Capita Selecta from the "Board of Appeal and Enlarged Board of Appeal Case Law 2006"

This article contains a selection of sections from the “Board of Appeal and Enlarged Board of Appeal Case Law 2006”, as published in Special Edition Number 6 of the Official Journal of the European Patent Office. The selected sections all bear relevance to the subject of computer-implemented inventions. The sections have only been slightly reformatted for this site; the contents has been left untouched.

PART II – BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2006

I. PATENTABILITY

A. Patentable inventions

1. Technical character of the invention

According to the established case law of the boards of appeal, to provide an “invention” within the meaning of Article 52(1) EPC it is necessary and sufficient for the claimed teaching or claimed method to have technical character (T 930/05; T 1227/05 - Schaltkreissimulation I/INFINEON TECHNOLOGIES, OJ EPO 2007, T 421/06 - Schaltkreissimulation II/INFINEON TECHNOLOGIES).

In T 930/05 it was explained, regarding the concept of invention, that lack of technical character is a common feature of the examples of non-inventions listed in Article 52(2) EPC. A connection between the concept of invention and the technical character of the invention immediately suggests itself, since the list of exceptions in Article 52(2) EPC, referring to Article 52(1) EPC, is to be understood as a negative definition of the concept of invention. To possess technical character, the claimed method must involve at least one technical means (T 258/03 - Auction method/HITACHI, OJ EPO 2004, 575). If this is lacking, the claimed matter is an abstract intellectual concept devoid of any technical implications. This means, inter alia, that purely mental acts (T 914/02) or human perception phenomena (T 619/02, OJ EPO 2007, 63), or claimed teachings which do not necessarily use technical means (T 388/04 - Undeliverable mail/PITNEY BOWES, OJ EPO 2007, 16) are not covered by the concept of “invention” and must fall at the gateway hurdle of Article 52(1) to (3) EPC, which is not and cannot be removed by the case law of the boards of appeal. Examination for technical character, according to the case law of the boards of appeal, is performed independently of prior art, in particular of the question of a contribution to the art, since the technical character of a product or method does not depend on whether the same or a similar product or method existed before. However a claimed partial feature susceptible of a non-technical interpretation is not regarded as a technical feature; the mere possibility of using technical means is not sufficient.

In T 1227/05 - Schaltkreissimulation I/INFINEON TECHNOLOGIES (OJ EPO 2007) the application related to a computer implemented method with mathematical steps for simulating the performance of a circuit subject to 1/f noise. 1/f noise can be simulated by feeding suitable random numbers into the circuit model.

The board concluded that, as the method according to independent claim 1 or 2 was computer-implemented, it used technical means and by that very token had technical character (see T 258/03 - Auction method/HITACHI, OJ EPO 2004, 575 and T 914/02). The board then discussed which other features in its view contributed to the technical character of the method, as only such features may and must be considered for the purpose of assessing inventive step (see T 641/00 - Two identities/COMVIK, OJ EPO 2003, 352). Beyond its implementation, a procedural step may contribute to the technical character of a method only to the extent that it serves a technical purpose of the method. The board was persuaded that simulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose for a computer-implemented method, provided that the method is functionally limited to that technical purpose.

Real technical applications for computer implemented simulation methods are themselves to be regarded as modern technical methods which form an essential part of the fabrication process and precede actual production, mostly as an intermediate step. In that light, such simulation methods cannot be denied a technical effect merely on the grounds that they do not yet incorporate the physical end product (distinction from T 453/91).

