INFORMATION FROM THE EPO
Examination of computer-implemented inventions at the European Patent Office with particular attention to computer-implemented business methods
Introduction
The purpose of this article is to set out the practice at the EPO with regard to the examination of computer-implemented inventions. It thereby aims to assist practitioners filing applications in this area, who may have questions following a number of decisions by the EPO boards of appeal, as well as decisions by some national courts.
While certain subject-matter and activities are excluded from patentability under the provisions of Article 52(2) and (3) EPC, a computer-implemented method may be the subject of patent protection under the EPC. This article describes how the provisions of Articles 52 and 56 EPC are applied in the examination of computer-implemented inventions and in particular to computer-implemented business methods.
Computer-implemented invention
An invention whose implementation involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realized wholly or partly by means of a computer program is termed a computer-implemented invention.
Exclusions to patentability
Article 52, paragraph 1, EPC 2000 states that European patents shall be granted for any inventions, in all fields of technology, provided they are new, involve an inventive step and are susceptible of industrial application.
The EPC does not provide a definition of an invention, however it does provide a non-exhaustive list of particular subject-matter and activities in Article 52, paragraph 2, that shall not be regarded as inventions.
However, the interpretation of the non-exhaustive list is restricted by Article 52, paragraph 3, to such subject-matter or activities as such. The term 'as such' of Article 52(3) was intentionally not defined in the EPC to provide some flexibility in the scope of what activities and subject-matter are considered excluded from patentability.
In the interpretation of the scope of excluded subject-matter and activities the EPO has consistently considered that technical character is an essential requirement for patentability of an invention. Where there is no technical character, there is no invention within the meaning of Article 52(1) EPC. This interpretation is supported, for instance, by Implementing Regulations Rules 271 and 29 2 EPC.
Given that an invention must have technical character, it is generally held that only subject-matter and activities that represent purely abstract concepts devoid of any technical implications are non-inventions within the meaning of Article 52 EPC (T 258/03, OJ EPO 2004, 575).
Examples of excluded subject-matter
A computer-implemented method may be defined at least in part by: mathematical methods, presentations of information, aesthetic creations having cognitive effects and schemes for doing business. The following examples define subject-matter or activities which are void of technical character and therefore when regarded on their own, are excluded from patentability under Article 52(2)(a)-(d) taking into account the provision of Article 52(3) EPC.
A mathematical method used for designing electronic filters (Guidelines C-IV, 2.3.3).
A set of features only capable of having an aesthetic or cognitive effect on the user. (T 125/04).
Items of an abstract or intellectual character such as a scheme for organising a commercial operation.
Computer programs that are not capable of causing a technical effect which goes beyond the normal technical effects that are always present when a program runs on a computer (T 1173/97).
Subject-matter defined solely by the cognitive content of information as directed to an observer where such content does not affect the technical working of the method or the system in which it is used but is rather used during the operation of a system or execution of a method (T 1194/97).
Technical considerations
It is notable that although the requirement for technical character is satisfied if technical considerations are required to carry out an invention (T 769/92, OJ EPO 1995, 525), such technical considerations must be reflected in the claimed subject-matter. The involvement of technical considerations, however, is not sufficient for a method which may exclusively be carried out mentally to have technical character (T 914/02).
Subject-matter comprising technical and non-technical aspects
In particular computer-implemented business methods are typically described in terms of subject-matter which, a priori, appears to be separable into aspects having technical character and aspects lacking technical character. Such subject-matter is not excluded from patentability since any subject-matter involving technical means, and therefore having technical character, is an invention within the meaning of Article 52(1) EPC (T 258/03, OJ EPO 2004, 575). Thus, it is the presence of novelty, inventive step and industrial applicability which determine the patentability of such subject-matter.
Assessment of subject-matter as a whole
To carry out an objective and consistent examination of a computer-implemented invention, an assessment is required to determine which aspects of a subject-matter do and which aspects do not contribute to the technical character of the subject-matter as a whole (T 641/00, OJ EPO 2003, 352, reasons 7).
This assessment commences with the identification of those aspects of the subject-matter which, when considered independently of the remainder of the subject-matter, constitute subject-matter or activities in the sense of Article 52, paragraphs 2, and 3. These identified aspects may be termed the apparently non-technical aspects of the subject-matter.
The remaining aspects have technical character and may be termed the clearly technical aspects of the subject-matter.
