The IPKat is a little puzzled by a recent decision of the EPO Technical Appeal Board. Published as T 1284/04, the decision relates to a refusal of an application (published as EP0818015) regarding a method of "creating a financial instrument and administering an adjustable rate loan system".
The Board refused the appeal, finding that the application lacked an inventive step under Article 56 EPC. The main reason appears to be that a particular feature of the financial algorithm in the application (that of periodically adjusting the level of compensation on financial contracts), performed on a computer, was "a non-technical constraint as explained in decision T 641/00" (point 3.3 of the reasons).
In their reasons, the Board made the following comments,
"According to the approach defined in decision T 641/00 - Two identities/COMVIK (OJ EPO 2003, 352), an inventive step can result only from claim features contributing to a technical character. The Board regards this approach, which has been applied explicitly or implicitly by the Boards of Appeal for a long time (for references see T 764/02 - Banking services/ONLINE RESOURCES, point 11, not published in the OJ EPO), as well-established case law.
The Board would nevertheless like to add 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 (cf also the decisions cited in 'Case Law of the Boards of Appeal of the European Patent Office', 5th edition December 2006, chapter I.D.8.4)" (point 3.1 of reasons).
What the IPKat would like to know is how this can be squared with other decisions on 'excluded' subject matter, such as that of T 471/05 (reported and discussed on the IPKat here). Is it as simple as saying that methods for doing business can never contribute to a technical problem-solution analysis, whereas mathematical methods can? Or is it more complicated than that? Is the term 'technical character', which was used in this decision and in T 471/05, being used in the same way? What has happened to 'further technical effect' arguments, and are they still applicable? The IPKat would be interested to see if anyone can enlighten him.