Methods of business research are excluded "as such" from patentability

Print this page 18-11-2006
IPPT20061115, TBA-EPO, DUNS

PATENT LAW

 

Methods of business research are excluded "as such" from patentability under Article 52(2)(c) and (3) EPC.
 

"2. The Board judges that in analogy to schemes, rules, and methods of doing business, methods of business research are excluded "as such" from pat-entability under Article 52(2)(c) and (3) EPC."

 

Business research method as such: gathering and evaluating data as part of a busi-ness research method do not convey technical character to the business research method if such steps do not contribute to the technical solution of a technical problem

 

"3. Interacting with and exploiting information about the physical world belongs to the very nature of any busi-ness-related activity. Accepting such features as sufficient for establishing patentability would render the exclusion of business methods under Article 52(2)(c) EPC meaningless. Therefore, the Board judges that gathering and evaluating data as part of a business research method, even if the data relates to physical pa-rameters or geographic information as in the present case, do not convey technical character to a business research method if such steps do not contribute to the technical solution of a technical problem.

 

4. Determining sales data and geographical distances between outlets and using this data to estimate sales at specific outlets by means of the statistical method claimed and disclosed in the application do not solve any technical problem in a technical field. The defini-tions in claim 1 do not imply the use of any technical system or means. The term "database", in particular, may be construed to designate any collection of data, so that claim 1 encompasses methods which may be per-formed without using any technical means at all.

The method of claim 1 is hence excluded from pat-entability under Article 52(1), (2)(c) and (3) EPC."

 

Principles of patentability
 

"5. Article 52(1) EPC sets out four requirements to be fulfilled by a patentable invention: there must be an in-vention, and if there is an invention, it must satisfy the requirements of novelty, inventive step, and industrial applicability.
(B) Having technical character is an implicit requisite of an "invention" within the meaning of Article 52(1) EPC (requirement of "technicality").
(C) Article 52(2) EPC does not exclude from pat-entability any subject matter or activity having technical character, even if it is related to the items listed in this provision since these items are only ex-cluded "as such" (Article 52(3) EPC).
(D) The four requirements - invention, novelty, inven-tive step, and susceptibility of industrial application - are essentially separate and independent criteria of pat-entability, which may give rise to concurrent objections. Novelty, in particular, is not a requisite of an invention within the meaning of Article 52(1) EPC, but a separate requirement of patentability.
(E) For examining patentability of an invention in re-spect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention.
(F) It is legitimate to have a mix of technical and "non-technical" features appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical fea-tures, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features "as such", do not provide a technical contribu-tion to the prior art and are thus ignored in assessing novelty and inventive step.
(G) For the purpose of the problem-and-solution ap-proach, the problem must be a technical problem which the skilled person in the particular technical field might be asked to solve at the relevant priority date. The technical problem may be formulated using an aim to be achieved in a non-technical field, and which is thus not part of the technical contribution provided by the invention to the prior art. This may be done in particu-lar to define a constraint that has to be met (even if the aim stems from an a posteriori knowledge of the inven-tion)."

 

IPPT20061115, TBA-EPO, DUNS

 

T 154/04 - 3.5.01