T 0980/22 - A purely mental design method

Key points

• Claim 1 is directed to a design process, in translation: "Claim 1: Design process for the manufacture of long-body railway carriages with different seating capacities, comprising:"
• The claim is rejected under Article 52(2)(c) as a purely mental activity.
• The Board, in translation: "claim 1 does not include a computer, nor a feature that is implemented (explicitly or implicitly) by a computer program."
• "The understanding that the manufacture itself is not a step of the construction process is also supported by the granted, independent claim 6. This is directed to the manufacture of the rail vehicle using the construction process. No further restriction would arise from claim 6 if the construction process already included the manufacture."
• It is an opposition appeal; a patent was granted with this claim 1.
• In auxiliary claim 3, claim 1 is deleted, and claim 6 is the new claim 1. Only Article 123(2) is examined. The Board reverses the OD and finds that the requirement has been complied with.  The case is remitted. 
• It seems there was no attempt to amend claim 1 into a computer-implemented design method.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0686/22 - Does the Board play games?

Key points

• The applicant is Nintendo.
• "The [claimed] apparatus [i.e, the gaming device] ]is provided with a restriction process means which restricts the number of players permitted to play a multi-player game when the apparatus display means is used rather than an external TV"
• "In its [preliminary opinion] the Board discussed for the first time the Nintendo Wii U system with its Wii U game console and Wii U GamePad operator device as prior art, in particular with reference to Nintendo customer support documentation for a Minecraft game, available on-line at the time of writing the communication. The Board will refer to this collectively as D4."
• The Board refers to "https://en-americas-support.nintendo.com/app/answers/ detail/a_id/15831/~/how-to-start-a-multiplayer-game-%28minecraft%3A-wii-edition%29#:~:text=How%20to%20Start,mode%20will%20begin" (a page that no longer exists).
• From the preliminary opinion:  "the appellant-applicant will undoubtably be aware of the Wii U game console (released 2012) with its Wii U gamepad. The Wii U gamepad has its own screen which can be used to display game play. It can also be connected to an external screen by HDMI cable. Therefore, it has an output destination control means. Like D1, the Wii U console also supports multiplayer games. According to the Nintendo customer support, Minecraft on the Wii U (released December 2015, thus at least a month before the relevant date of the present application) has a multiplayer split screen mode which is only supported for a [larger] HDMI external screen connected by a HDMI cable. Whist [sic] the Board realises that the above customer support information is not prior art, the Board has no reason to doubt that the Wii U playing a minecraft game would have been the same at the relevant date. " (square brackets added in the decision).
• "The subject-matter of claim 1 differs from D4 in that, when the restriction is in place, that is when the game is played on the display means rather than the TV, multiplayer play is not performed by players exceeding a predetermined number of players. Because this claim feature is concerned with multiplayer play, it is implicit that the predetermined number of players is more than one (cf. D4's restriction to a single Minecraft player). For example, according to the invention it could be two players in accordance with the number of [two] operation devices (cf. published application, paragraph [0026])."
• Hence, compared to D4, no longer only single player mode is available on the Wii U game pad, but also a limited multiplayer mode.
• The Board considers the feature to be not inventive.
• "the idea of restricting the number of players permitted to play a certain game according to the screen used (display or TV) determines how gameplay is permitted to develop and thus lies firmly in the domain of the game designer who conceives the game. The game designer will make this choice based, amongst other things on the screen area and screen resolution needed for a player to comfortably view the content of a particular game. Moreover, the players will be well aware of the game designer's choice in this respect: They would know that using a certain screen determines how many players can play the game. Thus the Board considers that a game rule underpins this feature."
• "the Board adopts the approach as set out in T 1543/06 (Gameaccount) which is based foremost on T 0641/00 (Comvik, OJ EPO 2003, 352). Thus, only those features that contribute to technical character are to be taken into account when assessing inventive step. That requirement cannot rely on excluded (non-technical) subject-matter alone, however original it may be. The mere technical implementation of something excluded [under Art. 52(2), i.e. a game rule] cannot therefore form the basis for inventive step. Rather, it is necessary to consider in detail how that matter has been technically implemented."
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0862/20 - A mental method

Key points

•  Claim 8 reads as follows: "Method for providing information for glycemic control, namely a dose of insulin to be set, the method comprising the steps of:

  receiving security data; validating the received security data; providing validation data corresponding to the validation of the received security data; and unlocking at least a predetermined function out of at least one first and at least one second processing function for execution based on the validation data, wherein the at least one first processing function is for adjusting profile parameters for a selected dose adjustment profile, and the at least one the second processing function is for stepwise adapting the dose of insulin based at least on the selected dose adjustment profile and thereby determining the value for the dose of insulin to be set based on received blood glucose value data, wherein the profile parameters for each different dose adjustment profile comprise a specific initial dose value, a specific time interval for increasing the dose, a specific dose increase step and a low blood glucose threshold value."

