Art. 52(3) - Exception to exclusion

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.

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.

In proceedings before the opposition divisions, late-filed facts, evidence and related arguments, which go beyond the “indication of the facts, evidence and arguments” presented in the notice of opposition pursuant to Rule 55© EPC in support of the grounds of opposition on which the opposition is based, should only exceptionally be admitted into the proceedings if prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the European patent. In proceedings before the boards of appeal, new facts, evidence and related arguments, which go beyond the “indication of facts, evidence and arguments” presented in the notice of opposition pursuant to Rule 55© EPC in support of the grounds of opposition on which the opposition is based, should only very exceptionally be admitted into the proceedings in the appropriate exercise of the board’s discretion, if such new material is prima facie highly relevant in the sense that it can reasonably be expected to change the eventual result and is thus highly likely to prejudice maintenance of the European patent; and having regard also to other relevant factors in the case, in particular whether the patentee objects to the admissibility of the new material and the reasons for any such objection, and the degree of procedural complication that its admission is likely to cause.

Giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem. Even if the basic idea underlying an invention may be considered to reside in a computer program a claim directed to its use in the solution of a technical problem cannot be regarded as seeking protection for the program as such within the meaning of Article 52(2)© and (3) EPC.

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.

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.

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.