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Wednesday, 23 May 2007

More EPO technical thoughts

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.

10 comments:

Gerontius said...

This fits in with my understanding that, in that previous case a technical problem of improving an optical system was being solved. This was not negated by the fact that computers and maths were some of the tools used to solve it.

The case here did not have a technical problem to be solved and the use of a computer couldn't help.

John Cairns said...

My understanding is as follows:

If there are no technical means used, an objection is raised under Art.52(1),(2) [see T931/95 - business purpose is a non-technical purpose and gives no technical character; and, distinguishing T931/95, T258/03 - using technical means for a purely non-technical purpose gives no technical character];

If technical means are used, then an objection is raised on lack of inventive step [see T641/00, as set out below. My grip of this decision is that, under inventive step, only those features are taken into account which contribute to the technical character, so no "business" steps or functions.]. We then have to look at analysing the technical contribution of these features, using the problem-solution approach as follows:
- Technical problem: the problem itself does not have to be technical, but if it is not, then the solution must be. In T1002/92, a non-technical problem was solved in a technical way. Since the solution was not obvious, the invention was patentable. Formulation of the problem may contain a pointer to the (new) business aim to be achieved in a non-technical field [i.e. you may add the business goal in the problem]. This gives the incentive for setting out to provide the technical part of the claim.

I'm at a loss to see how you can look at patentability of methods of doing business any other way.

Tobias said...

The decisive question in this area is: "How much knowledge does the person skilled in the art receive in advance?" - or to put it bluntly - "How smart is the skilled person?"

If the technical problem to be solved includes all new rules for the "method of doing business", the skilled person will rarely have problems to implement the solution, as it is already provided. COMVIK is always quoted, but I think already PBS Pension Benefit System T931/95 paved the way (skilled person has knowledge of the concept of the improved system).
Whereas, for other areas the skilled person is not equipped with the required knowledge from the excluded categories in advance, e.g. the whole area of signal or image processing, or the task of designing an optical system, or for an example within the field of computer science, see Microsoft T 424/03.
Obviously, there is a different handling of the excluded categories, or, to use the IPKat's words "Some exclusions are more equal than others".

The issue arising is whether this can be justified, and it seems as the Board likes to refer to the "technical character". Besides the fact that the meaning doesn't appear to be well-defined, as the IPKat points out, we should also not forget that the word "technical" does not show up within the 178 articles of the EPC. Is this principle really so implicit that the EPC's framers forgot to mention it in the Convention and hid it just "implicitly" in the Regulations? Maybe the inequality of the excluded categories is also so "implicit" that the framers didn't find it necessary to make list them differently...

David said...

My puzzlement about this one is more to do with the use of the term "technical character". In the previous decision of T 471/05, the Board said:

"The criteria for technical character of a claimed invention discussed in decision T 619/02 implicitly presuppose that the claimed subject-matter defining the matter for which protection is sought relates to a physical entity or a physical activity" (point 2.2 of the reasons)

The Board in that case then went on to say that including the feature of the (otherwise unallowed) mathematical method being carried out on a computer provided the necessary technical character. This is clearly different to the way in which the term is used by the Board here. Can someone explain to me what the difference is between "technical character" and "technical effect"? Based on what I know from the case law, the invention in T 1284/04 should have been labelled as having technical character, i.e. was not excluded at the first hurdle for not being an "invention" under Article 52(2), but would in any case have failed the test for inventive step for not providing any technical effect, since the only advance was in a method for doing business.

David said...

Thank you Tobias for your contribution (which I only saw after I wrote mine above). As you guess, I tend to agree that the different exclusions appear to be treated differently, for reasons that are not (to me at least) entirely clear. It does always seem to come down to what the EPO defines as being "technical", but whenever we seem to be coming to a reasonably consistent definition it slips away again due to sloppy use of terminology.

Anonymous said...

Of course, T 0914/02

http://legal.european-patent-office.org/dg3/biblio/t020914eu1.htm

confuses the position again with regard to this elusive term "technical character"

Anonymous said...

@david Yes "technical character is used inconsistently and I'd substitute its use.

The test is

Step 1. Are there any technical features

Step 2. Is it inventive using problem-solution approach. Features which don’t contribute to solving the technical problem aren’t considered.

Some boards use "character" to mean features in step 1, others to mean the solution to the problem in step 2 and some use it for both. I really wish they wouldn’t use the term at all since it isn’t useful. Once you understand that steps 1 and 2 are unrelated and which they are referring to the recent decisions do (mostly) make sense and are consistent.

@tobias - not in the Articles but in the rules.

Step 1 comes form Rule 29 (1) and step 2 from Rule 27 (1c).

@John I mostly agree but the EPO do require it to be a technical problem. T1002/92 said "the objective technical problem underlying the
patent in suit is to provide apparatus means which
allow to combine the individually service points...."

Anonymous said...

One wonders why T 471/05, point 4.3 does not spend a word on the COMVIK approach. If none of the features of the main request contribute to a technical character, then why do they in the 2nd aux request?

allergy usgab said...

Excuse me once again, but..."Can someone explain to me what the difference is between "technical character" and "technical effect"?"

Anonymous said...

A feature has technical character if it contributes to a technical effect, i.e. if it, possibly in combination with other technical features, solves a technical problem.

In T 471/05, main request, the Board reasons that only a design is produced. A design is just an abstract thing, so no technical effect is achieved / technical problem is solved.

The second auxiliary request only adds a feature "using an optics design program". So some unspecified part of the design method is done on a computer. This, in itself, is technical. Technical problem: how to perform some unspecified step automatically. Solution: use a computer. Clearly, this should not give you an inventive step.

So claim 1 of the second auxiliary request does have technical character, it passes Art 52(2),(3). But it still produces only a design. The design is still an abstract thing. The features contributing to the quality of the design still lack technical character. I see no inventive step.

Suppose claim 1 is amended to include a feature "manufacturing the optical system so designed". An optical system is technical. The features contributing to its quality are now technical as well. Now the reasoning of the Board for the 2nd aux request applies. A method of (physically) manufacturing an inventive system clearly must be inventive itself, whether the method is (partially) implemented on a computer or not.

Alternatively, if you insist that an abstract design of an optical system is technical (has technical character by itself, independent of a step of manufacturing the system), then I don't see what difference it makes whether the design is produced with the help of a computer (or with the help of paper and pencil, for that matter) or not.

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