• The Board's decision includes an explanation of the invention. "The contested patent relates to a medical device for providing... a dose of insulin to be set " "In order to prevent an unauthorised person from modifying the device (in particular modifying the dose adjustment profiles) or using it in a way which could be harmful to the user, the device is configured to prohibit the execution of one or both of the processing functions until successful validation of some security data, such as an activation key or a password". 

• "Although, as argued by the appellant [proprietor], the method steps recited in claim 8 as granted are phrased using terminology commonly encountered in the field of computer-implemented methods, the Board shares the respondent's view that all these steps can also be carried out by the sole human brain and that they do not necessarily require the use of technical means, even implicitly.

  The example scenario presented by the respondent [opponent] in this respect is convincing. As submitted by the respondent, all the adjustment and adaptation steps of claim 8 could indeed be performed mentally by a user, e.g. on the basis of profile parameters memorised by the user. Obtaining and checking a password or a passport amounts to receiving and validating security data. A step of "unlocking a function for execution" takes place when the user decides to perform certain actions, such as the above-mentioned adjusting or adapting steps, only after having successfully validated the identity of another person, whereas the execution of these actions remains prohibited if the person is considered to be unauthorised.

  The Board therefore concurs with the respondent that claim 8 as granted relates to a method for performing mental acts as such, which is excluded from patentability pursuant to Article 52(2)(c) EPC."

• "Claim 8 of auxiliary request 1 explicitly stipulates that the method is "computer-implemented". As acknowledged by the respondent, the method has therefore a technical character and is not excluded from patentability under Article 52(2)(c) EPC."

• The case is remitted to the OD for consideration of novelty and inventive step.

• EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0926/17 - (I) Software as such

Key points

•  Claim 15: " A computer program comprising instructions for carrying out all the steps of the method claim 14, when said computer program is executed on a computer system."
• Always useful to recall the basics: there is no need that a claimed product is a tangible product.
• Do we know if this claim 15 is permitted under Art.52 based on its wording? The answer is no. The computer system is recited but not actually part of the claimed subject-matter, of course, so that feature does not help. Moreover, the claim does not specify any computer-readable medium (T424/03).
• We have to apply T1173/97 headnote: "A computer program product is not excluded from patentability under Article 52(2) and (3) EPC if, when it is run on a computer, it produces a further technical effect which goes beyond the "normal" physical interactions between program (software) and computer (hardware)"."
• As also outlined in G-II, 3.6.
• In the case at hand, claim 14 is directed to "A method of detecting and cutting tough tissues such as bones, cartilage, and fat from food item pieces such as fish or meat fillets or poultry items, comprising imaging incoming food item pieces using at least one x-ray machine ... conveying, subsequent to said x-ray imaging, said food item pieces on a second porous conveyor belt ... cutting said tough tissues from said food item pieces"
• The method of claim14 clearly produces a further technical effect which goes beyond the "normal" physical interactions between software and computer.
• It seems that claim 15 hence passes the test of Art.52.
• The Board: "Claim 15 is directed to a computer program comprising instructions for carrying out all the steps of the method claim 14. As such, the above positive conclusions in respect of sufficiency, clarity, added subject-matter, novelty and inventive step in respect of claim 14 also hold for claim 15 for similar reasons."
• This is all fairly settled case law and there was no dispute about claim 15 in the opposition appeal case at hand.
• credits to Mr. Thomas for highlighting the decision - https://www.linkedin.com/pulse/92617-claims-computer-program-comprising-instructions-thomas/

• 
  
• EPO T 0926/17

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

Summertime reading - Lord Hoffmann's Two Principles

• Today's post is not about a particular case but a collection of some quotes about the issue of "no inventive step for non-technical features" from the IPKat weblog that I find useful.
• At the end of this post, I add a brief remark about a possible connection with the Comvik approach.
• I categorize this post under summertime reading though it is spring at the time of publication.
  

Lord Hoffmann's Two Principles (I)

David Pierce, Patentable subject matter - Where are we now?, IPKat weblog, 28 January 2010

As an aside, Lord Hoffmann (who was, until recently, the most senior IP judge in the UK) has come up with two reasons that could be used to at least explain these exclusions. Exclusions 1-6 [listed below] fall within what he considers to be the 'practical application principle', that these things cannot be the subject of a patent in themselves, but this would not necessarily stop practical applications being patentable (for example, the practical application of the discovery of the electrical nature of lightning to the invention of a lightning rod).

The last exclusion falls within the 'human behaviour principle', since mental acts, playing games and doing business are all aspects of human behaviour that should not [] be patented [(presumably for practical as well as ethical reasons)], even though they may be new, useful and inventive. [...]

The exclusions, being things that are not considered to be inventions [Article 52(2) EPC] are:

1. discoveries;
2. scientific theories;
3. mathematical methods;
4. aesthetic creations;
5. programs for computers;
6. presentations of information; and
   
   
7. schemes, rules and methods for performing mental acts, playing games or doing business.

