T 1461/12 - Challenging COMVIK

EPO T 1461/12

For the decision, click here

Key points

• In this appeal against the refusal of the application, the appellant argued that the examining di­vi­sion, misled by T 641/00 (Comvik), applied the outda­ted "con­tri­bution approach". The board disagrees.
• "Evidently, an inventive step vis-à-vis the prior art depends on the "contribution" the claimed invention makes over the pri­or art. Establishing this contri­bu­tion is necessary in any me­thod of assessing in­ven­tive step, T 641/00 included, but is not equivalent to the ' contribution approach'  as explained above."
• "As regards the 'COMVIK approach', the board agrees that efforts must be made to apply it in a fair manner (see T 928/03, reasons 5.3.3) and that the ob­jec­tive technical problem formulated in this context should not be a merely academic or a contrived one but one that can reasonably be assumed to have arisen at the priority date (see, e.g., T 905/09 [...])"

Reasons for the Decision

Request for expedited processing

1. The appellant argued (see grounds of appeal, point 1.6) that its appeal "raise[d] fundamental issues in the exami­nation of the Appellant's proprietary rights by the first instance of the EPO, [...] closely reflect[ing] the con­cerns raised by the Enlarged Board of Appeal in G0003/08 and, more parti­cu­lar­ly, the assessment of what amounts to 'technical' sub­ject matter (in the context of an assessment to exclu­sion under Art.52(2) & (3) EPC) and the appropri­ateness of the current tests therefor, e.g. under T641/00-Comvik and T0154/04-Duns Licensing", and because "the subject-matter of the application [was] of commercial importance to the Appellant".

2. In the annex to the summons, the board observed that none of the appellant's reasons is expressly men­tioned in the pertinent Notice from the Vice-Pre­sident Direc­torate-General 3 dated 17 March 2008 (OJ EPO 2008, 220), that the alleged commercial im­por­tance of the appli­cation to the appellant was not sub­stantiated in the grounds of appeal, and that it did not share the appellant's view that this appeal raised issues of such fundamental im­por­tance as to justify accelerated pro­cessing of this case. Therefore, the board did not allow the appellant's request for expedited processing.

Request for an interview with the rapporteur

3. The appellant requested that "the Rapporteur consent[] to an interview with the Appellant so that the Appellant m[ight] obtain an initial opinion that might expedite the appeal process by possibly avoiding the necessity for oral proceedings".

4. In the annex to the summons, the board noted that nei­ther the EPC nor the Rules of Procedure of the Boards of Appeal foresee a right of the appellant to an interview with the rapporteur. In view of this ­and the case as a whole, the board deemed it appropriate and expedient to summons the appellant to oral proceedings under Article 116(1) EPC according to its corresponding request.

The invention

5. The application generally relates to digital rights management. According to the description, known digital software licenses allow customers to run a piece of software on a limited number of devices (p. 1, lines 22-23). For each device, software users request permission from an au­tho­rization server which keeps a record of how many devices have already been authorized (lines 15-17 and 19-20). When the predefined limit is exceeded, the request is denied (lines 17-18 and 20-21). Otherwise, a license is issued linked to the hardware platform of the device in question, based on a "unique identifier" gene­rated from parameters of that computing hardware and its attached peripherals (lines 10-15).

5.1 It is also disclosed that software buyers have found this policy to conflict with their expectation "to be able to use software they have purchased on as many devices as they want as long as they own and use the devices" (p. 1, lines 27-29; p. 2, lines 3-5) and because users change or modify their computing devices increasingly often (p. 1, lines 29-31).

5.2 It is concluded that this situation "requires additional flexibility on the part of the authorization authority to compensate for reasonable fluctuations in the usage circumstances of uses protected under laws such as the Fair Use Act" (p. 1, line 31 - p. 2, line 2).