In T 421/06 - Schaltkreissimulation II/INFINEON TECHNOLOGIES the application was based on claims similar to those in T 1227/05 - Schaltkreissimulation I/INFINEON TECHNOLOGIES. The simulation method extended the sequence of random numbers generating 1/f noise, whereas the method disclosed in T 1227/05 - Schaltkreissimulation I/INFINEON TECHNOLOGIES generated a fixed number of random numbers, corresponding to the intended number of simulation steps, as a “batch” in advance, in order to make them available for the following circuit simulation. The board concluded that the claimed simulation of a circuit did not constitute a mathematical method as such or a computer program as such, although mathematical formulae and computer instructions were used in carrying out the simulation. Even where the invention was preceded by an intellectual or mathematical activity, the claimed result could not be equated with that activity. The claims did not relate to the devising of a simulation method, but to a simulation method that could no longer be carried out by purely intellectual or mathematical means. Thus the simulation performed technical tasks which were typical of the work of a modern engineer. All the steps relevant to the circuit simulation, i.e. including the mathematically expressed claim features, contributed to the technical character of the simulation method according to claim 1 or 2 and could therefore also establish the novelty of the method vis-à-vis the previous application.

In T 471/05 claim 1 related to a method consisting essentially in designing the optical system so that substantially all light rays imaged by the optical system between two predetermined points on the optical axis of the system satisfied the algebraic condition specified in the claim. The board held that the claim merely formulated a series of mathematical and optical abstract concepts without properly requiring a physical, technical implementation. Neither the claimed design method nor the resulting design required a technical activity or a technical entity. The claimed method could be carried out as a purely mental act or as a purely mathematical design algorithm, and, consequently encompassed embodiments falling within the category of methods for performing mental acts as such and within the category of mathematical methods as such both expressly excluded from patent protection under Article 52 EPC. The appellant submitted that the claimed method defined an activity that required the use of technical means and involved technical considerations. The board was not persuaded by this argumentation and stated that it could not be denied that the method could be carried out using some physical or technical means or in the form of a physical activity that results in a physical entity, and that such implementations of the method constituted physical, technical activities not excluded from patent protection. Nonetheless, the method did not require the use of technical means and the method was not restricted to physical, technical implementations, and the fact that the claimed method encompassed non-excluded implementations did not overcome the fact that the claimed method also encompassed excluded subject-matter. Thus, as long as the claimed design method was not confined to physical, technical implementations, the claimed subject-matter encompassed embodiments excluded from patentability.

C. Inventive step

2. Reformulation of the technical problem

Also in T 452/05 it was necessary to reformulate the technical problem. The board referred to the Guidelines for Examination CIV, 9.8.2 where it is summarised that in general any effect provided by the invention may be used as a basis for the reformulation of the technical problem as long as said effect is derivable from the application as filed.

4. Treatment of technical and non-technical features

In T 309/05 - Domain name generation/RAREDOMAINS.COM the invention related to a system which took input from a user, for example “Smith”, and concatenated this input with stored text strings, such as “ontheweb” and “Internet”. The system then queried a data source, typically a domain name registrar, whether the corresponding domain names, e.g. “Smithontheweb.com” and “SmithInternet.com” were available for registration. Those which were found to be available were notified to the user. The claim specified that the source of the strings to be concatenated was a “data storage facility” and that the generation of candidate domain names, querying and notifying were carried out by a “processor arrangement”.

In the board’s view the claimed invention involved a mixture of “technical” and “non-technical” considerations. The board found it appropriate to adopt the approach used in T 641/00 - Two identities/COMVIK (OJ EPO 2003, 352) whereby the features which make no contribution to the technical character of the invention cannot support the presence of an inventive step; the non-technical aims achieved may be taken into account when formulating the technical problem. In the present case the problem to be formulated was to provide an alternative way of generating a number of domain names having a good chance both of being available, and of being memorable and otherwise acceptable to the user. The board stated that 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 Article 52(2)(b) and 52(2)© EPC. 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.