Source: https://ipkitten.blogspot.com/2010/01/patentable-subject-matter-where-are-we.html

Lord Hoffmann's Two Principles (II)

IPKat ("Tufty the Cat"), Lord Hoffmann on Patentability of Software and Business Methods, IPKat weblog, 13 November 2009

"[…] Lord Hoffmann's main point was to demonstrate that there are two over-arching principles that can be applied to the exclusions of Article 52 EPC that make some sense of the EPO 'technical character/effect' test that confuses so many people (and cats), including at least one English Court of Appeal judge and the current EPO President. These principles can be described as the practical application principle and the human behaviour principle. The former principle applies to some of the non-inventions listed in A52(2) EPC, while the latter applies to the others. If I remember right, Lord Hoffmann divided them up as follows:

Practical Application Principle: discoveries, scientific theories and mathematical methods, aesthetic creations, presentations of information, and programs for computers;

Human Behaviour Principle: schemes, rules and methods for performing mental acts, playing games or doing business.

The reasoning goes something like this: Non-inventions in the first category do not in themselves have practical application, so should not be patentable in themselves, but they might in some cases have the capability to support a patentable invention, for example in the way that a new computer program can support an invention if there is a practical application (or 'further technical effect', if you prefer). 

Non-inventions in the latter category are aspects that cover human behaviour, so should not be patentable for this reason alone, even though they may very well have practical application (such as new tactics in football or new ways of investing money). An example that was given is a new method for a pilot to use when performing take-off in an aeroplane that minimises noise.

I am not yet sure if this new way of describing the bounds of what should and should not be patentable is workable or consistent, but it certainly seemed to make sense at the time, and definitely makes a lot more sense than the confusion that is going on with the situation in the US with the Bilski case. […]" 

Source: https://ipkitten.blogspot.com/2009/11/lord-hoffman-on-patentability-of.html

Lord Hoffmann's Two Principles (III)

The original source:
Lord Hoffman, Hume Lecture 2010, The David Hume Institute 2010, ISBN 9781870482875

" Nevertheless, over time, two important principles have emerged. One [the Practical Application Principle] is that you cannot patent the discovery of new information, or a system for producing new information. The reason is that a patent must be for doing something practical. Of course, the information may enable you to invent something practical. You cannot patent a genetic code which you have discovered, but knowing the gene code may enable you to make an artificial molecule which expresses the protein for which that gene coded. You can certainly get a patent for that.

There are two possible justifications for this principle, both deeply embedded in the nature of patents. One is the nature of a patent as a monopoly. It is a right to stop people from doing something. But you can’t stop people from thinking and therefore you can’t have a monopoly of some particular piece of information. The other explanation is that the patent specification must enable the skilled person to perform the invention. So you cannot simply claim a monopoly on anything which uses the information you have discovered, like making the molecule which expresses the protein. The specification does not tell you every way in which the information may be used.   

The second principle [Human Behaviour Principle] which evolved in England was that you cannot patent methods of human behaviour. That was probably based on public policy: that one should not be able to monopolise the way people may behave. It means that you cannot get a patent for novel methods of doing business, like the idea of issuing credit cards, although you can get a patent for a new and inventive form of electronics in the card or the machine that reads it. You cannot get a patent for a new method of avoiding tax, or keeping your assets out of the hands of your creditors. These may be new practical applications of inventive discoveries about psychology, economics, law and so forth, but they are not patentable. Not at any rate in Europe. " 

Source: https://static1.squarespace.com/static/59b82ed532601e01a494df34/t/59de2fbd51a584fb1ea14361/1507733437917/HOP-86.-Intellectual-Property-Hoffmann.pdf

Note: Out of an abundance of caution, I note that Lord Hoffmann is not describing EPO case law in the cited paragraphs. There are clearly a few differences.

Connection with the Comvik Approach

• For the current Comvik-approach generally, see G1/19.
• It seems that features falling under the Human Behaviour Principle are deemed to make no technical contribution for the purposes of assessing inventive step under the Comvik approach.
• On the other hand, features falling under the Practical Application Principle may very well make a technical contribution; if that is the case, inventive step can accordingly be based on such a feature under the Comvik approach.
• 
  

T 1790/17 - Not an invention under Article 52(2)

Key points

• The Board adds a headnote about the purpose of oral proceedings in ex parte cases, but I focus on the refusal under Art.52(2).
•  “ The Board agrees with the examining division's conclusion that claim 1 is so abstract that it encompasses entirely non-technical subject-matter excluded under Article 52(2) and (3) EPC.”
• “The claim essentially defines a method for collecting consumer feedback on the use of a product. This feedback is used to redesign the product such that it is better adapted to meet consumer needs.”
• “For that reason the Board does not agree with the appellant that step v) is technical. The determined parameters encompass non-technical data and, thus, cannot imply a technical effect in the sense of points 88 and 94 of G 1/19 as argued by the appellant.”
• “Accordingly, claim 1 is not an invention under Article 52(2) EPC.”
• As a comment, the Board does not expressly identify which one of the items listed under Article 52(2) applies or whether the Board relies on the 'in particular' phrase in the opening clause of Article 52(2) EPC (in other words, not so much on the non-exhaustive list of Art.52(2) but on the requirement of 'an invention' in Article 52(1). 