5.3 As a solution it is proposed to move away from the "allow/disallow paradigm" (p. 8, lines 4-6) of the prior art. It is disclosed, for instance, that "all requests for authorization [might] be allowed" but the system might keep track and activate the copies with different ­restrictions. This is referred to as an "audit mode" (p. 8, lines 9-13). The claimed invention relates to a spe­cific instance of this scheme, according to which the "audit/authorization authority" might allow "the soft­ware to run indefinitely [...] for up to a first [...] upper limit of copies of the software", whereas "[c]o­pies numbering greater than the first upper limit and not exceeding the second upper limit" might be allowed to run for a limited period of time or a defined number of executions "before requiring re-authorization to con­tinue usage" (p. 8, lines 18-22; p. 9, line 20).

5.4 The server instructs the requesting computer in terms of so-called "unlock keys" or "unlock codes" (p. 8, line 14 - p. 9, line 5). For unlimited use permission, an "un­li­mited unlock key" is sent, whilst for limited use a "li­mited key is sent". The client is assumed to act accor­ding to the instruction. For instance, it is disclosed that "the user [is] informed [...], and the application allowed to run" (p. 7, lines 10-11).

5.5 It is further disclosed that users who change or modify their hardware may have to re-activate the software. If they don't, the software is "terminated", otherwise the authorization process is repeated (p. 6, lines 8-18).

Original disclosure, Article 123(2) EPC

6. Claim 1 specifies that "running of the copy of the soft­ware [is terminated] after" expiry of the limited unlock key (see last three lines of claim 1 as cited above).

6.1 The application, however, discloses program ter­mi­nation only if the user chooses not to re-activate the pro­gram after a hardware change (p. 6, lines 8-12). What spe­ci­fically happens in other cases, for instance when the limited use period has expired, is not dis­closed in the application. It is concei­vable that in such a case the software is not "termi­na­ted" but allowed to finish and only blocked from the next execu­tion onwards.

6.2 Therefore, the board has remaining doubts as to whether the claims as presently worded comply with Article 123(2) EPC.

6.3 However, the board considers that the skilled person would understand from the application as a whole that execution of the software is automatically disabled on the client com­pu­ter in accordance with the "unlock keys" (see p. 1, lines 27-29; p. 7, lines 10-11). It is stressed that the understanding that the client exerci­ses some such control does not imply any details as to how the client achieves this, and that the application does not disclose any.

6.4 For the purposes of the following discussion, the board construes the claims accordingly.

7. Claim 1 specifies that "the first limited unlock key [may] ter­minate[]" the software, which suggests that the "un­lock key" is active in this respect. How­ever, there is no disclosure of an active unlock key in the appli­cation. Claim 5, in contrast, specifies that the "com­puting devices [...] are arranged to run" or "to ter­mi­nate running" of the software "in response to re­ceipt" of the unlock keys, the unlock keys hence being speci­fied as passive. In what follows, the board inter­prets the cited passage in claim 1 to correspond to that of claim 5.

Clarity, Article 84 EPC 1973, and claim construction

8. The board considers that the claims are sufficiently clear to allow an assessment of inventive step and, in par­ti­cu­lar, to allow a discussion of the main issues raised by the appellant.

9. The board however considers that the expression "serial number for software installed on a computing device" needs to be properly construed.

9.1 The appellant argued that the serial number must be con­strued as the number which is conventionally asso­ciated with an individually purchased copy of a piece of soft­ware and which the user enters in order activate the software. This was relevant, inter alia, because D1 did not disclose such a "serial number" (see below).

9.2 The board however notes that, for the purposes of the claimed method or system, the serial number must be construed as merely any number suitable for identifying the software which is "installed on a computing device" and which the user requests to run.

Technical character, Article 52(2,3) EPC

10. It is undisputed that the system according to claim 5 and the method according to claim 1 constitute tech­nical subject-matter and thus inventions within the meaning of Article 52 EPC, for which European patents may in prin­ciple be granted (see in this respect G 3/08, point 10.7 and the cited jurisprudence of the boards of appeal).

