What is the legal basis for requesting a review of the patents?
PatentReview does not determine whether a patent is valid or invalid. That decision can only be made by the competent authority or the courts.
Our role is to present the technical and legal issues that, in our view, may justify an official review of the patents under examination.
What is examined in revocation proceedings?
A patent is not valid simply because it has been granted. It must satisfy the statutory requirements for patentability both at the time of grant and throughout the period in which it remains in force.
Where there are well-founded doubts as to whether one or more of these requirements have been met, it is possible to initiate formal revocation proceedings or, in certain circumstances, limitation proceedings.
In such proceedings, the competent authority does not examine the inventor personally. Its sole task is to determine whether the patent itself complies with the applicable legal requirements.
What issues are we examining?
Among other matters, the project considers the following questions.
Novelty
Does the patent genuinely disclose a technical solution that was not publicly known at the filing date?
Inventive step
Does the claimed invention represent a genuine technical advance over the prior art, or would it have been obvious to a person skilled in the art?
Sufficiency of disclosure
Does the patent describe the invention in sufficient detail to enable a person skilled in the art to carry it out using the information contained in the specification?
Allowability of amendments
Were the amendments made during prosecution consistent with European patent law, or did they introduce technical subject matter that was not disclosed in the original application?
Scope of the claims
Does the scope of protection comply with the applicable legal requirements, or would it be appropriate to limit one or more of the claims?
Which legal provisions are relevant?
Our detailed legal analyses rely primarily on the provisions of the European Patent Convention (EPC).
In particular, the following provisions may become relevant:
Article 52 EPC – Patentable inventions;
Article 54 EPC – Novelty;
Article 56 EPC – Inventive step;
Article 83 EPC – Sufficiency of disclosure;
Article 123 EPC – Amendments to the patent; and
the related provisions of the EPC together with the established case law of the European Patent Office.
Which of these provisions ultimately applies can only be determined through detailed technical and legal analysis and, ultimately, through the official proceedings themselves.
Revocation or limitation?
Not every legal or technical deficiency necessarily results in the complete revocation of a patent.
In some cases, it may be sufficient to limit the patent by amending or deleting one or more claims. In others, however, the identified deficiencies may affect the validity of the patent as a whole.
PatentReview examines each issue individually and forms its professional opinion solely on the basis of the available evidence.
Why do we publish these analyses?
We believe that, where a patent has significant economic and societal impact, the public has a legitimate interest in understanding the technical and legal issues that may form the basis of official review proceedings.
The purpose of all our analyses is to encourage professional discussion and evidence-based public understanding. The final decision always rests with the competent authority or the courts.
oWhy is the assessment of inventive step particularly important?
Novelty alone is not sufficient for a patent to be granted. Under the European Patent Convention, an invention must also involve an inventive step, meaning that it must provide a technical contribution over the prior art that would not have been obvious to a person skilled in the art.
During the examination of the patents under review, the European Patent Office initially raised objections concerning inventive step. The applicant subsequently submitted detailed observations explaining which technical features allegedly distinguished the invention from the prior art and what technical advantages those features were said to provide.
According to the publicly available prosecution history, the examiner ultimately accepted those arguments and concluded that the identified distinguishing feature established both novelty and inventive step, leading to the grant of the patents.
One of PatentReview's principal objectives is to examine this reasoning in detail.
During this analysis, we seek to determine, among other things:
which technical feature the EPO regarded as providing the inventive step;
what technical effect that feature is said to achieve according to the patent specification;
whether that technical effect is directly and unambiguously derivable from the patent itself;
whether the alleged technical effect is achieved across the full scope of the claims; and
whether the distinguishing feature genuinely provides the technical contribution required by Article 56 EPC.
Under established EPO case law, novelty alone is insufficient. A distinguishing feature must also contribute to the technical character of the invention and produce a technical effect that solves a technical problem. Features that do not contribute to the technical character of the invention cannot, on their own, support the presence of an inventive step. This principle is consistently applied in the EPO Guidelines and in the COMVIK approach (T 641/00).
The following chapters therefore examine in detail how the technical effect accepted by the examiner was identified and how we intend to evaluate it from technical, mathematical and legal perspectives.
Why is novelty not our primary focus?
PatentReview's objective is not to investigate every possible ground for revocation with equal emphasis, but rather to concentrate its resources on those issues that our preliminary analyses indicate are likely to be the most significant.
Based on the scientific literature, patent documents and prior art currently available to us, our preliminary view is that the central feature of the patents—namely the use of a transaction-specific projection parameter for processing biometric data—does not appear to have been explicitly disclosed in the public documents we have identified prior to August 2014.
This does not mean that the question of novelty has been conclusively resolved. Our prior art search remains ongoing, and should additional documents emerge that materially affect the assessment of novelty, they will be analysed accordingly.
At present, however, our research is focused primarily on inventive step (Article 56 EPC) and sufficiency of disclosure (Article 83 EPC) rather than on novelty (Article 54 EPC).
Under the EPC, it is not enough for a technical feature merely to be new. The distinguishing feature must also provide a technical contribution that would not have been obvious in light of the prior art.
One of the central questions of our research is therefore to determine precisely what technical effect is produced by using a transaction-specific projection parameter.
Among other things, we seek to answer the following questions:
What objective technical advantage results from using a transaction-specific projection?
Can that technical effect be directly derived from the patent specification?
Is the alleged technical effect achieved across the entire scope of the claims?
Can the claimed technical advantage be demonstrated experimentally or reproduced independently?
Does the distinguishing feature genuinely contribute to the technical character of the invention and to solving the stated technical problem?
We examine these questions through detailed technical analysis, mathematical evaluation, computer simulations, comparative prior art analysis, and by applying the Guidelines and case law of the European Patent Office.
The final conclusions, of course, will not be drawn by PatentReview, but by the competent authority in the official proceedings. Our objective is simply to identify which technical and legal issues merit detailed examination on the basis of the available evidence.
Why are we examining sufficiency of disclosure (Article 83 EPC)?
One of the fundamental principles of the patent system is that, in exchange for patent protection, the inventor must disclose the invention in sufficient detail to enable a person skilled in the art to carry it out. This requirement is set out in Article 83 EPC.
This does not mean that every implementation detail must be disclosed. However, where a patent relies upon a particular technical effect or advantage, the specification must provide sufficient guidance to enable a skilled person to achieve that effect across the full scope of the claims without requiring an undue amount of further research or experimentation.
PatentReview therefore also examines whether the patents under review disclose, with sufficient detail, the technical solutions upon which the claimed protection is based. In particular, we assess whether a person skilled in the art could implement the invention throughout the full scope of the claims and achieve the technical effects asserted in the patent.
As with every other issue, the final determination of compliance with Article 83 EPC rests exclusively with the competent authority or the courts.