Headnote

The purpose of the oral proceedings for the appellant is to better explain his case and for the Board to understand and clarify points which, perhaps, up to that point were not sufficiently clear. This is particularly relevant in ex parte cases where besides the applicant/appellant no other party is involved. If amendments resulting from such discussions were not possible, oral proceedings would be pointless. The new [substantially amended] auxiliary request was filed as a direct reaction following the exchange of arguments in the oral proceedings and addressing the objections and concerns the Board had. Furthermore, this request overcame the grounds on which the appealed decision was based. The Board considers the filing of such a request is justified by exceptional circumstances and therefore admits it into the proceedings. (See point 7 of the reasons)

T 1790/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t171790eu1.html

VIII. Claim 1 of the main request reads:

"A method for redesigning one or more product or process parameters of a first manufactured article, in order to provide different product or process parameters of a second, transformed, manufactured article, wherein the method comprises the steps of:

i) associating a unique identifier with individual first manufactured articles, or with groups of first manufactured articles;

ii) capturing and recording product data and/or process data relating to the first manufactured articles;

iii) soliciting and recording consumer feedback relating to in use performance of the first manufactured articles;

iv) correlating consumer feedback with product data and/or process data of a specific, individual, first manufactured article by means of the unique identifier;

v) determining different product or process parameters for a second manufactured article; and

vi) applying one or more different product or process parameters to the first manufactured articles to transform them into second manufactured articles, the second manufactured articles being better adapted to meet consumer needs than the first manufactured article."

Reasons for the Decision

The invention

1. The invention relates to a method for redesigning product or process parameters of a manufactured article (e.g. diapers) based on consumer feedback relating to the article's performance in use (see paragraphs [0005] to [0007] of the published application).

2. Claim 1 of the auxiliary request further specifies that a controller determines the redesigned process parameters and, based thereon, adjusts manufacturing parameters of a converting apparatus (assembly line) in order to produce the second articles ([0015]).

T 2049/12 - Functional data is not always technical

Key points

• This is an examination appeal concerning a patent application directed to software. 
• The Board: " A common misconception regarding the PHILPS decision [T 1194/97] is that there are only two kinds of data - cognitive and functional - and that functional (i.e. non-cognitive) data is always technical. The relevant question for assessing whether a data structure has technical character is rather whether it produces a technical effect. In the present case, the Board considers that there is no technical effect. Therefore, the claimed data structure does not provide an inventive step (Article 56 EPC)." 
• " Furthermore, the activity of programming is also excluded under Article 52(2)(c) and (3) EPC, because it is a mental act []. The choice of program structure, including the choice of data structures, belongs to the activity of programming. Well structured code helps the programmer in performing this activity, because the code is easier to understand, maintain, and adjust, but, since programming is not technical, this is not a technical effect." 

T 2049/12 (Data structure for defining transformations / MICROSOFT) - link

Reasons for the Decision

5. Inventive step (Article 56 EPC)

5.1 In the oral proceedings, inventive step was discussed starting from the prior art described in the application, from paragraphs [001] to [004]. As mentioned above, it was known to provide multiple services in a sequence, and to transform data provided from one service to another. In the prior art, those transformations (i.e. from "latitude" to "lat" and from "longitude" to "long") were implemented using "specific dedicated code" for each of the transformation. The dedicated code was, of course, stored on some computer-readable medium.

5.2 The prior art and the invention achieve the same transformations. The difference lies in how those transformations are defined. In the prior art, they are defined in "dedicated code", whereas in the invention, they are defined in a data structure having service identification fields, a transformation class field and transformation parameter fields.