The prior art

11. According to the application, figure 1 illustrates a "sys­tem and method for software copy control that is be­lieved to be known in the art" (see p. 3, lines 21-22). Also the section on related art refers to "systems used in the art" having features relevant for the invention (see, in particular, p. 1, lines 19-26). During the oral procee­dings, the appellant stated that it could not produce a piece of prior art disclosing the features described as known in the application and therefore disputed in particular that the content of fi­gure 1 was prior art for the present application. This issue was not further discussed with the appellant.

12. D1 discloses a license management system to account for software product usage (see abstract, lines 1-2). The system is depicted in figure 1. The rights owner, "pro­ducer 28", "gives [an] issuer 25 authority to grant li­censes on its behalf". A "license document generator program 26" is disclosed to "generate[] a license", usu­ally as the result of a negotiation between users (see col. 9, lines 61-67). The li­cen­ses are stored (as "pro­duct use authorizations") in a database (see fig. 1, no. 23; col. 9, line 67 - col. 10, line 8). A "license ser­ver" (see no. 10) manages this database and so-called "units" of the licenses (col. 6, line 44). A user node desiring to exe­cute a piece of software, "identif[ies] itself by user, platform, process, etc.", the license server checks whether the software is allowed to "ope­rate under the license terms" (col. 6, lines 24-27; col. 7, lines 3-6) and, in particular, whether a suffi­cient number of "units" are available to allow the request. Accor­­dingly, the request is either granted or denied, for instance by transmitting a "grant or denial status that can be used to decide whether "to permit use of the product or product features" (see, e.g., col. 20, line 3-7). After use, the units might be returned or con­sumed (see col. 6, lines 42-50). D1 discloses that "vendors should have available a wide variety of terms and con­di­tions" when negotiating li­censes and that li­censes may be priced depending on how permissive they are (see col. 1, lines 41-55; col. 6, lines 15-18). As a specific example, D1 discloses that a license might "allow only five users at any given time to use the product" (col. 19, lines 18-26).

Differences between the invention and the prior art

13. During the oral proceedings, the board agreed with the appellant that the inventive step of the claimed in­ven­tion should be assessed starting from D1.

13.1 The appellant argued that the claimed "authorization au­thority" responsible for verifying software licences had to be identified with the "license issuer 25" (see fig. 1 and col. 9, line 29-37) according to D1 because it was exclusively the vendor to issue licenses. The board is not convinced by this argument. Although the licenses are issued by the vendor, they are managed by the "li­cense management server" 10, and it is the latter from which clients request permission to run a piece of soft­ware and receive the "grant or denial sta­tus". The board thus considers that the license ma­nagement server of D1 qualifies as the claimed "autho­ri­zation authority responsible for verifying software li­censes".

13.2 The board further considers that the server message granting a requested software qualifies as the claimed "un­limited unlock key" allowing execution of the soft­ware "in an unrestricted manner".

13.3 In the board's view, therefore, the invention according to claim 1 differs from D1 by the following features.

1) the requested software is represented by a "serial number";

2) the units represent a "copy count" rather than the "cost" or "value" of a requested use (see D1, col. 6, lines 57-61, and grounds of appeal, point 7.12);

3) the claimed "copy count" increases with every "co­py" whereas the number of available units according to D1 decreases with every allocation of an available unit;

4) unlimited use of the software is only granted up to a given copy count, and for a copy count above that but below a "second upper limit" a limited use is granted, where the latter server response is communicated to the client in terms of a "limited unlock key"; and

5) the "limited unlock key" expresses permission to run the software only for a limited period of time or a limited number of executions.

Assessing the inventive step of "mixed inventions"

14. The appellant argued that the examining di­vi­sion, misled by T 641/00 (OJ EPO 2003, 352), applied the outda­ted "con­tri­bution approach". The board disagrees.