Technical character of the whole subject-matter
A further assessment is now made to identify whether it can be derived, from the entire contents of the application as filed, that any of the apparently non-technical aspects are capable of causing a change in the physical nature or technical functioning of the clearly technical aspects (T 26/86, OJ EPO 1988, 19, reasons 3.3) or that they reflect technical considerations required to carry out the disclosed invention. Any apparently non-technical aspect thus identified contributes to technical character and is therefore not purely non-technical.
This further assessment, which considers the subject-matter as a whole, may identify that all aspects contribute to technical character and hence contribute to a technical solution of a technical problem. In this case, there is no purpose in continuing to separate the subject-matter into technical and non-technical aspects.
For example, it may be ascertained for a subject-matter comprising information content (apparently non-technical aspect) and an apparatus (clearly technical aspect) that the information content is used during the operation of the apparatus in a manner that impacts or takes account of the technical function of the apparatus and thus contributes to technical character.
However, if it were ascertained that the apparently non-technical aspects do not influence the physical nature or technical functioning of the clearly technical aspects and also that they do not reflect any technical considerations required to carry out the disclosed invention, then the non-technical aspects do not cause a technical effect in their interaction with the clearly technical aspects. In this situation, the subject-matter comprises clearly technical aspects that contribute to technical character and purely non-technical aspects that do not.
For example, if data to be processed by a process (apparently non-technical aspects) neither constitute the operating parameters of a device nor affect the physical/technical functioning of a device (clearly technical aspects) and if the process does not solve a technical problem then that process and its associated data do not contribute to technical character (T 158/88) and thus form the purely non-technical aspects of the subject-matter.
Assessment of inventive step of a claimed invention
Inventive step
Article 56, first sentence, EPC states that an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.
State of the art
The "state of the art" for the purposes of considering inventive step is, as defined in Article 54(2) EPC, to be understood as concerning such kind of information which is relevant to some field of technology (T 172/03, not published). Therefore, the closest prior art will be from a technical field and is established on the basis of the technical content identified in the claims and description.
Once the prior art has been established, all the differences between the subject-matter of the claim and the closest prior art are identified.
Technical contribution
When assessing the inventive step of subject-matter, it is the technical contribution it makes over the state of the art that is important. Purely non-technical aspects not contributing to technical character are not relevant for assessing inventive step (see T 37/82, OJ EPO 1984, 71; T 294/89, not published in OJ EPO and T 641/00, OJ EPO 2003, 352). They may, for example, only contribute to the solution of a non-technical problem, for instance a problem in the field of business administration (see T 931/95, OJ EPO 2001, 441).
Objective technical problem
The objective technical problem must be one which, in a realistic situation, the skilled person may be asked to solve. The skilled person should be presumed to be an ordinary practitioner in a field of technology (T 641/00, OJ EPO 2003, 352, reasons 8).
Furthermore, the objective technical problem must be formulated in such a way that there is no possibility of an inventive step arising from the purely non-technical aspects of the subject-matter (T 1053/98, not published in OJ EPO).
In this respect, purely non-technical aspects which define an aim to be achieved in a non-technical field and which therefore do not contribute to the technical character of a disclosed invention, may appear in the formulation of the technical problem in the form of a requirements specification provided to the person skilled in a technical field as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met (T 641/00, OJ EPO 2003, 352; T 1053/98, not published in OJ EPO).
However, it is noted that the objective technical problem must be so formulated as not to contain pointers to the technical solution, since including part of a technical solution offered by an invention in the statement of the problem must, when the state of the art is assessed in terms of that problem, necessarily result in an ex post facto view being taken of inventive activity.
If a claimed subject-matter is differentiated from the prior art only through purely non-technical aspects, that subject-matter does not satisfy at least the requirement for an inventive step because there can be no technical contribution to the art and hence no objective technical problem can be formulated.
If a claimed subject-matter is differentiated from the prior art through aspects contributing to technical character as well as purely non-technical aspects, then the objective technical problem is formulated by taking into account those aspects contributing to technical character, with the purely non-technical aspects defining a constraint to be met as part of the problem to be solved.
Summary
Claimed subject-matter is always considered as a whole when evaluating whether individual features contribute to its technical character. However, only that part of the subject-matter which is determined to contribute to its technical character is taken into account when assessing inventive step. The purely non-technical aspects of a claimed subject-matter which define an aim to be achieved in a non-technical field may appear in the formulation of the technical problem in the form of a requirement specification, in particular as a constraint that has to be met.
It is noted that the EPO practice differs from that of the USPTO in that the EPO acknowledges an inventive step only when an invention is a non-obvious technical solution to a technical problem whereas the USPTO demands no such technical contribution in order to satisfy the requirement of non-obviousness.