Also in T 928/03 the board followed T 641/00 - Two identities/COMVIK (i.e. treating non-technical aspects as constraints in the formulation of the technical problem). The application related to an interactive video game in which a user controls at least one player character displayed on a screen. The board stated that making a possibly concealed indicator clearly visible on a display screen to the user of an interactive video game does not exclusively address a human mental process but contributes an objective technical function to the display. The functional quality is not cancelled by the fact that the visualised information will also enter into a decision of the user interacting with the video game displayed on the screen. Applying the approach of T 641/00 - Two identities/COMVIK in a fair manner must bear in mind its purpose: on the one hand, the approach is to make sure that nontechnical aspects do not support a finding of inventiveness; on the other hand, actual contributions to the technical character by any feature of an invention must be taken into account when assessing inventive step. In this context, a game rule constraint has to be distinguished carefully from its technical implementation.

In T 958/03 the invention related to a method and apparatus for generating purchase incentives based on price differentials. The appellant had not disputed that the apparatus of claim 1 differed from that of the closest prior art by its functions and not by its hardware. In the board’s judgment, the appellant’s main contribution resided in a refined marketing scheme which bases the coupon issuing process on commercial and/or psychological assumptions about consumer behaviour in the light of price differentials and brand loyalty. The board confirmed T 641/00 - Two identities/COMVIK (OJ EPO 2003, 352) and T 531/03 that a purely non-technical idea, i.e. an idea that does not contribute to the technical character of the subject-matter claimed, cannot enter into the examination for inventive step. In the present case the non-technical idea rather belonged to the non-patentable motivation phase preceding in principle any invention. It might therefore be included in the formulation of the technical problem and, thus, is disregarded in the inventive step assessment.

In T 1212/04 the board confirmed that a feature which has no technical effect or function in the context of the claimed subject-matter cannot contribute to the inventive step of the claimed matter within the meaning of Article 56 EPC (T 619/02, OJ EPO 2007, 63).

V. PROCEEDINGS BEFORE THE EPO

A. Examination procedure

1. Unsearched subject-matter

In T 1242/04 - Provision of product-specific data/MAN (OJ EPO 2007, 421) during the search phase a declaration under Rule 45 EPC was sent to the applicant reminding him that a search would be carried out during examination if the deficiencies that necessitated a Rule 45 declaration were corrected. During the examination phase, no “additional” search was carried out. The examining division refused the European patent application for lack of technical character in accordance with Article 52(2) and (3) EPC.

The board noted that Rule 45 EPC applied to cases which did not comply with the provisions of the Convention to such an extent that it was not “possible” to carry out a “meaningful search” into the state of the art on the basis of all or some of the claims. Thus a Rule 45 EPC declaration was allowed only where a search was not possible. In other cases the search division would draw up a partial search report, “so far as is practicable”. In the board’s view, Rule 45 EPC related only to the practicability of a search and not to the potential relevance of its results in subsequent substantive examination. That was clear from the actual wording of the rule, which referred to the impossibility of carrying out a meaningful search in the event of serious violations of the provisions of the Convention, for example a fundamental lack of clarity or the absence of any technical character whatsoever. If these criteria were not met, searching could not be refused by reference to Rule 45 EPC, regardless of whether the search in the search division’s view would not produce any result of significance to subsequent proceedings. In the final analysis, the search is the basis for substantive examination (and now also for the extended European search report under Rule 44a EPC) and not vice versa. Moreover, it was not evident that claims directed only to technical features that the search division deems “trivial” could prevent a meaningful search into the state of the art, which in fact ought to be particularly simple in such a case.

The board held that where the application’s subject-matter had non-technical aspects, a declaration under Rule 45 EPC might be issued only in exceptional cases in which the claimed subject-matter, i.e. the entire set of claims including parallel and dependent claims, clearly had no technical character.

In the board’s view, however, it is not always necessary in such circumstances to carry out an additional search in the documented prior art. According to the established case law of the boards of appeal it is possible to raise an objection of lack of inventive step without documented prior art (see e.g. T 939/92, OJ EPO 1996, 309). That should be allowable where the objection is based on “notorious knowledge” or indisputably forms part of the common general knowledge. In such cases it would be inappropriate to carry out an additional search for documented prior art on purely formal grounds.