T 0697/17 - Technical features, contributions, considerations and decisions

Key points

• This examination appeal relates to a software patent application directed to a method for 'updating values' in a database, in particular, a database with a "complex structured type column". The question is which features are technical for inventive step. Preliminary, the Board overrules the Examining Division's rejection based on Art. 52(2)(a) EPC.
• For patentability: "Claim 1 therefore defines a method performed in a relational database system. In principle, the terms used in a claim should be given the common meaning they have in the relevant technical field. In computer science, the term "relational database system" relates to a software system implemented in one or more computers for storing, controlling and processing data. Carrying out a method performed in a relational database system involves the use of a computer system." In line with G3/08, the computer-implemented method is not excluded.
• On to inventive step and the identification of the technical features. "in practice it may be difficult to distinguish between features making a technical contribution and those not contributing, especially in cases in which the non-technical aspects are tightly intermingled with the technical features" 
•  "From none of the above cited decisions can it be concluded that execution time, processing speed, latency, amount of memory required or other such program performance measurements are per se non-technical measurements which cannot play a role in establishing a technical effect and determining whether a technical contribution is present. The above cited decisions merely teach that an improvement with regard to one of those performance measurements alone ("the sole", "not sufficient", "in itself"), is insufficient to establish technical character. In order to decide whether such an improvement is a technical effect it has to be further determined how the improvement is achieved, for instance whether it is the result of technical considerations" 
• " In other words, features make a technical contribution if they result from technical considerations on how to for instance improve processing speed, reduce the amount of memory required, improve availability or scalability, or reduce network traffic, when compared with the prior art or once added to the other features of the invention, and contribute in combination with technical features to achieve such an effect" (question for the readers with more experience in this field: does the word 'and'  indicates two cumulative or alternative requirements here?)
• " On the other hand, such effects and the respective features are non-technical if the effects are achieved by non-technical modifications to the underlying non-technical method or scheme (for example, a change of the business model, or a "pure algorithmic scheme", i.e. an algorithmic scheme not based on technical considerations)." 
• " A possible test for determining whether non-technical features are based on technical considerations is to consider whether the non-technical features would have been formulated by a technical or by a non-technical expert (T 817/16, reasons 3.12 [see recent post, link to be added]). Since computer programming involves technical and non-technical aspects (G 3/08, reasons 13.5.1; T 1463/11 of 29 November 2016, reasons 21), it is difficult to apply that test to distinguish abstract algorithmic aspects from "technical programming" aspects. In that case, the test would have to be whether the features were determined by a "programmer as such" or by a "technical programmer". It may therefore be preferable to directly determine whether the decision to adopt the non-technical features is a technical one (T 1463/11, reasons 21) or whether it required "technical considerations beyond 'merely' finding a computer algorithm to carry out some procedure" (G 3/08, reasons 13.5)." 

EPO T 0697/17 -  link

VII. Claim 1 of the main request reads as follows:

"A method of updating values in a complex structured type column having a hierarchical structure in a relational database system, wherein the complex structured type consists of a set of fields, properties and methods and wherein each field or property is one of a scalar type, a complex structured type itself or a multiset in which each element is a complex structured type, the method comprising the steps of:
parsing by a parser a database modification statement and producing a description of changes to the database proposed by the database modification statement;
producing by a query optimizer an execution algorithm that will implement the database modification;
computing by a query execution engine that uses the execution algorithm a data structure of the database modification statement to determine which values within a complex structured type column are to be updated, wherein the data structure represents values in the complex structured type column as an aggregation of changes to the values at any level of the hierarchical structure of the complex structured type column; and
applying by the query execution engine the changes to the values in the complex structured type column that are to be updated."

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

Invention

2. The invention concerns a relational database system and a corresponding method for updating values in a complex-structured-type column. According to the description, the purpose of the invention is to achieve complex and partial updates efficiently (see paragraph [0001] of the international publication).

T 1924/17 - When are mathematical features technical?

Key points

• This is an examination appeal relating to a software invention with mixed technical and non-technical features. There is also a mathematical formula recited. 
• r.15: " In the present case, a further issue that may have led the Examining Division to wrong conclusions when it identified technical and non-technical features is that claim 1 refers, in the context of its ranking feature, to a linear combination, i.e. a mathematical formula (see features E3a and E3b of claim 1). The Examining Division considered the ranking feature as an abstract procedural step, which is non-technical. '
• " In view of the above analysis, the Board has no doubts that methods relating to pure mathematics are excluded from patentability by their very nature. This interpretation is consistent with the context given by Article 52(1) EPC, as inventions in all fields of technology always concern the real world and are not merely theoretical, abstract subject-matter or activities. This interpretation is also consistent with the object and purpose of the relevant provisions in Article 52 EPC, as the legislative history clearly shows the aim to exclude "mathematical theories" from patentability, and as the Board considers that the expression mathematical theories at least encompasses pure mathematics." 
• " In the Board's view, the context provided in Article 52(1) EPC, i.e. the limitation of inventions to all fields of technology, makes it clear that methods applying mathematics in a non-technical field are generally excluded from patentability (unless they use technical means, see decision T 258/03, EPO OJ 2004, 575, headnote I, according to which a method involving technical means is an invention within the meaning of Article 52(1) EPC). However, where mathematical features of an invention contribute to the solution of a technical problem, such mathematical features cannot be ignored when assessing inventive step." 
• " For the avoidance of doubt, the Board notes that a method consisting solely of a mental act, even if it involves mathematical steps directed to solve a technical problem, remains a method for performing a mental act as such (not using particular technical means) and is excluded from patentability under Article 52(2)(c) and (3) EPC, i.e. all exclusions from patentability have to be overcome by a claimed activity or subject-matter." 
• " In the present case, as the mathematical features concerning the linear combination, E3a and E3b of claim 1, contribute to the automatic determination of which data tables are to be managed by which type of database management system, they play an essential role in the technical functioning of the system and consequently serve the overall technical purpose of claim 1. Furthermore, these features are based on technical considerations concerning the functioning of the database technology used. Hence, they contribute to the solution of a technical problem and have to be taken into account when assessing inventive step." 