14.1 The "contribution approach" is typically understood as a test determining whether the difference between the claimed invention and the prior art lies exclusively in a field excluded from patentability under Article 52(2) EPC and, if so, finding that claimed inven­tion as a whole does not comply with Article 52(2,3) EPC. That is, according to the contribution approach, compliance of an invention with Article 52(2,3) EPC is determined only in view of its contribution over the prior art. This approach was abandoned in T 1173/97 (OJ EPO 1999, 609, reasons 8; see also G 3/08, OJ EPO 2010, 10, reasons 10.6) which found that compliance with Article 52(2,3) EPC can be established by features already known in the art.

14.2 The approach based on T 641/00, relates to the assess­ment of whether an invention comprising tech­nical and non-technical features involves an inventive step over the prior art. Evidently, an inventive step vis-à-vis the prior art depends on the "contribution" the claimed invention makes over the pri­or art. Establishing this contri­bu­tion is necessary in any me­thod of assessing in­ven­tive step, T 641/00 included, but is not equivalent to the "contribution approach" as explained above.

15. In more general terms, the appellant takes issue with the fact that the assessment of inventive step based on T 641/00 involves referring to Ar­ticle 52(2,3) EPC - and thereby allegedly mixes the require­ments of Articles 52 and 56 in an inappropriate manner. In this respect, the board notes the following.

15.1 It is well-established jurisprudence of the boards of appeal that an inventive step can only be acknowledged for an invention which makes a technical contribution to the art (see, inter alia, T 38/86, OJ EPO 1990, 384, head­notes; T 1173/97, reasons 8; T 1784/06, reasons 2.1), i.e. a contribution in a technical field. Furthermore, the jurisprudence of the boards of appeal has developed the understanding that the subject-matter excluded from patentability by way of example in Article 52(2,3) EPC concerns fields considered to be non-technical (see T 931/95, OJ EPO 2001, 441, reasons 2; and T 1173/97, reasons 5.2).

15.2 It is true, therefore, that the established way of assessing inventive step under Article 56 EPC makes reference to Article 52 EPC. However, this does not mean that the assessment of both re­quirements is "mixed" (see on this point T 1784/06, reasons 2.2). Contrary to the appellant's argument, the assessment of the requirements of Articles 52 and 56 EPC remains separate.

15.3 As regards G 3/08, the Enlarged Board indeed expressed surprise that the referred ques­tions did not relate to the assess­ment of inventive step (see reasons 10.13.2, first sentence) and spe­cu­lated (ibid., second sentence) that "the President could not identify any divergence in the case law on this issue, despite the fact that (at present) approxi­mately seven­ty decisions issued by a total of fif­teen different Boards [...] cite T 641/00, COMVIK (OJ EPO 2003, 352), and over forty decisions by eight Boards cite T 258/03, Hitachi, the decisions which essentially defined the approach" and concluded that the case law appeared to have "created a practi­cable system for deli­miting the innovations for which a patent may be gran­ted" (ibid., last sentence). Obviously, the Enlarged Board could not be sure of the President's precise rea­sons for referring these and not other questions, since "speculation" is not "certain­ty" as the appellant put it (see grounds of appeal, point 6.6). This however is in­suffi­cient to conclude that the Enlarged Board of Appeal itself had identified a diver­gence that could have jus­ti­fied another referral under Article 112(1)(b) EPC. It thus cannot be said that the Enlarged Board in G 3/08 has questioned the correctness of the "COMVIK approach".

The alleged divergence in jurisprudence

16. The appellant has suggested that decisions T 1051/07 and T 1769/10, both delivered by board of appeal 3.4.03 in the same composition, had introduced a "new approach" for assessing the inventive step of mixed inventions.

16.1 The present board notes that the same argument was made by the appellant before that board and was explicitly rejected by it (see T 1769/10, reasons 4.2, first para­graph and the pa­ra­graph at the bottom of page 10). It is therefore clear that the board in question did not in­tend to devi­ate from the established approach based on T 641/00. This is con­sistent with the fact that, as the appellant points out (grounds of appeal, point 6.26), that board did not itself re­fer questions to the En­larged Board of Appeal based on an "apparent divergence in approach".

