Capita Selecta from the "Board of Appeal and Enlarged Board of Appeal Case Law 2007"

PART II – BOARDS OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2007

I. PATENTABILITY

A. Patentable inventions

1. Technical character of the invention

In T 154/04 - Estimating sales activity/DUNS LICENSING ASSOCIATES (OJ EPO 2008, 46) the board, in refusing a request for referral to the Enlarged Board of Appeal, analysed the case law related to patentability of inventions and summarised the main principles. The board stated that Article 52(1) EPC 1973 expressed the fundamental maxim of the general entitlement to patent protection for any inventions in all technical fields. Technical character was a mandatory requirement for any patentable invention (Basic proposal MR/2/00e, page 43, No. 1).

The examination whether there is an invention within the meaning of Article 52(1) to (3) EPC 1973 should be strictly separated from and not mixed up with the other three patentability requirements referred to in Article 52(1) EPC 1973. This distinction abstracted the concept of “invention” as a general and absolute requirement of patentability from the relative criteria of novelty and inventive step, which in an ordinary popular sense were understood to be the attributes of any invention, as well as from the requirement of industrial applicability. Decisive for the presence of a (potentially patentable) invention was the inherent character of the claimed subject-matter.

The board stated that the distinction between the absolute requirement of inventions and the relative requirements of novelty and inventive step was not unknown in the national jurisprudence (Judgment of the German Federal Court of Justice X ZB 20/03 – elektronischer Zahlungsverkehr of 24 May 2004; Judgment of the England and Wales Court of Appeal in re Genentech Inc.’s Patent [1989] R.P.C. 147).

The board, citing G 2/88 (OJ EPO 1990, 93), inferred that nontechnical features to the extent that they do not interact with technical features to produce a technical effect could not establish novelty or inventive step.

In the case in point claim 1 of the main request defined a method for estimating sales activity of a product at a (non-reporting) sales outlet. The estimated sales activity was calculated essentially by correlating sales activities at reporting sales outlets according to the respective distance between the non-reporting sales outlet and the respective reporting sales outlet. The board held that such a method was not an invention within the meaning of Article 52(1) to (3) EPC 1973. Creating information about sales activities or other types of business data using mathematical and statistical methods to evaluate data gathered from the respective business environment was considered to be a business research activity, which like other research methods did not serve to solve a technical problem relevant to any technical field. The board judged that in analogy to schemes, rules, and methods of doing business, methods of business research were excluded “as such” from patentability under Article 52(2)© and (3) EPC 1973.

Interacting with and exploiting information about the physical world belonged to the very nature of any business related activity. Accepting such features as sufficient for establishing patentability would render the exclusion of business methods under Article 52(2)© EPC 1973 meaningless. Therefore, the board judged that gathering and evaluating data as part of a business research method, even if the data relates to physical parameters or geographic information as in the present case, did not convey technical character to a business research method if such steps did not contribute to the technical solution of a technical problem.

Determining sales data and geographical distances between outlets and using this data to estimate sales at specific outlets by means of the statistical method claimed and disclosed in the application did not solve any technical problem in a technical field. The definitions in claim 1 did not imply the use of any technical system or means. The term “database”, in particular, might be construed to designate any collection of data so that claim 1 encompassed methods which might be performed without using any technical means at all.

Article 52(2) and (3) EPC 1973 defines the matters to be regarded as non-inventions, excluding from patentability in particular mathematical methods (paragraph 2(a)) and schemes, rules, and methods for doing business (paragraph 2©) to the extent to which the application relates to these matters as such.

In T 306/04 Technical Board of Appeal 3.5.01 pointed out that the mere possibility of serving a technical purpose or of solving a technical problem was not sufficient to avoid exclusion under Article 52(2) and (3) EPC 1973 (see also T 388/04 - Undeliverable mail/PITNEY BOWES, OJ EPO 2007, 16).

