Software patents for emerging tech since 2008

Softwarepatente in Europa: Auf den technischen Beitrag kommt es an! (T1784/06)


In der Entscheidung T 1784/06 (Classification method/COMPTEL) vom 21. September 2012 ging es (wie so oft) um die Frage der Patentierbarkeit eines “gemischten” Patentanspruchs mit technischen und nicht-technischen Merkmalen. Die Kammer 3.5.01 gibt in diesem Zusammenhang eine anschauliche Übersicht über den COMVIK-Ansatz, wonach für die erfinderische Tätigkeit nur die technischen Merkmale zählen:

Aus der Begründung

[2.] The COMVIK approach to assessing inventive step under Article 56 EPC 1973

The Board stands by the Comvik approach that only features contributing to the technical character of claimed subject-matter enter into the examination for inventive step, see T 641/00-Two identities/COMVIK, OJ EPO 2003, 352, point 6:

“… where a feature cannot be considered as contributing to the solution of any technical problem by providing a technical effect it has no significance for the purpose of assessing inventive step.”

[2.1] As patents can be granted only for technical subject-matter (Article 52(1)(2)(3) EPC), it is consequential that a (non-obvious) contribution which justifies the grant of a patent has to have a technical character. It would appear paradoxical to the Board to recognise an inventive step on the basis of a non-technical innovation (such as an organisational, administrative, commercial or mathematical algorithm) having no technical implication other than the (obvious) desire for its implementation on a general-purpose computer.

Already before the Comvik decision, technically non-functional modifications were considered as irrelevant to inventive step (see e.g. T 72/95 dated 18 March 1998, point 5.4).

[2.2] According to the appellant, claimed subject-matter as a whole should be examined for the presence of an inventive step once the subject-matter as a whole has been found to meet the technology criterion of Article 52(1)(2)(3) EPC. The appellant argues that Article 56 EPC 1973 should be applied independently of Article 52(1)(2)(3) EPC because Article 52(2) EPC has to be applied independently of Article 56 EPC 1973 (reply dated 25 April 2012, e.g. page 4, lines 15 to 21; bottom of page 21).

The Board does not accept such formal reasoning and points out that it is normal and often necessary for legal provisions to be in an asymmetric relationship or hierarchical dependency. For example, the novelty of a claim has to be examined independently of inventive step considerations, whereas a finding of inventiveness presupposes a novelty examination. Another example is the validity of a priority claim which has to be checked independently of novelty and inventive step requirements, whereas novelty and inventive step cannot be established independently of the validity of a priority right.

[2.3] Regarding the Board’s insistence on a technical problem when applying the problem-and-solution approach, the appellant disputes that such a requirement can be deduced from the EPC or introduced from its Implementing Regulations. The appellant refers inter alia to decision T 473/08 (by a different Board of Appeal) to point out that “a non-technical problem can have a technical solution”.

However, there is no divergence, the Board agrees to the statement that a non-technical problem can have a technical solution. On the other hand, where an intrinsically non-technical solution (mathematical algorithm) seeks to derive a technical character from the problem solved, the problem must be technical. This is the point on which the present case hinges.

[2.4] Another argument of the appellant refers to the legislative history of the EPC (travaux préparatoires) which is said not to provide any explicit support for a cumulative application of Article 52(2) EPC and Article 56 EPC 1973.

However, the restriction of substantive patent law to technical subject-matter is so self-evident that the founding fathers of the EPC did not even mention that requirement in the original (1973) version of Article 52(1). The explicit clause “in all fields of technology” was not added to Article 52(1) until the Diplomatic Conference in the year 2000 harmonised the Article with the TRIPs treaty (see OJ EPO 2007, Special Edition 4, page 48). Nevertheless, Article 52(1) EPC has always been understood as referring to technical inventions.

Similarly, in the Board’s understanding, it is implicit to the patent system under the EPC that only contributions to a field of technology — escaping the list of non-inventions — justify patent protection.

[2.5] Opinion G 3/08 of the Enlarged Board of Appeal backs the Comvik approach rather than raising any objection to it. This becomes clear when points 10.13.1 and 10.13.2 of the Opinion are read to the end (italics added by the Board):

G 3/08, point 10.13.1: “[…] However, this does not mean that the list of subject-matters in Article 52(2) EPC (including in particular “programs for computers”) has no effect on such claims. An elaborate system for taking that effect into account in the assessment of whether there is an inventive step has been developed, as laid out in T 154/04, Duns. While it is not the task of the Enlarged Board in this Opinion to judge whether this system is correct, since none of the questions put relate directly to its use, it is evident from its frequent use in decisions of the Boards of Appeal that the list of “non-inventions” in Article 52(2) EPC can play a very important role in determining whether claimed subject-matter is inventive.”

G 3/08, point 10.13.2: “[…] The Board can only speculate that the President could not identify any divergence in the case law on this issue, despite the fact that (at present) approximately seventy decisions issued by a total of fifteen different Boards (in the sense of organisational units) cite T 641/00, COMVIK (OJ EPO 2003, 352), and over forty decisions by eight Boards cite T 258/03, Hitachi, the decisions which essentially defined the approach. Nor is the Enlarged Board aware of any divergence in this case law, suggesting that the Boards are in general quite comfortable with it. It would appear that the case law, as summarised in T 154/04, has created a practicable system for delimiting the innovations for which a patent may be granted.”

Link zur Entscheidung: T 1784/06 (Classification method/COMPTEL)

About Bastian Best

Bastian Best

I'm a European patent attorney specializing in software patents and a partner in one of the most renowned IP only firms in Europe.

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