16.2 The appellant claims that, in particular, the last few lines of point 4.2 of the reasons in T 1769/10 defined the "new approach". Whereas the appellant emphasised the last nine lines of that section only (see grounds of appeal, point 6.21), the board finds it appropriate to cite one more sentence. The last fourteen lines of that section read as follows (emphasis by this board):

"Accordingly, depending on the available prior art and what is claimed, the objective technical problem to be solved may be formulated generally as to implement technically (the constraints as imposed by) the aim to be achieved in the non-technical field. In the case were some general form of implementation of the aim to be achieved in the non-technical field is already known from the prior art, the objective technical problem to be solved may be formulated more specifically as how to implement technically the aim in the non-technical field, or, reworded, to provide a technical solution involving technical means how to achieve the aim in the non-technical field."

From the reasons set out in decision T 1769/10 it is clear that this section is intended to paraphrase the established jurisprudence of the boards of appeal rather than to define a new approach. The board does not find that this section implicitly defines a new approach either. Rather, it appears to be entirely consis­tent with the established jurisprudence according to which an "aim to be achieved in a non-technical field" could impose "constraints" on the technical solution sought (cf. T 641/00, headnote 2).

16.3 According to the appellant, the new approach according to T 1769/10 meant that it was "now a question of 'how' something is achieved, rather than 'what' is achieved by the claim in its entirety" (see e.g. grounds of appeal, point 6.26). The board does not accept this proposition either, because the cited passage explicitly acknow­ledges that the aim to be achieved in the non-technical field (the "what") imposes constraints on the technical solution (i.e. the "how").

16.4 Furthermore, the appellant argues that the approach according to T 1769/10 operated "at the macro-level of considering the totality of the claim and how the effect is achieved", whereas the approach based on T 641/00 operated on the "micro-level" and was based on a "one-at-a-time" and "feature-by-feature" analysis which was irreconci­lable with T 1769/10 (see the letter of 3 Ju­ly 2015, points 5.2, 5.3 and 5.7). Again, the board does not see any evidence for this characterization of the allegedly different "approach" based on the written reasons given in T 1769/10.

16.5 The representative argued during the oral proceedings that he knew that board 3.4.03 had applied a new approach because he had represented the appellant in case T 1769/10. In this regard the board points out that it cannot take into account, when interpreting a decision of the boards of appeal (or any other decision or judg­ment for that matter), non-verifiable assertions about what a member of the board may have said during oral proceedings. The board must limit itself to the reasons given in the written decision.

16.6 The board also remarks that the facts before the board in T 1769/10 are substantially different from those in the present case, inter alia because the claims in that case contain more technical detail than the claims in the present one. The appellant's statement in the oral proceedings in this respect that the additional detail in that case had been necessary to establish an inven­tive difference over the prior art but was not needed to establish a technical contribution of the claimed sub­ject-matter does not affect the board's conclusion.

16.7 Whether the present board might have come to a different conclusion based on the facts in case T 1769/10 is immateri­al to the question of a possible di­ver­gence in approach, as argued by the appellant, between that decision and the ju­ris­prudence based on T 641/00.

16.8 Finally, the board notes in passing that also T 1769/10 does not give a closed definition of what the board con­siders to be "technical".

The board's approach in this case

17. The board has assessed the inven­tive step of the claimed invention based on the estab­lished jurisprudence. Accordingly, the board considers that

(a) an inventive step for an invention comprising "non-technical features" can only be acknowledged if and to the extent that the features of the claimed invention in combination solve a technical problem vis-à-vis the prior art in a non-obvious manner, and that

(b) it is legitimate for an aim in a non-technical field to appear in the formulation of the technical problem to be solved as a constraint that has to be met (see T 641/00, headnote 2).