EPO T 1924/17 - link

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

The invention

2. The invention relates to data consistency management. It aims at achieving scaling using cloud computing for applications relying on a relational database as the data tier to provide transaction support and to ensure data consistency (originally filed description, paragraph [0001]).

[...]

Main request

3. Claim 1 of the main request relates to a data consistency management system determining whether to forward a query to a NoSQL data store or to a relational database management system (RDBMS) by monitoring database queries issued by an application, and identifying data tables with query patterns that are suitable to be managed by the NoSQL data store. The system comprises the following features itemised by the Board (with reference signs removed):

A a query identification module for monitoring and parsing queries to identify all queries of a data table, and calculating how many of the identified queries are read queries, and how many of the identified queries match the query patterns
B a data table ranking module for ranking data tables with a linear combination of a percentage of read queries and a percentage of the query patterns
C a data table determination module for automatically determining which data tables are to be managed using the NoSQL data store
D a query translation module for automatically translating queries targeting the determined data tables to NoSQL API calls

T 0817/16 - Knowledge only a technical person could possess

Key points

• A bit older case (11.04.2019) about software patents, in particular for a method of scoring results for a search engine. The question is if a feature is technical or non-technical. A further question is, if the feature is non-technical, whether it nevertheless provides for a technical effect. If that is the case, it is not included in the problem statement under the Comvik approach.
• "The appellant also argued that the method of claim 1 achieved a technical effect by implementing the task of assigning a score to a document based on the frequency and the amount of changes to the document in a particularly resource-efficient manner. Instead of storing the current version of a document in its entirety to allow the amount of changes in the next version of the document to be determined, the method of claim 1 only stored a "signature" and determined the amount of changes by comparing the signatures of the previous and new versions." 
• The Board first reviews existing case law: "More generally, the Board considers that if non-technical claim features interact with technical claim features to cause a physical effect over the prior art, [...]  the physical effect is to be regarded as a technical effect for the purpose of assessing inventive step if the non-technical features are based on technical considerations aimed at controlling that physical effect" (emphasis added, internal citations omitted throughout)
• The Board: "A useful test for determining whether such technical considerations are present is to ask whether the non-technical features would have been formulated by a technical person rather than by a non-technical person or persons" 
• "This is not an enquiry into the actual state of technical or non-technical knowledge at the effective filing date; the question is rather whether the knowledge required for coming up with the non-technical features in the particular case is of a kind that only a technical person, i.e. a person not working exclusively in areas falling under Article 52(2) EPC, could possess." 
• "In the present case the Board need not make a judgment as to the technicality of the use of term vectors in the context of claim 1, as the outcome of the inventive-step assessment does not depend on it." (i.e., the feature, if assumed to be technical, is obvious).
• This decision was favourably discussed in the President's Comments in pending referral G1/19 (para. 25). 

T 0817/16 (Document scoring/GOOGLE) - link

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

2. The invention

2.1 The application relates to search engines. Its background section explains that, ideally, a search engine provides the user with the results most relevant to the user's query. Relevant documents are typically identified on the basis of a comparison of the search-query terms to the words contained in the documents and other factors such as the existence of links to or from the documents. The detailed description discloses a number of techniques for scoring documents, which may be used to improve the search results returned in response to a search query.

2.2 The claimed invention is directed to the embodiment described on page 6, second full paragraph, to page 7, third full paragraph, of the published application. It proposes scoring a document on the basis of "history data" that reflects the frequency at and the amount by which the content of the document changes over time. This history data is obtained by "monitoring signatures of the document".

3. Main request - inventive step

3.1 Unlike claim 1 of the first and second auxiliary requests, claim 1 of the main request is not worded as a "computer-implemented" method and therefore arguably encompasses mental acts as such, which are excluded from patentability under Article 52(2) and (3) EPC. But since the appellant at the oral proceedings expressed its willingness to limit the claim to a "computer-implemented" method, the Board will, for the purpose of assessing inventive step, interpret claim 1 accordingly.

3.2 Since the method of claim 1 can be performed on a general-purpose computer, the Board considers such a computer to be a suitable starting point for assessing inventive step. The subject-matter of claim 1 differs from this prior art in the steps listed in claim 1.

T 1668/15 - Patenting software

Key points

• The Board applies in a straightforward way the rule that a claim directed to a computer program is not excluded from patentability by Article 52(2)(c) EPC if the computer program has a technical character. The computer program at issue has technical character because it runs on a control device for a rolling mill.

EPO T 1668/15 -  link

3. Artikel 52(c) EPÜ [sic!]

Anspruch 8 ist auf ein Computerprogramm gerichtet.

Nach ständiger Rechtsprechung ist ein Computerprogramm dann patentierbar, wenn seine Umsetzung einen technischen Charakter hat (siehe Rechtsprechung der Beschwerdekammern, 8. Auflage, 2016, Kapitel I.A.2.4.3).

