Having technical character is an implicit requirement for inventions

Print this page 08-09-2000
IPPT20000908,TBA-EPO, Pension Benefit Systems

PATENT LAW

 

Having technical character is an implicit requirement for inventions
 

"2. According to the case law of the boards of appeal the use of the term "invention" in Article 52(1) EPC in conjunction with the so-called "exclusion provisions" of Article 52(2) and (3) EPC, which mention subject-matter that "in particular shall not be regarded as inven-tions within the meaning of paragraph 1", is understood as implying a "requirement of technical character" or "technicality" which is to be fulfilled by an invention as claimed in order to be patentable."

 

Method for doing business as such – technical character
 

"3. Following these decisions the question to be answered in the present case is, whether the method according to claim 1 represents a method of doing business as such. If the method is technical or, in other words, has a technical character, it still may be a method for doing business, but not a method for doing business as such. (...). Methods only involving economic concepts and practices of doing business are not inventions within the meaning of Article 52(1) EPC. A feature of a method which concerns the use of technical means for a purely non-technical purpose and/or for processing purely non-technical information does not necessarily confer a technical character to such a method".

 

Apparatus claim
 

"5. (...). In the Board's view a computer system suitably programmed for use in a particular field, even if that is the field of business and economy, has the character of a concrete apparatus in the sense of a physical entity, man-made for a utili-tarian purpose and is thus an invention within the meaning of Article 52(1) EPC. (...). An apparatus constituting a physical entity or concrete product suitable for performing or supporting an eco-nomic activity, is an invention within the meaning of Article 52(1) EPC."

 

No contribution approach
 

"6. There is no basis in the EPC for distinguishing between "new features" of an invention and features of that invention which are known from the prior art when examining whether the invention concerned may be considered to be an invention within the meaning of Article 52(1) EPC. Thus there is no basis in the EPC for applying this so-called contribution approach for this purpose."

 

Lack of inventive step: the improvement envisaged by the invention according to the application is an essentially economic one ie lies in the field of economy, which, therefore, cannot contribute to inventive step

 

"8. Although the subject-matter of claim 1 of the first aux-iliary request may be considered to represent an invention within the meaning of Article 52(1) EPC, it does not involve an inventive step in the sense of Arti-cle 56 EPC. In the decision under appeal the closest prior art is identified as the "existing private pension plans" described in the application. The decision fur-thermore explains that it would not be possible to understand from the application any technical problem or contribution provided by the claimed subject-matter to the prior art. Indeed, the improvement envisaged by the invention according to the application is an essen-tially economic one ie lies in the field of economy, which, therefore, cannot contribute to inventive step. The regime of patentable subject-matter is only entered with programming of a computer system for carrying out the invention. The assessment of inventive step has thus to be carried out from the point of view of a soft-ware developer or application programmer, as the appropriate person skilled in the art, having the knowl-edge of the concept and structure of the improved pension benefits system and of the underlying schemes of information processing as set out for example in the present method claims. Regarding that the technical features of the apparatus claimed are functionally de-fined by precisely those steps of information processing which form part of the knowledge of the skilled person and that the application of computer systems in the economic sector has already been a general phenome-non at the priority date (filing date) of the application, it must be concluded that the claimed subject-matter does not involve an inventive step (Article 56 EPC)."

 

IPPT20000908,TBA-EPO, Pension Benefit Systems

 

T931/95 - 3.5.1