17.1 The appellant has criticized this approach as being based on a "one-at-a-time", "fea­ture-by-feature" and "micro-le­vel" analysis of the invention. The board how­ever points out that, by assessing the technical con­tri­bution which the claimed features make within the con­text of the claimed invention as a whole according to (a), an in­appro­pri­ate­ly fragmented analysis of the claimed invention may be avoided.

17.2 The appellant also argued during the oral proceedings that an assessment based on this approach would be based on hind­sight, in particular due to (b). The board acknow­ledges that this risk does exist, noting however that this risk exists generally in the examination of the inventive merit of an invention in full knowledge of the invention. As regards the "COMVIK approach", the board agrees that efforts must be made to apply it in a fair manner (see T 928/03, reasons 5.3.3) and that the ob­jec­tive technical problem formulated in this context should not be a merely academic or a contrived one but one that can reasonably be assumed to have arisen at the priority date (see, e.g., T 905/09, reasons 9; and T 632/10, reasons 5.2).

18. Returning now to the differences between the claimed invention and D1 as established above, the board finds as follows.

18.1 Differences 2), 4) and 5) relate primarily to the terms and conditions of the license in question. In the board's view, it is up to the rights owners whether they want to limit the number of "co­pies" made of a given piece of software and to grant one set of rights for the first number of copies and a different, limited set of rights subsequently for ­a second number of copies. More­over, the board takes the view that the rights owner will make that choice accor­ding to legal, economic and administrative consi­dera­tions rather than technical ones. The board considers that the content of the li­cense does not contribute to the technical cha­rac­ter of the invention and thus cannot contribute to in­ven­­tive step according to T 641/00 (head­note 1).

18.2 The application mentions a software user who is dis­content that, given a license for five copies, a copy for his sixth device may simply be denied (p. 1, 2nd and 3rd para.) This situation might arise, for instance, in D1 (col. 19, lines 18-26). Likewise, a com­pany having ac­quired a license to install, say, 50 copies of a piece of software may find that it needs a 51st copy at some point, for instance for an unforeseen intern. These situ­a­tions are obviously undesirable for the users. As the appli­ca­tion also suggests, it might be argued that these situations are contrary to some legal requirement (see p. 2, lines 1-2). Under such circumstances, the board regards it as realistic that vendors, in order to accommodate a custo­mer's request and/or to avoid legal difficulties (see also T 632/10, reasons 5.3), i.e. for non-technical reasons, might offer a li­cense covering the un­limited use by a fixed number of users and a time-limited use by an additional number of users.

19. The board therefore considers that the appropriate ob­jective technical problem solved by the invention - es­pecially by differences 2), 4) and 5) - is to im­ple­ment in the system of D1 the given policy according to which usage of the soft­ware is granted with full or li­mited functionality depending on the copy count.

19.1 This problem can be reasonably assumed to have arisen at the priority date in the use of the system according to D1, and notes that it corresponds well with the problem addressed explicitly in the present application (p. 1, 3rd para. - p. 2, 2nd para.). The board is therefore satisfied that this objective technical problem is nei­ther based on hindsight nor on a distorted analysis of either the invention or D1.

19.2 The appellant argued in the oral proceedings that the appro­priate technical problem solved by the application is "how to increase the effectiveness, in terms of software functionality, of the totality of a network". The board disagrees that this is the correct objective technical problem in particular be­cause it does not take account of the effect achieved by diffe­rence 4), i.e. the use of a limited unlock key, which is speci­fically claimed and which is the central feature by means of which the application is meant to go beyond the "allow/disallow paradigm" (see p. 8, lines 5-6).

19.3 The board also disagrees with the appellant's claim that the "shift away from the allow/disallow software opera­ting para­digm" and the provision of the new "paradigm" to "degrade or adapt software functionality as a function of time and distri­bution to other computing plat­forms" (see grounds of appeal, points 5.1 and 6.19) constitutes a technical problem. Apart from the fact that no feature of claims 1 and 5 can be linked to the specific effect of modifying software functiona­lity "as a function of time and dis­tri­­bution", the board consi­ders that the new "paradigm" is not a "software opera­ting paradigm" but a non-technical "licensing pa­radigm".

