Highly Relevant

An invention comprising functional features implemented by software (computer programs) is not excluded from patentability under Article 52(2)©, (3) EPC, if technical considerations concerning particulars of the solution of the problem the invention solves are required in order to carry out that same invention. Such technical considerations lend a technical nature to the invention in that they imply a technical problem to be solved by (implicit) technical features. An invention of this kind does not pertain to a computer program as such under Article 52(3). Non-exclusion from patentability cannot be destroyed by an additional feature which as such would itself be excluded, as in the present case features referring to management systems and methods which may fall under the “methods for doing business” excluded from patentability under Article 52(2)©, (3) EPC (following established case law according to which a mix of features, some of which are excluded under Article 52(2) and (3) EPC and some of which are not so excluded, may be patentable [in contrast to recent case law concerning inventions excluded by Article 52(4) EPC, cf. T 820/92, to be published, according to which one feature excluded under Article 52(4) EPC suffices for the whole claim to be excluded from patentability]).

A colour television signal characterised by technical features of the system in which it occurs, i.e. in which it is being generated and/or received does not fall within the exclusions of Article 52(2)(d) and (3) EPC and is regarded as an invention within the meaning of Article 52(1) EPC.

The claim category of a computer-implemented method is distinguished from that of a computer program. Even though a method, in particular a method of operating a computer, may be put into practice with the help of a computer program, a claim relating to such a method does not claim a computer program in the category of a computer program (point 5.1 of the reasons). A computer-readable medium is a technical product and, thus, has technical character (point 5.3 of the reasons).

Rule 45 EPC relates only to the practicability of a search and not to the potential relevance of its results in subsequent substantive examination (Reasons 8.3). Where the application’s subject-matter has non-technical aspects, a declaration under Rule 45 EPC may be issued only in exceptional cases in which the claimed subject-matter, i.e. the entire set of claims including all independent and dependent claims, clearly has no technical character (Reasons 8.4).

Procedural steps involved in applying a coded distinctive mark to an object, providing the object with characteristic data and forming the distinctive mark by coding the characteristic data, may be carried out in any desired manner. If a claim focuses solely on such procedural steps without indicating or presupposing technical means for carrying them out, a process of this kind will come under the heading of matter excluded from patentability by Article 52(2)© and (3) EPC and will not therefore be regarded as an invention within the meaning of Article 52(1) EPC.

The proper interpretation of the word “inventions” in Article 52(1) EPC requires a claimed subject-matter or activity to have a technical character and thus in principle to be industrially applicable, if it is to be patentable – following decisions T 208/84 - Computer-related invention/VICOM (OJ EPO 1987, 4) and T 22/85 (OJ EPO 1990, 12). A claim which, when taken as a whole, is essentially a business operation, does not have a technical character and is not a claim to a patentable invention within the meaning of Article 52(1) EPC, even though the claimed method includes steps which include a technical component. The true nature of the claimed subject-matter remains the same, even though some technical means are used to perform it.

An invention consisting of a mixture of technical and nontechnical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step. Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met.

A method involving technical means is an invention within the meaning of Article 52(1) EPC (as distinguished from decision T 931/95-Controlling pension benefits system/PBS PARTNERSHIP) (see points 4.1 to 4.4 of the reasons). Method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed (see point 5.7 of the reasons).

A computer program product is not excluded from patentability under Article 52(2) and (3) EPC if, when it is run on a computer, it produces a further technical effect which goes beyond the “normal” physical interactions between program (software) and computer (hardware).