Invention: technical character
"3.1 In accordance with the established case law of the boards of appeal, the term "invention" is to be construed as "subject-matter having technical character"."
Subject matter consisting of technical and non-technical features can be an invention
"3.5 Therefore, taking into account both that a mix of technical and non-technical features may be regarded as an invention within the meaning of Article 52(1) EPC and that prior art should not be considered when deciding whether claimed subject-matter is such an invention, a compelling reason for not refusing under Article 52(2) EPC subject-matter consisting of technical and non-technical features is simply that the technical features may in themselves turn out to fulfil all requirements of Article 52(1) EPC."
In general, a method involving technical means is an invention: in order to be consistent with the finding that the so-called "contribution approach", which involves assessing different patentability requirements such as novelty or inventive step, is inappropriate for judging whether claimed subject-matter is an invention within the meaning of Article 52(1) EPC, there should be no need to further qualify the relevance of technical aspects of a method claim in order to determine the technical character of the method. In the Board's view, activities falling within the notion of a non-invention "as such" would typically represent purely abstract concepts devoid of any technical implications.
"4.5 Finally, the Board in its present composition is not convinced that the wording of Article 52(2)(c) EPC, according to which "schemes, rules and methods for performing mental acts, playing games or doing busi-ness" shall not be regarded as inventions within the meaning of Article 52(1) EPC, imposes a different treatment of claims directed to activities and claims di-rected to entities for carrying out these activities. What matters having regard to the concept of "invention" within the meaning of Article 52(1) EPC is the pres-ence of technical character which may be implied by the physical features of an entity or the nature of an ac-tivity, or may be conferred to a non-technical activity by the use of technical means. In particular, the Board holds that the latter cannot be considered to be a non-invention "as such" within the meaning of Article 52(2)and(3) EPC. Hence, in the Board's view, activities falling within the notion of a non-invention "as such" would typically represent purely abstract concepts de-void of any technical implications.
4.6 The Board is aware that its comparatively broad interpretation of the term "invention" in Article 52(1) EPC will include activities which are so familiar that their technical character tends to be overlooked, such as the act of writing using pen and paper. Needless to say, however, this does not imply that all methods involving the use of technical means are patentable. They still have to be new, represent a non-obvious technical solu-tion to a technical problem, and be susceptible of industrial application.
4.7 It is therefore concluded that, in general, a method involving technical means is an invention within the meaning of Article 52(1) EPC."
Business scheme lacking technical character: Method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed.
"5.7 In the Board's view, however, this solution does not contribute to a technical character and cannot therefore be taken into account for assessing inventive step since it concerns the rules of the auction, ie it is not a techni-cal solution to the delay problem described (and solved by technical means) in documents D2 and D6, but a so-lution entirely based on modifications to the auction method. Method steps consisting of modifications to a business scheme and aimed at circumventing a techni-cal problem rather than solving it by technical means cannot contribute to the technical character of the sub-ject-matter claimed. Furthermore, as acknowledged by the appellant, a prominent feature of the invention is that when more than one bidder offers a certain "de-sired price" the auction price is increased to sort out the lower bids. This requires certain bid information - a "desired price" and a "maximum price" - and tests of certain conditions. But the feature is fundamentally in-dependent of the computer arrangement for performing the auction. It could just as well be used for conducting a Dutch auction without computer support, for example by collecting bids in writing in a call for tenders proce-dure, in order to allow the participants not to be present at the auction. The result of such a hypothetical auction would be the same. The invention can therefore be re-garded as a mere automation of the non-technical activity of performing a Dutch auction in the absence of bidders. Any ingeniousness required to develop the rules for the hypothetical auction cannot be considered for inventive step in accordance with the principles out-lined in decision T 641/00. The technical part of the invention is thus essentially limited to instructing the server computer to apply the given conditions and perform any necessary calculations."
IPPT20040421, TBA-EPO, Hitachi
T 258/03 - 3.5.1
