T 258/03: Difference between revisions
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'''T 258/03''', also known as '''''Auction Method/Hitachi''''', is a decision of a Technical [[Appeal procedure before the European Patent Office|Board of Appeal of the European Patent Office]] (EPO), issued on |
'''T 258/03''', also known as '''''Auction Method/Hitachi''''', is a decision of a Technical [[Appeal procedure before the European Patent Office|Board of Appeal of the European Patent Office]] (EPO), issued on April 21, 2004. It is a landmark decision for interpreting Article 52(1) and (2) of the [[European Patent Convention]] (EPC) which built on the principles suggested by the same Board in [[T 641/00]] (''Comvik, Two identities''). This decision, amongst others, but notably this one and T 641/00, significantly affected the assessment of an invention’s [[technical character]] and [[inventive step under the European Patent Convention|inventive step]].<ref>{{cite web |first=Arnoud |last=Engelfriet |url=http://patentepi.com/assets/uploads/documents/epi-information/2006_02_epi_info.pdf |format=PDF |title= Taking care of business (methods). How the EPO today refuses inventions involving non-technical features |work= [[European Patent Institute]] Information 2/2006, pp. 69-72 |publisher=Patentepi.com}}</ref> |
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It mainly stated that "a method involving technical means [was] an invention within the meaning of Article 52(1) EPC" |
It mainly stated that "a method involving technical means [was] an invention within the meaning of Article 52(1) EPC"<ref>T 258/03, headnote 1</ref> and in stating so contrasts with [[T 931/95]] (Pension Benefit Systems Partnership), which held that "the mere fact that data processing and computing means, i.e. technical means, [were] recited in a method [[claim (patent)|claim]] [did] not necessarily confer a technical character to the claimed method".<ref>T 931/95, Reasons 3</ref> T 258/03 put apparatus and method claims on an equal footing for the patentability examination of Article 52(2) EPC. |
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In other words, the Board of Appeal in this decision "pointed the way to the new test and argued that the term ‘invention’ in the definition of patentable inventions set out in Article 52(1) of the EPC was merely to be construed as ‘subject matter having technical character’. Thus, the presence of computer hardware in a claim to a business method, providing a technical character, would now be sufficient to overcome the business method objection, regardless of technical contribution." |
In other words, the Board of Appeal in this decision "pointed the way to the new test and argued that the term ‘invention’ in the definition of patentable inventions set out in Article 52(1) of the EPC was merely to be construed as ‘subject matter having technical character’. Thus, the presence of computer hardware in a claim to a business method, providing a technical character, would now be sufficient to overcome the business method objection, regardless of technical contribution."<ref>Nick Reeve, ''Down to business'', [[Journal of Intellectual Property Law & Practice]], July 2007; 2: 445 - 451.</ref> |
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== Reasoning on patentable subject-matter == |
== Reasoning on patentable subject-matter == |
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The Board of Appeal first made it clear that: |
The Board of Appeal first made it clear that: |
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# there are four requirements to be fulfilled for some claimed subject-matter to be patented: "(1) [[patentable subject matter|it should be an "invention"]], and this invention must be (2) [[novelty (patent)|new]], (3) [[inventive step |
# there are four requirements to be fulfilled for some claimed subject-matter to be patented: "(1) [[patentable subject matter|it should be an "invention"]], and this invention must be (2) [[novelty (patent)|new]], (3) [[inventive step under the European Patent Convention|inventive]], and (4) [[industrial applicability|industrially applicable]]",<ref name="reasons3.1">T 258/03, Reasons 3.1</ref> that |
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# the term "invention" is to be construed as "subject-matter having technical character", |
# the term "invention" is to be construed as "subject-matter having technical character",<ref name="reasons3.1"/> and finally that |
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# the "verification that claimed subject-matter is an invention within the meaning of Article 52( |
# the "verification that claimed subject-matter is an invention within the meaning of Article 52(1) EPC" must be done before performing the three other tests, i.e. the novelty, the inventive step and the industrial applicability tests.<ref name="reasons3.1"/> |
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Consequently, and having regard to the structure of the EPC, the Board held that "it should be possible to determine whether subject-matter is excluded under Article 52(2) EPC without any knowledge of the [[prior art|state of the art]] (including common general knowledge)". |
Consequently, and having regard to the structure of the EPC, the Board held that "it should be possible to determine whether subject-matter is excluded under Article 52(2) EPC without any knowledge of the [[prior art|state of the art]] (including common general knowledge)".<ref name="reasons3.1"/> |
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This approach confirmed that the Boards of Appeal of the EPO have abandoned the "contribution approach", which consisted in deciding whether a claimed subject-matter is an invention by deciding whether it brought forward a contribution to the art in a field non excluded from patentability, and therefore by inherently taking into account prior art during this first step. |
This approach confirmed that the Boards of Appeal of the EPO have abandoned the "contribution approach", which consisted in deciding whether a claimed subject-matter is an invention by deciding whether it brought forward a contribution to the art in a field non excluded from patentability, and therefore by inherently taking into account prior art during this first step.<ref>T 258/03, Reasons 3.2 and 3.3</ref> |
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The Board then confirmed the fact that a mixture of technical and non-technical feature may be patentable, |
The Board then confirmed the fact that a mixture of technical and non-technical feature may be patentable,<ref>T 258/03, Reasons 3.4</ref> and inferred that "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."<ref>T 258/03, Reasons 3.5</ref> |
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Therefore, an apparatus claim comprising clearly technical features such as a "server computer", "client computers" and a "network" is an invention within the meaning of Article 52(1) EPC (as held in T 931/95). |
