Capita Selecta from the "Board of Appeal and Enlarged Board of Appeal Case Law 2010"
PART II – BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2010
I. PATENTABILITY
A. Patentable inventions
1. Patent protection for technical inventions
1.2 Examination of subject-matter or activities under Article 52 EPC
In T 528/07 the invention, a computer system, consisted of a mixture of technical and non-technical features. The board stated that in order to examine this type of subject-matter the board would normally apply the “Comvik approach” (cf. T 641/00). The appellant had however argued that since Article 52(1) EPC had been brought into line with Article 27(1) TRIPS, it had to be interpreted in the light of the object and purpose of TRIPS and that would require a modification of the Comvik approach.
The board held that under Article 27(1) TRIPS a patent shall only be granted if it is new and involves an inventive step. TRIPS however does not stipulate how these requirements are to be applied. The TRIPS member states are free to adopt different standards for each patentability requirement, such as inventive step. The Comvik approach is one facet of the standard applied by the EPO.
2. Non-inventions under Article 52(2) and (3) EPC
2.1 Computer-implemented inventions
In G 3/08 (OJ EPO 2011, 10) the President of the EPO, making use of her power under Article 112(1)(b) EPC, made a referral to the Enlarged Board of Appeal on several points of law relating to the application of the exclusion of computer programs as such, and the limits of patentability in the field of computing.
The referral was found inadmissible under Article 112(1)(b) EPC. The Enlarged Board of Appeal noted that there was indeed a difference between the positions taken in T 1173/97 (OJ EPO 1999, 609) and T 424/03 dated 23 February 2006 concerning whether a claim to a program on a computer-readable medium necessarily could avoid exclusion from patentability under Article 52(2) EPC. It was still however necessary to decide whether this difference constituted a divergence in the case law. The President of the EPO had considered that decision T 424/03 placed emphasis on the manner in which the computer program was claimed, whereas T 1173/97 (OJ EPO 1999, 609) had placed the emphasis on the function of the computer program rather than the manner in which it was claimed (e.g. as a computer program, a computer program product or a computer-implemented method).
The Enlarged Board of Appeal observed that the position of the case law was that a claim in the area of computer programs could avoid exclusion under Article 52(2)© and (3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium. However, it was also quite clear from the case law of the boards of appeal since T 1173/97 that if a claim to program X falls under the exclusion of Articles 52(2) and (3) EPC, a claim which specifies no more than “Program X on a computer-readable storage medium,” or “A method of operating a computer according to program X,” would always still fail to be patentable for lack of an inventive step under Articles 52(1) and 56 EPC. Merely the EPC article applied was different. This approach had been consistently developed by the boards of appeal since T 1173/97.
2.2 Methods for performing mental acts
In T 1326/06 the board took the view that processes for encoding/decoding or signing electronic communications by RSA had to be regarded as technical processes, even if they were based essentially on mathematical processes. This assessment was in line with decisions T 953/04 and T 27/97.
D. Inventive step
4. Treatment of technical and non-technical features
In G 3/08 (OJ EPO 2011, 10) the Enlarged Board of Appeal analysed in detail the jurisprudence relating to the patentability of computer programs. It stated that none of the points of law referred by the President cast doubt on the validity of the approach for assessing inventive step developed by Board 3.5.01.
In line with this procedure summarised in T 154/04 (OJ EPO 2008, 46), assessing inventive step involves taking account only of features which contribute to the technical character of the claimed subject-matter. The Enlarged Board was unable to identify any inconsistent jurisprudence, and accordingly ruled that the judgment handed down in summary form in T 154/04 had evidently created a practicable system for delimiting innovations for which a patent can be granted.
In T 354/07 the board ruled that claim 1 alone, which related to a process for producing software programs by means of a computer system, was sufficient to demonstrate lack of inventive step. As a rule, such processes possess both technical and non-technical features.
The board pointed out that software development and manufacture takes place in several stages from demand analysis through various design phases to production. All these stages essentially involve intellectual activity comparable to an engineer’s design work, even if it is supported by programming tools and what is being designed is a technical system.
While the design and programming of complex systems in particular require the active involvement of engineers and the application of technical knowledge, the eventual result to which each of these development phases is directly geared is not the technical solution of a technical problem but a requirements specification, a data, process and/or function model, or a program code.
This assessment applies in particular to meta methods, which are concerned with the process of software production itself on an even more abstract level. For instance, they give the software developer instructions as to how the design process should be structured and organised or what modelling methods are to be used.
These kinds of conceptual processes and meta methods for software production generally have no technical features relevant for patentability and thus cannot provide a basis for inventive step, unless, in an individual case, a direct causal connection can be proved with a technical effect which is relevant to the solution of a technical problem.
In T 1051/07 the application related to a transaction system for providing a financial transaction service to a subscriber. The closest prior art disclosed a secure payment system allowing a user (payer) to pay, using e.g. a mobile phone, a service provider (payee) via a host computer.
The board stated that the objective problem to be solved relative to the closest prior art was to provide the system with means allowing a user to put money into his account in the host computer (or withdraw money from his account). In the decision under appeal the claim then under consideration was in substance held to be the straightforward technical implementation of an administrative banking procedure lying outside the patentable regime.
The board generally agreed that reloading the host computer account fundamentally constituted (part of) a business method and, thus, lacked technical character. However, insofar as administrative banking procedures indeed lacked technical character, present claim 1 was not confined to merely reciting an administrative banking procedure alongside straightforward technical means for its implementation, but rather provided a technical solution, involving technical means for the technical problem of how to reload such an account. The solution as claimed was not considered obvious by the board. Accordingly, the subject-matter of claim 1 involved an inventive step.
In T 1171/06 the requests related to a process or apparatus for modelling a mechatronic system in a motor vehicle, the structuring of this system into components and communication links in accordance with a set of imaging rules being converted into an object-orientated modelling language. The board took the same line as that adopted in decision T 354/07, as the two processes involved the modelling of comparable technical systems. It was unable to identify a technical effect relevant to the solution of a technical problem and having a causal connection with one of the claimed processes. Accordingly, it concluded that the subject-matter of claims 1 and 2 in both requests was not technical, but comprised processes for a conceptual or intellectual activity pursuant to Article 52(2)© and (3) EPC, and as such was not patentable.
The subject-matter of claim 3, which related to an apparatus, was found by the board to be an invention within the meaning of Article 52(1) EPC (T 258/03, OJ EPO 2004, 575). However, it ruled that the non-specific indication of an “apparatus for” the support of a non-technical process alone made no identifiable technical contribution, for instance beyond what was offered by any standard commercially available PC known at the priority date. The subject-matter of claim 3 thus lacked inventive step.