Die von der Beschwerdeführerin zitierte Meinung der Großen Beschwerdekammer G3/08 enthält in Hinblick auf die Patentierbarkeit von Computerprogrammen keine einschlägigen weiterführenden Auslegungshilfen, da die Vorlage des Präsidenten des Europäischen Patentamts, die zu G3/08 führte, bereits unzulässig gewesen ist.

Das im erteilten Anspruch 8 definierte Computerprogramm weist einen Maschinencode auf, der unmittelbar von einer Regelanordnung ausführbar ist und dessen Ausführung eine Umsetzung der Regelanordnung gemäß Anspruch 1 in einem Walzgerüst bewirkt.

Das in Anspruch 8 definierte Computerprogramm weist daher zweifelsfrei einen technischen Charakter auf und fällt daher nicht unter die Ausnahmen von der Patentierbarkeit gemäß Artikel 52(c) EPÜ [sic!].

T 1817/14 - The purpose of Article 84

Key point

• This examination appeal concerns a claim 1 for a " A method for analyzing of a patent's [] over at least one document[]", i.e. software for (semi) automating patent examination. The inventor (and effectively sole applicant) appears to be a retired German professor of informatics. Although not relevant for the decision, the application claims priority of 31 US provisionals. 
• The Board finds a substantial procedural violation because the reasons of the Examining Division for not admitting the 2nd auxiliary request are only contained in the minutes, not in the written decision. The Board however does not remit the case, and admits that request, also because it finds the claim to lack inventive step.
• The Board gives, obiter, some general remarks on the relation between Artilce 69 and 84 EPC.
  " By virtue of Article 84 EPC, an examining division can and shall examine the clarity of the claims before it. A clarity objection obliges the applicant to consider amending the claims in the light of the patent specification. That is, even if it is possible to interpret a claim in the light of the patent specification, Article 84 EPC may oblige the applicant to make that interpretation explicit in the claim language. When a claim has been clarified, it becomes easier and more predictable to determine its scope in examination (e.g. when assessing inventive step) or its extent of protection in post-grant procedures (according to Article 69 EPC). In the board's view, this is a main purpose of Article 84 EPC." 
• The claim was rejected for lack of inventive step, essentially because " Following T 49/99, the board considers this procedure of information modelling to be an intellectual activity (effectively a method for performing mental acts, Article 52(2)(c) EPC) which does not, per se, contribute to the technical character of an invention). For this conclusion it is immaterial that the present application does not even relate to the modelling (let alone simulation) of a physical system but to the modelling of what a given set of documents discloses and how they relate to each other." 

Reasons for the Decision

The alleged procedural violation, Article 11 RPBA

1. During the oral proceedings before the examining division, a set of claims according to a second auxiliary request was filed but not admitted (see the minutes, points 74, 80 and 90). However, the decision under appeal does not mention the existence of a second auxiliary request, let alone give reasons why it was not admitted.

T 0758/12 - Genotype and business method

Key points

• In this examination appeal, claim 1 is directed to a method for selecting medication for a patient, comprising the steps of (essentially) providing the patient's genotype wherein the genetype has a specific allele (i.e. selecting patients having that allele) and the step of selecting the medication based on the genotype.
• " Without further limitation, the term "providing a patient's genotype" includes the provision, i.e. the making available, of patient data, for instance, in the form of a print-out on a piece of paper when such data have been obtained in a step preceding the steps of the claimed method. Under these circumstances, the claimed method is reduced to a scheme, rule or method for performing a mental act or doing business with those data which as such is excluded from patentability (Article 52(2)(c) EPC)."

EPO T 0758/12 - link

V. Claim 1 of the main request reads:

"1. A method for selecting a psychotropic medication for a patient, said method comprising
(a) providing said patient's genotype for a panel of genes, wherein said panel comprises a CYP2D6 gene, a CYP2C19 gene, a CYP1A2 gene, a serotonin transporter gene, and a serotonin receptor 2A gene; wherein said genotype for said CYP2D6 gene comprises the 2D6*41 allele; and
(b) selecting said psychotropic medication based on said genotype."

Reasons for the Decision

Extent of examination in appeal proceedings

1. In an appeal from a decision of an examining division, the board is not limited to examine issues on which the examining division decided adversely, in the present case issues under Articles 123(2) and 56 EPC. Rather, the board is empowered to examine whether or not the claims on file and the invention to which they relate fulfil all requirements of the EPC and, accordingly, raise new objections if it considers it necessary (see Order of decision G 10/93, OJ EPO 1995, 172). In the present case, the board considers that issues under Articles 52(2)(c) and 84 EPC must be addressed.

Article 113(1) EPC - right to be heard

2. As announced in writing, the appellant did not attend the oral proceedings. Nor did it file substantive arguments in reply to the board's communication pursuant to Article 15(1) RPBA (cf. point III, above). By neither replying to the board's communication in substance nor attending the oral proceedings, the appellant effectively chose not to avail itself of the opportunity to comment or present its observations on the board's provisional opinion (Article 113(1) EPC). As a consequence of appellant's course of action, there are no submissions on file as regards the patentability of the claimed subject-matter (Article 52(2)(c) EPC) or the compliance with the requirements of Article 84 EPC, issues mentioned in points 6 to 10 of the board's communication pursuant to Article 15(1) RPBA and relating to the main and the auxiliary request.