Therefore, an apparatus claim comprising clearly technical features such as a "server computer", "client computers" and a "network" is an invention within the meaning of Article 52(1) EPC (as held in T 931/95).<ref>T 258/03, Reasons 3.7</ref> But, the Board also held that the approach also applies to method claims, thus departing from T 931/95. The Board justified this with the following analysis: |
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:"an assessment of the technical character of a method based on the degree of banality of the technical features of the claim would involve remnants of the contribution approach by implying an evaluation in the light of the available prior art or common general knowledge." |
:"an assessment of the technical character of a method based on the degree of banality of the technical features of the claim would involve remnants of the contribution approach by implying an evaluation in the light of the available prior art or common general knowledge."<ref>T 258/03, Reasons 4.3</ref> |
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What may be viewed as general guidelines for the examination of patentable subject-matter under the EPC were then stated or confirmed: |
What may be viewed as general guidelines for the examination of patentable subject-matter under the EPC were then stated or confirmed: |
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:"What matters having regard to the concept of "invention" within the meaning of Article 52(1) EPC is the presence of technical character which may be implied by the physical features of an entity or the nature of an activity, or may be conferred to a nontechnical activity by the use of technical means. Hence, (...), activities falling within the notion of a non-invention "as such" would typically represent purely abstract concepts devoid of any technical implications." |
:"What matters having regard to the concept of "invention" within the meaning of Article 52(1) EPC is the presence of technical character which may be implied by the physical features of an entity or the nature of an activity, or may be conferred to a nontechnical activity by the use of technical means. Hence, (...), activities falling within the notion of a non-invention "as such" would typically represent purely abstract concepts devoid of any technical implications."<ref>T 258/03, Reasons 4.5</ref> |
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== Consequences == |
== Consequences == |
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This "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]]." However, as the Board put it, "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 solution to a technical problem, and be susceptible of industrial application." |
This "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]]." However, as the Board put it, "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 solution to a technical problem, and be susceptible of industrial application."<ref>T 258/03, Reasons 4.6</ref> |
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== Reasoning on inventive step == |
== Reasoning on inventive step == |
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Although the claims were held to be inventions within the meaning of Article 52(1), (2) and (3) EPC, they were found to lack inventive step. The application was refused. |
Although the claims were held to be inventions within the meaning of Article 52(1), (2) and (3) EPC, they were found to lack inventive step. The application was refused. |
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More precisely, the invention was viewed as a mixture of technical and non-technical features, and was assessed with respect to the requirement of inventive step by taking account only the features which contributing to a technical character (in accordance with the principles of [[T 641/00]]). |
More precisely, the invention was viewed as a mixture of technical and non-technical features, and was assessed with respect to the requirement of inventive step by taking account only the features which contributing to a technical character (in accordance with the principles of [[T 641/00]]).<ref>T 258/03, Reasons 5.3</ref> No step of the claimed method was found to be designed "in such a way as to be particularly suitable for being performed on a computer" so that it may have contribute in a technical manner to inventive step.<ref name="reasons5.8">T 258/03, Reasons 5.8</ref> A particular method step which may have been a candidate involving technical contribution was found by the Board to result from "a routine programming measure well within the reach of the skilled person".<ref name="reasons5.8"/> |
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== See also == |
== See also == |
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* [[Software patents under the European Patent Convention]] |
* [[Software patents under the European Patent Convention]] |
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== External links == |
== External links == |
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*{{ECLI|ECLI:EP:BA:2004:T025803.20040421}} |
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{{DEFAULTSORT:T 258 03}} |
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[[Category:European Patent Office case law]] |
[[Category:European Patent Office case law]] |
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[[Category:2004 in case law]] |
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[[Category:2004 in Europe]] |
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[[Category:Auction case law]] |
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Latest revision as of 20:17, 30 January 2022
| T 258/03 | ||
|---|---|---|
 Board of Appeal of the European Patent Office | ||
| Issued April 21, 2004 | ||
| Board composition | ||
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| Headwords | ||
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T 258/03, also known as Auction Method/Hitachi, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on April 21, 2004. It is a landmark decision for interpreting Article 52(1) and (2) of the European Patent Convention (EPC) which built on the principles suggested by the same Board in T 641/00 (Comvik, Two identities). This decision, amongst others, but notably this one and T 641/00, significantly affected the assessment of an invention’s technical character and inventive step.[1]
It mainly stated that "a method involving technical means [was] an invention within the meaning of Article 52(1) EPC"[2] and in stating so contrasts with T 931/95 (Pension Benefit Systems Partnership), which held that "the mere fact that data processing and computing means, i.e. technical means, [were] recited in a method claim [did] not necessarily confer a technical character to the claimed method".[3] T 258/03 put apparatus and method claims on an equal footing for the patentability examination of Article 52(2) EPC.
