231:"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."
30:
269:). 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. 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".
218:
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). But, the Board also held that the approach also applies to method claims, thus departing
147:
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
214:
The Board then confirmed the fact that a mixture of technical and non-technical feature may be patentable, 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
210:
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
264:
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
223:"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."
253:." 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."
197:
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
287:
240:
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
202:
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
148:
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."
144:
not necessarily confer a technical character to the claimed method". T 258/03 put apparatus and method claims on an equal footing for the patentability examination of
Article 52(2) EPC.
261:
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.
292:
126:
140:(Pension Benefit Systems Partnership), which held that "the mere fact that data processing and computing means, i.e. technical means, recited in a method
184:
130:
358:
110:
136:
It mainly stated that "a method involving technical means an invention within the meaning of
Article 52(1) EPC" and in stating so contrasts with
227:
What may be viewed as general guidelines for the examination of patentable subject-matter under the EPC were then stated or confirmed:
502:
125:). This decision, amongst others, but notably this one and T 641/00, significantly affected the assessment of an invention’s
497:
312:
473:
313:"Taking care of business (methods). How the EPO today refuses inventions involving non-technical features"
113:(EPO), issued on April 21, 2004. It is a landmark decision for interpreting Article 52(1) and (2) of the
194:
the term "invention" is to be construed as "subject-matter having technical character", and finally that
114:
517:
507:
320:
176:
482:
282:
188:
512:
175:
there are four requirements to be fulfilled for some claimed subject-matter to be patented: "(1)
8:
157:
15:
288:
List of decisions of the EPO Boards of Appeal relating to
Article 52(2) and (3) EPC
180:
165:
211:
therefore by inherently taking into account prior art during this first step.
141:
491:
161:
215:
themselves turn out to fulfil all requirements of Article 52(1) EPC."
219:
from T 931/95. The Board justified this with the following analysis:
204:
29:
266:
137:
118:
117:(EPC) which built on the principles suggested by the same Board in
242:
278:
250:
246:
151:
293:
Software patents under the European Patent Convention
359:
Journal of Intellectual Property Law & Practice
489:
256:
171:The Board of Appeal first made it clear that:
457:
455:
111:Board of Appeal of the European Patent Office
36:Board of Appeal of the European Patent Office
373:
371:
369:
367:
160:under examination related to an "automatic
452:
364:
207:(including common general knowledge)".
490:
310:
152:Reasoning on patentable subject-matter
13:
70:R. S. Wibergh, B. J. Schachenmann
14:
529:
467:
179:, and this invention must be (2)
483:ECLI:EP:BA:2004:T025803.20040421
28:
503:European Patent Office case law
443:
434:
425:
416:
235:
109:, is a decision of a Technical
86:
55:
476:EPO boards of appeal decisions
407:
398:
389:
380:
347:
338:
329:
304:
78:
47:
42:
18:
1:
478:" section of the EPO web site
386:T 258/03, Reasons 3.2 and 3.3
323:Information 2/2006, pp. 69-72
298:
27:
7:
272:
257:Reasoning on inventive step
177:it should be an "invention"
10:
534:
474:Decision T 258/03 on the "
361:, July 2007; 2: 445 - 451.
115:European Patent Convention
321:European Patent Institute
498:Software patent case law
283:Enlarged Board of Appeal
189:industrially applicable
90:Auction method/HITACHI
123:Comvik, Two identities
106:Auction Method/Hitachi
43:Issued April 21, 2004
461:T 258/03, Reasons 5.8
449:T 258/03, Reasons 5.3
440:T 258/03, Reasons 4.6
431:T 258/03, Reasons 4.5
422:T 258/03, Reasons 4.3
413:T 258/03, Reasons 3.7
404:T 258/03, Reasons 3.5
395:T 258/03, Reasons 3.4
377:T 258/03, Reasons 3.1
164:method executed in a
156:The invention in the
335:T 258/03, headnote 1
311:Engelfriet, Arnoud.
344:T 931/95, Reasons 3
127:technical character
62:S. V. Steinbrener
281:, opinion of the
98:
97:
94:
93:
74:
73:
49:Board composition
525:
518:Auction case law
508:2004 in case law
462:
459:
450:
447:
441:
438:
432:
429:
423:
420:
414:
411:
405:
402:
396:
393:
387:
384:
378:
375:
362:
355:Down to business
351:
345:
342:
336:
333:
327:
326:
325:. Patentepi.com.
317:
308:
205:state of the art
103:, also known as
87:
56:
32:
16:
533:
532:
528:
527:
526:
524:
523:
522:
488:
487:
470:
465:
460:
453:
448:
444:
439:
435:
430:
426:
421:
417:
412:
408:
403:
399:
394:
390:
385:
381:
376:
365:
352:
348:
343:
339:
334:
330:
315:
309:
305:
301:
275:
259:
238:
166:server computer
154:
33:
12:
11:
5:
531:
521:
520:
515:
513:2004 in Europe
510:
505:
500:
486:
485:
480:
469:
468:External links
466:
464:
463:
451:
442:
433:
424:
415:
406:
397:
388:
379:
363:
346:
337:
328:
302:
300:
297:
296:
295:
290:
285:
274:
271:
258:
255:
237:
234:
233:
232:
225:
224:
200:
199:
195:
192:
153:
150:
131:inventive step
96:
95:
92:
91:
83:
82:
76:
75:
72:
71:
64:
63:
52:
51:
45:
44:
40:
39:
25:
24:
9:
6:
4:
3:
2:
530:
519:
516:
514:
511:
509:
506:
504:
501:
499:
496:
495:
493:
484:
481:
479:
477:
472:
471:
458:
456:
446:
437:
428:
419:
410:
401:
392:
383:
374:
372:
370:
368:
360:
356:
350:
341:
332:
324:
322:
314:
307:
303:
294:
291:
289:
286:
284:
280:
277:
276:
270:
268:
262:
254:
252:
248:
244:
230:
229:
228:
222:
221:
220:
216:
212:
208:
206:
196:
193:
190:
186:
182:
178:
174:
173:
172:
169:
167:
163:
162:Dutch auction
159:
149:
145:
143:
139:
134:
132:
128:
124:
120:
116:
112:
108:
107:
102:
89:
88:
85:
84:
81:
77:
69:
66:
65:
61:
58:
57:
54:
53:
50:
46:
41:
38:
37:
31:
26:
23:
22:
17:
475:
445:
436:
427:
418:
409:
400:
391:
382:
354:
353:Nick Reeve,
349:
340:
331:
319:
306:
263:
260:
239:
236:Consequences
226:
217:
213:
209:
201:
170:
155:
146:
135:
122:
105:
104:
100:
99:
79:
67:
59:
48:
35:
34:
20:
19:
158:application
492:Categories
299:References
187:, and (4)
185:inventive
80:Headwords
60:Chairman:
273:See also
267:T 641/00
138:T 931/95
119:T 641/00
101:T 258/03
68:Members:
21:T 258/03
243:writing
191:", that
279:G 3/08
245:using
198:tests.
183:, (3)
316:(PDF)
251:paper
142:claim
249:and
129:and
247:pen
181:new
168:".
494::
454:^
366:^
357:,
318:.
133:.
121:(
Text is available under the Creative Commons Attribution-ShareAlike License. Additional terms may apply.
