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Tuesday, July 10, 2007

EPO BoA: The Mere Possibility Of Serving A Technical Purpose Or Of Solving A Technical Problem Is Not Sufficient.

The EPO has published Decision

T 0306/04 - 3.5.01 of the Boards of Appeal dated March 02, 2007, stating that the mere possibility of serving a technical purpose or of solving a technical problem is not sufficient to avoid exclusion under Article 52(2) and (3) EPC.

European patent application No. 99 954 776.3 (published as

WO-A-00/28451) was directed to an automated finite capacity scheduler. The main portion of discussion by the Board of Appeal goes as follows:

"[...] 3. The subject of the present method claims is the scheduling of tasks in an industrial process, i.e. the placing of tasks in a timetable, schedule or any other type of list for allocating resources to activities over time.

4. In industry, and more generally in a business environment, scheduling is a typical activity in a preparatory phase for planning operations and allocating resources and is normally considered a field of operations research. In general, it should thus be subsumed under the excluded category of schemes, rules and methods of doing business.

When such methods involve features which confer technical character on them they may nevertheless form a valid subject of a European patent. Technicality may result, in the present context, from the implementation of planning and scheduling procedures on a computerised system or, for example, from the purposive use of such a procedure to control a technical process.

5. An automated scheduler is indeed described in the application as an embodiment and arguably claimed in separate system claims. The method claims, however, do not refer to any such automated systems at all. As claimed, not reciting any technical means, they may actually be performed as a purely intellectual activity. The mere possibility of using technical means, disclosed as an embodiment, is, however, not sufficient to avoid exclusion from patentability (see for example decision T 388/04 - Undeliverable mail/PITNEY BOWES, OJ EPO 2007, 16).

The reference in claim 1 (main request) to an "industrial process" does not change the character of the method. From the considerable breadth of meaning of "industry", it follows that "industrial process" encompasses pure business processes and services in finance, administration, management, etc. The claimed method can thus not be construed to be limited to any, let alone specific, technical process.

6. The reference to an 'industrial refinery' (auxiliary request) brings the claimed method closer to such a technical application. However, the expression 'industrial refinery' can still not be construed to define, or imply any specific technical process to be controlled or scheduled.

It is evident that such a process cannot be inferred from the definition 'in an industrial refinery'. Neither is the refinery example described in the application [...] a basis for any such construction of the method claim: As indicated by reference numerals 214 and 224, refinery planning and scheduling involves traders and sales functions for allocating the resources [...]. Hence, the scope of scheduled tasks may include purely business-related operations, but possibly also technical functions, like the control of the fluid transport system of the storage tanks [...].

However, such technical functions are not the express subject of the method claim. The mere possibility of serving a technical purpose or of solving a technical problem is not sufficient to avoid exclusion under Article 52(2) and (3) EPC (in analogy to the Pitney Bowes case T 388/04, see above).

7. Actually, the individual method steps defined in both claims 1 do not refer to scheduling of any concrete task at all, but define a rather abstract programme how to model a constraint-based scheduling problem including discrete and continuous constraints on the basis of abstract mathematical relationships. They do neither refer to any concrete technical problem nor does their execution require any technical considerations.

The Board already decided that abstract concepts and methods of information modelling do not have technical character (see decision T 49/99-Information Modelling/INTERNATIONAL COMPUTERS, not published in OJ EPO). This also applies to information modelling in the field of operations research, and in particular to process and data modelling for scheduling and planning purposes.

8. Regarding the lack of any technical aspect or feature in claim 1 according to both requests, it follows that the claimed methods are, as a whole, excluded from patentability under Article 52(2) and (3) EPC. [...]"

To me this decision does not come as a surprise. It illustrates that today filtering mechanisms brought into action within EPO and its attached Boards of Appeal against patenting of abstract mathematical methods not rooted in any identifiable and properly disclosed physical activity within some technical context are effectively thrown out. In this particular case, the applicant did not even mention in claim 1 of the main request a computer for carrying out the steps of the method.

In another case

T 1351/04 - 3.5.01 dated April 18, 2007, the same Board gave some indication as to the meaning of "technical means":

An index file containing management information to be used for searching a file is a technical means since it determines the way the computer searches information, which is a technical task. A computer-executable method of creating such an index file can therefore be regarded as a method of manufacturing a technical means, also having technical character.

According to the BoA, the claimed method requires the use of a computer. It has therefore technical character and constitutes an invention within the meaning of Article 52(1) EPC (cf T 258/03 - Auction method/HITACHI, OJ EPO 2004,575). Furthermore, and again according to the Board, a certain distinguishing feature in claim 1 according to which each node in the index includes the starting position information and number information used for retrieving records contributes to a technical solution of a technical problem.

The Boad of Appeal makes extended use of the language technical solution of a technical problem. This appears to be remotely similar to the guiding doctrine of the German Federal Supreme Court ("BGH", Bundesgerichtsof).

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If T 1351/04 is patentable then any computational technique is patentable. This has to be the clearest example of the Board losing the plot since Sohei.

The application identifies no subject area beyond the normal subject matter and activities of computer programs.

This decision represents perhaps the clearest practical evidence yet of the contention that has been being made for some time by the UK courts: namely, that merely asking whether an application, problem or solution is "technical" fails to be sufficient to assess fully the range of what is specifically excluded by Art 52.

# posted by InventiveStep : 10 July, 2007 16:00

In my opinion the cited exclusion "purely intellectual activity" must be regarded seperately from "computer programms". The board 3.5.01 still tries to make a difference between non-technical abstract concepts of computer programms and technical implementations of computer programms. As any real implementation of any computer program ("Hello World" for example) can't be called non-technical, I wonder, when the board will except the exclusion criterion "computer program" as such.

# posted by sK� : 12 July, 2007 12:59

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