In other words, the Board of Appeal in this decision "pointed the way to the new test and argued that the term ‘invention’ in the definition of patentable inventions set out in Article 52(1) of the EPC was merely to be construed as ‘subject matter having technical character’. Thus, the presence of computer hardware in a claim to a business method, providing a technical character, would now be sufficient to overcome the business method objection, regardless of technical contribution."[4]
Reasoning on patentable subject-matter[edit]
The invention in the application under examination related to an "automatic Dutch auction method executed in a server computer".
The Board of Appeal first made it clear that:
- there are four requirements to be fulfilled for some claimed subject-matter to be patented: "(1) it should be an "invention", and this invention must be (2) new, (3) inventive, and (4) industrially applicable",[5] that
- the term "invention" is to be construed as "subject-matter having technical character",[5] and finally that
- the "verification that claimed subject-matter is an invention within the meaning of Article 52(1) EPC" must be done before performing the three other tests, i.e. the novelty, the inventive step and the industrial applicability tests.[5]
Consequently, and having regard to the structure of the EPC, the Board held that "it should be possible to determine whether subject-matter is excluded under Article 52(2) EPC without any knowledge of the state of the art (including common general knowledge)".[5]
This approach confirmed that the Boards of Appeal of the EPO have abandoned the "contribution approach", which consisted in deciding whether a claimed subject-matter is an invention by deciding whether it brought forward a contribution to the art in a field non excluded from patentability, and therefore by inherently taking into account prior art during this first step.[6]
The Board then confirmed the fact that a mixture of technical and non-technical feature may be patentable,[7] and inferred that "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."[8]
Therefore, an apparatus claim comprising clearly technical features such as a "server computer", "client computers" and a "network" is an invention within the meaning of Article 52(1) EPC (as held in T 931/95).[9] But, the Board also held that the approach also applies to method claims, thus departing from T 931/95. The Board justified this with the following analysis:
- "an assessment of the technical character of a method based on the degree of banality of the technical features of the claim would involve remnants of the contribution approach by implying an evaluation in the light of the available prior art or common general knowledge."[10]
What may be viewed as general guidelines for the examination of patentable subject-matter under the EPC were then stated or confirmed:
- "What matters having regard to the concept of "invention" within the meaning of Article 52(1) EPC is the presence of technical character which may be implied by the physical features of an entity or the nature of an activity, or may be conferred to a nontechnical activity by the use of technical means. Hence, (...), activities falling within the notion of a non-invention "as such" would typically represent purely abstract concepts devoid of any technical implications."[11]
Consequences[edit]
This "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." However, as the Board put it, "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 solution to a technical problem, and be susceptible of industrial application."[12]
Reasoning on inventive step[edit]
Although the claims were held to be inventions within the meaning of Article 52(1), (2) and (3) EPC, they were found to lack inventive step. The application was refused.
More precisely, the invention was viewed as a mixture of technical and non-technical features, and was assessed with respect to the requirement of inventive step by taking account only the features which contributing to a technical character (in accordance with the principles of T 641/00).[13] No step of the claimed method was found to be designed "in such a way as to be particularly suitable for being performed on a computer" so that it may have contribute in a technical manner to inventive step.[14] A particular method step which may have been a candidate involving technical contribution was found by the Board to result from "a routine programming measure well within the reach of the skilled person".[14]
See also[edit]
- G 3/08, opinion of the Enlarged Board of Appeal
- List of decisions of the EPO Boards of Appeal relating to Article 52(2) and (3) EPC
- Software patents under the European Patent Convention
References[edit]
- ^ Engelfriet, Arnoud. "Taking care of business (methods). How the EPO today refuses inventions involving non-technical features" (PDF). European Patent Institute Information 2/2006, pp. 69-72. Patentepi.com.
- ^ T 258/03, headnote 1
- ^ T 931/95, Reasons 3
- ^ Nick Reeve, Down to business, Journal of Intellectual Property Law & Practice, July 2007; 2: 445 - 451.
- ^ a b c d T 258/03, Reasons 3.1
- ^ T 258/03, Reasons 3.2 and 3.3
- ^ T 258/03, Reasons 3.4
- ^ T 258/03, Reasons 3.5
- ^ T 258/03, Reasons 3.7
- ^ T 258/03, Reasons 4.3
- ^ T 258/03, Reasons 4.5
- ^ T 258/03, Reasons 4.6
- ^ T 258/03, Reasons 5.3
- ^ a b T 258/03, Reasons 5.8