Thursday, April 12, 2018 T 2101/12 - Non-technical disclosures are prior art

In the appealed decision, D2 (a US patent application) was cited in a reasoning against novelty. One could therefore be led to believe that this document constitutes at least the most suitable starting point for the assessment of inventive step. The board is however of the opinion that such is not the case (r.6.1). The board also does not consider the document mentioned by the appellant, i.e. D3, or other documents cited in the search report, to be more suitable starting points. Instead, the board considers that the most suitable starting point is common general knowledge. The board considers it common general knowledge that documents, such as a will or a contract between parties, may be signed at a notary's office. In the present case, the board holds that the skilled person starts from this prior art method with zero technical features, the problem which consists in the automation of that method being solved entirely with technical means (r.7.15).
The appellant submitted that something can only be state of the art if it is related to a technological field or a field from which, because of its informational character, a skilled person would expect to derive technically relevant information, referring to T 172/03. The board agrees with the appellant that this opinion is not in line with Catchword 2 of T 172/03 (as also relied upon in the Guidelines for Examination G-VII, 2), unless one interprets the expression "technically relevant" in that Catchword in a trivial manner. The board however considers that the interpretation of Article 54(2) EPC given in T 172/03 is incorrect. 
The applicant also requested to refer to the Enlarged Board: In the assessment of the inventive step of subject matter presenting both technical and non-technical aspects, a problem-solution analysis using a publicly known entirely non-technical practice as "closest prior art", notwithstanding the existence of technical teachings in the same field? The Board did not consider this necessary (r.8)

Monday, May 15, 2017 T 1965/11 Materialised Views

The claimed invention makes use of available materialised views in order to improve database query performance. Due to the age of the application (filed in 2001), the Board examines inventive step in an appeal concerning added subject matter.

Friday, January 27, 2017 T 1379/11 - Combinations of technical and non-technical features

In this appeal against a decision of the Examining Division the claims have a combination of technical and non-technical features and this plays an important role in the inventive step reasoning of the Board. The question is whether the applicant has really added something technical or that the claimed method is an obvious implementation of business requirements in a know technical system. In this case there are also some interesting paragraphs about the selection of the closest prior art - the Board writes "The Examining Division made an attempt to apply both criteria... but failed to do so in a convincing manner.".

Tuesday, September 29, 2015 T 1461/12 - Inventive step for "mixed inventions"

After a refusal of an application for lack of inventive step based on the approach of T 641/00 (COMVIK), the applicant criticized tat approach in appeal. Assessment of claims involving technical as well as non-technical features, inclusion of non-technical aims as constraints to be met in the problem statement, and earlier case law are addressed in detail in the decision.

Friday, May 28, 2010 G 3/08 - Enlarged Board case: Programs for computers

Case: G 3/08, Programs for computers

The referral of the President to the Enlarged Board of Appeal was dismissed as inadmissible because there was no conflicting case law found. In this decision, the Board interpreted the notion "different decisions" in Art. 112(1)(b) EPC to mean "conflicting decisions". When there are no conflicting decisions, the Board does not have the capacity to make a decision. Moreover, legal development by itself cannot form the basis for a referral, only because case law in new legal or technical fields does not always develop in a linear fashion and earlier approaches may be abandoned or modified. So, the object and purpose of Art. 112(1)(b) EPC is to have an Enlarged Board decision re-establish legal uniformity when it has clearly been disrupted, not to intervene in legal development. Note that obiter dicta may be taken into account when determining whether two decisions are conflicting.

Even though the case was inadmissible, the decision strongly confirms the existing case law regarding programs for computers by pointing out that there hardly are any conflicing decisions. The Board only identified one potential point of conflict, namely a difference between positions taken in
T 1173/97 ("With regard to the exclusions under Art. 52(2),(3) EPC, it does not make any difference whether a computer program is claimed by itself or as a record on a carrier") and
T 424/03 ("the subject-matter of claim 5 has technical character since it relates to a computer-readable medium, i.e. a technical product involving a carrier").
However, according to the Board, this difference was a legitimate development of the case law. Moreover, the earlier decision T 1173/97 was not followed in any subsequent case law on this point, whereas T 424/03 has not been challenged in any later decision.

The Board summarized the present position of the case law as follows. A claim in the area of computer programs can avoid exclusion under Art. 52(2)(c),(3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium. However, if a claim to program X falls under the exclusion of these provisions, a claim which specifies no more than "Program X on a computer-readable storage medium" or "A method of operating a computer according to program X" will always still fail to be patentable for lack of an inventive step under Art. 52(1) and Art. 56 EPC. Merely the article applied is different.

Most importantly in this decision, the Board has confirmed that features which are by themselves excluded subject-matter do not contribute to inventive step. The decision points to T 154/04 for a summary of the system for delimiting the innovations for which a patent may be granted. The Board further notes that they are not aware of any divergence in this case law.

The decision further elaborates on the difference in scope between a computer program and a computer-implemented method. In short, there is a logical distinction between a method carried out by a computer and the sequential list of instructions which specify that method.