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Art. 56 - Inventive step

T 172/03 - Order management/RICOH

in
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

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 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).
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