Art. 52(1) - Patentability

T 172/03 - Order management/RICOH

Date of the Decision: 
2003-11-27
Catchword: 
  1. The term „state of the art“ in Article 54 EPC should, in compliance with the French and German text, be understood as „state of technology“, which in the context of the EPC does not include the state of the art in commerce and business methods. The term „everything“ in Article 54(2) EPC is to be understood as concerning such kind of information which is relevant to some field of technology.
  2. From these considerations it follows that anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of Articles 54 and 56, even if it had been made available to the general public before the relevant priority date (see points 8 to 10 of the reasons).

T 38/86

Date of the Decision: 
1989-02-14
Headnote: 
A person who is detecting and replacing linguistic expressions which exceed a predetermined understandability level in a list of linguistic expressions using only his skill and judgment is performing mental acts within the meaning of Article 52(2)© EPC. Accordingly, schemes, rules and methods used in performing them are not inventions within the meaning of Article 52(1) EPC. Since according to Article 52(3) EPC patentability is excluded only to the extent to which the patent application relates to subject-matter or activities summarised in Article 52(2) as such, it appears to be the intention of the EPC to permit patenting in those cases in which the invention involves some contribution to the art in a field not excluded from patentability. The use of technical means for carrying out a method for performing mental acts, partly or entirely without human intervention, may, having regard to Article 52(3) EPC, render such a method a technical process or method and therefore an invention within the meaning of Article 52(1) EPC. However, if the technical implementation of such a method is obvious to a person skilled in the technical art, once the steps of the method for performing the mental acts have been defined, so that there is no inventive contribution in a field not excluded from patentability under Article 52(2)© EPC, such method does not involve an inventive step within the meaning of Article 56 EPC. If a claim for an apparatus (here: a text processing system) for carrying out a method does not specify any technical features beyond those already comprised in a claim pertaining to said method and furthermore does not define the apparatus in terms of its physical structure, but only in functional terms corresponding to the steps of said method, the claimed apparatus does not contribute anything more to the art than the method, in spite of the fact that the claim is formulated in a different category. In such a case, if the method is excluded from patentability, so is the apparatus.

T 209/91

Date of the Decision: 
1991-05-23
Summary and Comments: 

A claim has to be assessed as a whole. If it makes use of both technical and non-technical means the use of non-technical means does not detract from the technical character of the overall teaching. The EPC does not require that a patentable invention be exclusively or largely of a technical nature, in other words it does not prohibit the patenting of inventions consisting of a mix of technical and non-technical elements.

T 336/07

Date of the Decision: 
2007-10-11
Catchword: 
  1. The mere fact that subject-matter, which is excluded per se under Article 52(2) © EPC, is technically implemented cannot form the basis for inventive step. Inventive step can be based only on the particular manner of implementation of such subject-matter. To this end it is therefore necessary to ask how the per se excluded subject-matter (e.g. a game or business method) is implemented (reasons 2.4)
  2. A consideration of the particular manner of implementation must focus on any further technical advantages or effects associated with the specific features of implementation over and above the effects and advantages inherent in the excluded subject-matter (reasons 2.5)
  3. A set of game rules defines a regulatory framework agreed between players and concerning conduct, conventions and conditions that are meaningful only in a gaming context. It is perceived as such by players involved, and as serving the explicit purpose of playing a game. As such an agreed framework it is a purely abstract, mental construct, though the method and means for carrying out game play in accordance with such a set may well be technical in nature (reasons 3.3.1).

T 6/83 - Data Processor Network/IBM

Date of the Decision: 
1988-10-06
Headnote: 
An invention relating to the co-ordination and control of the internal communication between programs and data files held at different processors in a data processing system having a plurality of interconnected data processors in a telecommunication network, and the features of which are not concerned with the nature of the data and the way in which a particular application program operates on them, is to be regarded as solving a problem which is essentially technical. Such an invention therefore is to be regarded as an invention within the meaning of Article 52(1) EPC.

T 22/85 - Document abstracting and retrieving/IBM

Date of the Decision: 
1988-10-05
Headnote: 
Abstracting a document, storing the abstract, and retrieving it in response to a query falls as such within the category of schemes, rules and methods for performing mental acts and constitutes therefore non-patentable subject-matter under Article 52(2)© and 52(3) EPC The mere setting out of the sequence of steps necessary to perform an activity, excluded as such from patentability under Article 52(2) and 52(3) EPC, in terms of functions or functional means to be realised with the aid of conventional computer hardware elements does not import any technical considerations and cannot, therefore, lend a technical character to that activity and thereby overcome the exclusion from patentability.

T 154/04 - Estimating sales activity/DUNS LICENSING ASSOCIATES

Date of the Decision: 
2006-11-15
Headnote: 
Methods of business research are excluded „as such“ from patentability under Article 52(2)© and (3) EPC. Gathering and evaluating data as part of a business research method do not convey technical character to the business research method if such steps do not contribute to the technical solution of a technical problem.

T 769/92 - General-purpose management system/SOHEI

Date of the Decision: 
1994-05-31
Headnote: 
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]).
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