19.4 In order to solve the objective technical problem de­fined above, the board finds it obvi­ous for the skilled person to provide a third return code to the server, other than grant and denial, which would in­struct the requesting client to allow only the limited functionality. It is emphasized that

(i) the license de­termines what the client is supposed to do, namely allowing the software to run only for a given period of time or number of exe­cu­tions,

(ii) the fact that the client implements the policy is, in prin­ciple, known from D1 and also im­plied by the prob­lem "to imple­ment the policy" as formula­ted above, and

(iii)neither the claim nor the de­scrip­tion contains any details as to how the client actually enfor­ces the policy.

19.5 Regarding difference 1), the board reiterates its opinion that the serial number must be construed as any number suitable for identifying the software of interest. In the field of computing, the board regards it as elemen­ta­ry to use "serial numbers" as identifi­ers. Like­wise, it is ob­vious to use a "device identi­fi­er" to bind a license to a particular computer (cf. in this res­pect, D1, col. 6, line 64 - col. 7, line 1; and col. 19, lines 15-18).

19.6 Regarding difference 3), the board considers "counting up" to a supply limit to be an obvious alternative to "counting down" from an initial supply number of "units".

19.7 In summary, the board concludes that claim 1 lacks an inventive step over D1, Article 56 EPC 1973.

20. Claim 5 differs from claim 1 in that, amongst the compu­ting devices, "at least some share a copy of the soft­ware that has the same serial number". At least in view of the broad interpretation of the term "serial number", as explained above, the board consi­ders that this diffe­rence does not affect the assessment of its inventive step as a whole. Therefore, also the appellant's request based on only claims 5 and 6 fails for lack of an inven­tive step over D1, Article 56 EPC 1973.

The request to refer questions to the Enlarged Board of Appeal

21. In this case Article 21 RPBA does not oblige the board to refer questions to the Enlarged Board of Appeal as it is not de­viating from an earlier decision or opinion of the En­larged Board of Appeal.

22. According to Article 112(1)(a) EPC, the board shall re­fer questions to the Enlarged Board of Appeal only if it considers that a decision is required in order to en­sure the uniform appli­cation of the law or if an impor­tant point of law ari­ses. The answer to a referred question should not be merely of theoretical or general interest, but has to be essential for reaching a deci­sion on the appeal in question (see, e.g., G 3/98; OJ EPO 2001, 62; reasons 1.2.3).

22.1 The board does not consider that a referral is necessary in the present case to ensure the uniform application of the law. Firstly, as explained above, the board is not convinced that a divergence in approach between T 641/00 and T 1769/10 or T 1051/07 has been established. Even assuming, for the sake of ar­gument, that the cited de­cisions did con­stitute a di­ver­gence from ­T 641/00, the fact remains that the jurisprudence based on T 641/00 has now been applied for well over a de­cade and deve­loped into what is perceived by many to be a practi­cable system for assessing the inventive step of mixed inven­tions (see again G 3/08, reasons 10.13.2). In such a situation, the board considers that a very small num­ber of decisions diverging from estab­lished juris­pru­dence on a particular question will typically not jeopardize the uniform application of the law.

22.2 To the extent that the questions pro­posed by the appellant are clear and pertinent to the present case, the board does not consider that answers to them by the Enlarged Board of Appeal are required to decide on the case at hand.

23. In particular, the board makes the following observations regarding the proposed questions.

23.1 Q1 seeks to obtain the Enlarged Board of Appeal's appro­val of an al­ternative approach to the assessment of the inventive step of mixed inventions which, in the board's view, has no basis in the jurisprudence of the boards of appeal. Given that the interpretation of the EPC is ge­nerally entrusted to the boards of appeal (see G 3/08, reasons 7.2.5) and no divergence has been identified, an answer by the Enlarged Board of Appeal to this question is not required to decide on the present case. The same applies to Q9, which is moreover unclear insofar as T 154/04 makes no recommendation regarding the "approach in Q1".

