[T]he 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 from consideration at step (2) (inventive step). Or, put in positive terms, it is to allow consideration to be given at step (2) only to those features which do so contribute. It calls for a dissection of the subject matter of the invention into its component features and a review of the contributory role of each feature, by reference to the contribution made by that feature to, or interaction with, the technical character of invention viewed as a whole.

In terms of how to apply this, the EP AI decision sets out, in §106:

The second point to note is the requirement, spelt out in para 32 of G1/19, to carry out this analysis by reference to the technical character of the invention, viewed as a whole. Only when that has been identified can it be seen whether any particular feature of the invention does or does not contribute to it, or interact with it. Although the discussion of the intermediate step is couched in terms of the technical solution of a technical problem, we have already concluded that the EPC does not mandate the EPO’s problem and solution approach as the sole means of resolving any question about patentability. It is just the way the EPO does so as a matter of its practice. But that simply means that it is open to the UKIPO and to the UK courts to adopt any appropriate method of identifying the technical character of the invention, viewed as a whole, as the necessary first part of carrying out the intermediate step. An example of an appropriate method might in a particular case be to identify the alleged “inventive concept” of the claim, as explained in Pozzoli.

And, in in §109:

[T]he intermediate step does not involve assessing each feature of the invention by asking whether the feature is itself, viewed separately, technical or nontechnical. The sole criterion 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.

So, with all our patches laid out, it’s time to get stitching: the approach to the Intermediate Step proposed in the EP AI decision appears to be:

1. Identify the technical character, for example by identifying the inventive concept as explained in Pozzoli (§106)
2. Consider the claim features and categorise them to identify those features which do contribute to the technical character of the invention, and those that do not. Those that do not are excluded from consideration under inventive step. (§107).

Taking the shears to Pozzoli

The familiar steps of the Pozzoli test are:

(1)(a) Identify the notional “person skilled in the art”

(1)(b) Identify the relevant common general knowledge of that person;

(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;

(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

It is clear that in applying the conclusions of the EP AI decision, this test may have utility in both the intermediate step in assessing technical character (§106, final sentence) and the final step of assessing inventiveness (§65, final sentence). We note that the EP AI decision does not conclude that Pozzoli is the only way of assessing either criteria, but it is specifically mentioned.

Therefore, it seems appropriate to consider where the Pozzoli method should be cut between the intermediate step and the final step, and what modifications may be required.

Steps 1 and 2 seem to belong within the intermediate step (modified by reference to technical contribution in place of inventive concept), and step 4 must belong to the final step. With regard to step 3, the comments of §111 of the EP AI decision are relevant:

It was one of the principal criticisms of the Aerotel methodology by the EPO Board that it impermissibly jumbled up invention with novelty and inventive step by its focus on “contribution”: see Aerotel, para 43, cited at para 30 above, where the Court of Appeal defined contribution as that which, as a matter of substance rather than form, the inventor has really added to human knowledge; and Duns, para 12 (cited at paras 34-35 above), where that approach was criticised by the EPO Board. 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

Therefore, it would seem that step 3 of the Pozzoli test inevitably lies in the final step under the EP AI Decision, but requires some adaptation in that only features which contribute to technical character are to be assessed.

Step (2) – Inventive step

This then leads to a step (2) to assess inventive step:

(i) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the features contributing to the technical character of the claim or the claim as construed;

(ii) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

This is a modified version of step 3 of Pozzoli along with step 4.

So: what might the Pozzoli-Duns test look like?

Here’s my best guess

1. Apply the ‘any hardware’ test as step (1)
2. Apply the intermediate step by:
   1. Identify the technical character, for example using steps 1 and 2 of Pozzoli
   2. Categorise the claim features as contributing the technical character or not
3. Apply the step (2), for example using steps 3 and 4 and Pozzoli, using only those claim features which contribute to the technical character.