In T 1351/04 - File search method/FUJITSU the application related to a computer-executable index file creation method and device and a file search method and apparatus. Technical Board of Appeal 3.5.01 held that an index file containing information to be used for searching a file was a technical means since it determined the way the computer searched information, which was a technical task. A computer-executable method of creating such an index file could therefore be regarded as a method of manufacturing a technical means, also having technical character.

2. Treatment of technical and non-technical features – inventive step

In T 688/05 - Ticket auctioning system/TICKETMASTER the application related to a computer controlled event ticket auctioning system, in which an unlimited number of participants may have simultaneous access to the desired event tickets.

Technical Board of Appeal 3.5.01 stated that Article 52(2)© and (3) EPC 1973 excluded rules for doing business as such from patentability and that it was generally held that this exclusion encompassed (abstract) auction rules. Automatic auctions, however, involving a computer network, do have an undeniable technical character in that they make use of technical means. Therefore, pursuant to decision T 258/03 - Auction method/HITACHI (OJ EPO 2004, 575), a computer-implemented auction system is an “invention” in the sense of Article 52(1) EPC 1973 but only involves an inventive step if its technical features are non-obvious.

The board discussed the principles of the examination of inventions comprising non-technical features as to inventive step. Rules 27(1)© and 29(1) EPC 1973 indicate that it must be possible to express an invention in terms of a solution having technical features to a technical problem. Although a non-technical feature may well serve to define the context in which a technical problem occurs, it cannot contribute to its solution since, by definition, it has no technical consequences.

According to the COMVIK approach (T 641/00 - Two identities/COMVIK, OJ EPO 2003, 352) it is permitted to take nontechnical features into consideration when formulating the technical problem. In this way it is possible to assess whether a technical implementation required inventive skill. The appellants have reiterated the much heard objection that this approach treats non-technical features as if they were known although they may in fact be part of the inventor’s contribution. In the board’s view this is however the unavoidable consequence of the requirement in the EPC that the invention must relate to a technical problem. The board added that the concept of “novelty” in Article 54(1) EPC 1973 was only defined for “inventions”. It does not apply to the exceptions enumerated in Article 52(2) EPC 1973. By analogy it could be held that claim features which do not contribute to the definition of an “invention” cannot be classified as new or not new in the sense of Article 54 EPC 1973. Nevertheless they may well form the only logical link between technical features resulting from their implementation. They must therefore be taken into consideration for the examination as to inventive step while at the same time not being permitted to contribute to it.

In Decision in T 1284/04 - Loan System/KING Technical Board of Appeal 3.5.01 regarded the COMVIK approach, which has been applied explicitly or implicitly by the boards of appeal for a long time, as wellestablished case law. The board added that the COMVIK approach does not consider the non-technical constraints as belonging to the prior art, but rather as belonging to the conception or motivation phase normally preceding an invention since they may lead to a technical problem without contributing to its solution. Such aspects have never been taken into account for assessing inventive step, irrespective of whether or not they were known from the prior art.

In T 336/07 the application related to a method of operating an electronic video poker machine in a sequence of display, detection and determination steps. It also included nontechnical aspects, in that the various steps of operation of the video poker machine were carried out in accordance with rules of playing a video poker game. Rules for playing games are explicitly mentioned in Article 52(2)© EPC 1973 as excluded from patentability.

Technical Board of Appeal 3.2.04 referred to T 641/00 - Two identities/COMVIK (COMVIK) and added that an invention which as a whole falls outside the exclusion zone of Article 52(2) EPC 1973 (i.e. is technical in character) cannot rely on excluded subject-matter alone, even if novel and non-obvious, for it to be considered to meet the requirement of inventive step. The board was of the firm belief that it could not have been the legislator’s purpose and intent on the one hand to exclude from patent protection such subject-matter, while on the other hand awarding protection to a technical implementation thereof, where the only identifiable contribution of the claimed technical implementation to the state of the art was the excluded subject-matter itself.

The board held that the mere fact that subject-matter, which is excluded per se under Article 52(2)© EPC 1973, 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 is implemented.

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.

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.

The board found that the subject-matter of the claims did not involve an inventive step. On this topic, see also T 1543/06 of 29 June 2007 of the same board of appeal.