23.2 Regarding Q2, the board considers that a commercial ad­van­tage cannot, by itself, "take on a technical nature". If, however, and to the extent that "a corresponding claim element provides a technical contribution and/or further technical effect", that claim element will have to be taken into account for the assessment of inventive step. As regards Q11, it is unclear what is meant by an "underlying advantage" (of a "commercial effect") "which may not easily align with an easily identifiable tech­nical problem" and what it means for such an "advantage to be considered patentable, but at least worthy of con­sideration". As stated above, any technical effect of an invention must be taken into account (and is thus "wor­thy of consideration") regardless of whe­ther it relates to or "underlies" a commercial effect. In this regard it is unclear why the appellant cites the generation of "a random result in a game" as discussed in T 12/08 as an illustration of what it considers to be a "commercial effect".

23.3 Regarding Q3, the board considers, as set out above, that the cited passage from the reasons of T 1769/10 was intended to paraphrase the approach based on T 641/00 and, therefore, requires no interpretation.

23.4 Q4, Q7 and Q13 seek to propose, as a threshold for ack­now­ledging a "technical contribution" or a "technical effect" the "merest scintilla of an advantage that cau­ses in prac­ti­cal reality the technical implementation of the claimed arrangement to operate in a better, faster, more secure and/or more reliable fashion" (Q4) or "a surprising effect/advantage in practical reality" (Q7 and Q13). The board considers the proposed criteria to be unclear, for instance as regards the notions of what is "better" or "surprising" or what is "practical rea­lity". More­over, the proposed criteria are not regarded as being in conflict with the established approach to assessing inventive step. For in­stance, an increase in the speed of a technical imple­men­ta­tion (see Q4) would typically be accep­ted as a tech­nical effect by the boards of appeal, and a "sur­prising effect" en­ters into the assessment of inventive step if it is also found to be a technical one (see Q7, Q13). With regard to Q13, the board observes that the appellant seems to suggest that a "further technical effect" corresponds to a "a surprising effect/advantage in prac­tical reality". The board disagrees with this impli­cation. The term "further technical effect" was intro­duced in T 1173/97 in the con­text of the patentabi­lity requirements under Article 52(2,3) EPC, and the decision spe­ci­fically stated that, for this purpose, it was immaterial whether the further technical effect was known in the art (T 1173/97, rea­sons 8). Therefore, the "further technical effect" as used in T 1173/97 need not corres­pond to any surprising effect or advantage over the prior art.

23.5 The answers to Q5, Q6 and Q12 are immaterial to the present case, as the current claims do not, as a whole, "claim [or dictate] control of human behaviour" and because no "program for a computer" is claimed. Answers to Q8 and Q14 are unnecessary for a decision on the present case, as the claimed subject-matter does not "provide a choice to an indivi­dual".

23.6 The board finds that Q10 is already unclear because it does not agree with the appellant that T 1769/10 defines a "new approach" or what it should be.

23.7 As regards Q15, it is noted that the Enlarged Board of Appeal stated in G 3/08 that the established juris­pru­dence at the time was consistent and practicable. The appellant has not established to the board's satisfac­tion that this situation has since changed.

23.8 As regards Q16, the board agrees that the term "techni­cal" is not defined in the EPC or in the jurisprudence of the boards of appeal. The term "technical" thus re­quires interpretation by the boards. As explained above, the list of non-inventions according to Article 52(2) EPC is considered to illustrate what is not technical; that is, the matter excluded from patentability is generally considered to be non-techni­cal matter. The boards there­fore interpret what is or is not technical in each individual case before them using their judgment in view of Article 52(2,3) EPC.

Order

For these reasons it is decided that:

1. The request to refer questions to the Enlarged Board of Appeal is refused.

2. The appeal is dismissed.