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Art. 52(2) - Exclusions from patentability

T 38/86

in
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

in
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

in
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 309/05 - Domain name generation/RAREDOMAINS.COM

in
Date of the Decision: 
2006-10-27
Headnote: 
Where a combination of non-technical and technical features is claimed, the consideration of inventive step requires that the problem be restricted to its technical aspects (point 4.2, following T 641/00 - Two identities/COMVIK). The problem of automating the generation of Internet domain names, so that only names which are both available and desirable are presented to a potential buyer, must therefore be stripped of aesthetic and semantic considerations, since these lie in a field excluded from patentability by the provisions of Articles 52(2)(b) and 52(2)© EPC (Points 4.7 and 4.9). Reformulating the problem into non-technical and technical components leaves as a technical problem simply the concatenation of a text string provided by a user with a predetermined string (Points 4.11 and 4.12). The subject-matter and activities specified in Article 52(2) EPC can be considered to be “non-technical”, as that term has been used by the boards (Point 4.10).

T 619/05 - Facilitating transactions in diamonds/DIAMONDS.NET

in
Date of the Decision: 
2008-02-28
Headnote: 
The term “subject-matter”, without a qualifier, seems to indicate that Article 123(2) EPC applies to non-technical as well as technical subject-matter. Thus, also any amendments concerning non-technical subject-matter should be derivable from the patent application as filed. Since the members of a board of appeal are only required to be technically (or legally) qualified under Article 21 EPC, it will be up to the applicant (or patent proprietor) to provide evidence permitting a board to determine to its satisfaction how a person skilled in the relevant non-technical field would interpret the original patent application and the application (or patent) after amendment (see points 2.2 to 2.4 of the Reasons).

T 388/04 - Undeliverable mail/PITNEY BOWES

in
Date of the Decision: 
2006-03-22
Headnote: 
The extent to which subject-matter or activities are excluded from patentability under Article 52(2) and (3) EPC is notionally distinct from, and may be considered independently of, the question of inventive step. Subject-matter or activities that are excluded from patentability under Article 52(2) and (3) EPC remain so even where they imply the possibility of making use of unspecified technical means. Subject-matter or activities may be excluded from patentability under Article 52(2) and (3) EPC even where they have practical utility.
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