Article 52(2)(c) EPC

3. As presently worded, claim 1 of the main and the auxiliary request encompasses subject-matter excluded from patentability. Claim 1 of both requests defines a method for selecting a psychotropic medication for a patient comprising the steps of (a) providing a patient's genotype, and (b) selecting said medication. Without further limitation, the term "providing a patient's genotype" includes the provision, i.e. the making available, of patient data, for instance, in the form of a print-out on a piece of paper when such data have been obtained in a step preceding the steps of the claimed method. Under these circumstances, the claimed method is reduced to a scheme, rule or method for performing a mental act or doing business with those data which as such is excluded from patentability (Article 52(2)(c) EPC).

Article 84 EPC

4. Step (a) of claim 1 of both requests is ambiguous and therefore unclear within the meaning of Article 84 EPC.

The step comprises the provision of a patient's genotype for a panel of genes which comprises the CYP2D6 gene and "wherein said genotype for said CYP2D6 gene comprises the 2D6*41 allele". This wording allows three possible interpretations:

(i) the feature "wherein said genotype for said CYP2D6 gene comprises the 2D6*41 allele" is interpreted as merely stating that the 2D6 alleles which can possibly be identified in said patient include or comprise the 2D6*41 allele, or

(ii) the feature "wherein said genotype for said CYP2D6 gene comprises the 2D6*41 allele" specifies that the patient carries said 2D6*41 allele. The claimed method is thus limited to selecting a psychotropic medication (step (b) of claim 1) for a patient who is already known to be a carrier of at least one 2D6*41 allele, or

(iii) the feature "wherein said genotype for said CYP2D6 gene comprises the 2D6*41 allele" is interpreted as requiring that "providing said patient's genotype" comprises determining experimentally if said patient comprises the 2D6*41 allele.

5. In view of this ambiguity, neither claim 1 of the main request nor claim 1 of the auxiliary request provide a clear definition of the claimed subject-matter.

6. Furthermore, claim 1 of both requests lacks essential technical features.

According to the established case law of the Boards of Appeal, Article 84 EPC has to be interpreted as meaning not only that a claim must be comprehensible from a technical point of view, but also that it must define the object of the invention clearly, that is to say indicate all the essential features thereof. All features which are necessary for solving the technical problem with which the application is concerned have to be regarded as essential features (see "Case Law of the Boards of Appeal of the EPO", 8th edition 2016, II.A.3.2, page 272).

7. The goal of the method of claim 1 is the selection of a "psychotropic medication for a patient". The method comprises the determination of the patient's genotype for a panel of five genes (CYP2D6, CYP2C19, CYP1A2, a serotonin transporter gene (5-HTT), and a serotonin receptor 2A gene (HTR2A)) (step(a)), followed by the selection of said medication based on said genotype (step (b)). Step (b) does however not define any rules, criteria, parameters or properties for the selection of a psychotropic medication based on a patient's genotype of the five genes. The claim therefore lacks essential technical features.

8. Moreover, according to Article 84 EPC, the claims must not only be clear but also supported by the description. This requirement reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified (see decision T 409/91, OJ EPO 1994, page 653, point 3.3 of the Reasons for the decision).

9. The patent application does not provide instructions how to select a psychotropic medication if a patient is a carrier of a 2D6*41 allele, either in combination with a second 2D6*41 allele or in combination with a different 2D6 allele, and particular alleles of the other genes mentioned in the claim.

Although the patent application discloses allelic variants of several cytochrome P450 genes (Table 1), there is no information on the activity level of any of the mentioned alleles except for some CYP2D6 alleles (Table 10). Nor is there any information on the activity levels related to or associated with the polymorphisms of the serotonin transporter and the serotonin receptor 2A listed in Table 2.

The application contains also no information on the (exclusive) substrate and conditions to be used for determining the activity level of the CYP2D6 alleles. There is no reference to a "standard assay" (well known and generally accepted in the art) for measuring such activity levels, let alone to "standard assays" for measuring the activity of each and every allele of the other genes listed in the claims. Nor is there any information on the criteria (threshold) used for classifying a CYP2D6 allele as a poor, intermediate, extensive or ultra-rapid metabolizer.

10. Thus, claim 1 of the main and the auxiliary request, directed to a method for selecting a psychotropic medication, relates to subject-matter which, after reading the description, is not at the disposal of the person skilled in the art.

11. The subject matter of claim 1 of the main and the auxiliary request is neither clearly defined nor supported by the description (Article 84 EPC).

Conclusion

12. In the absence of an allowable request, the appeal must be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 1393/11 - Technical character

T 2217/11 - No business method

T 2217/11
Link



Key points

• The application was refused because the Examining Division found that the claims related to "subject matter excluded from patentability under Art. 52(2) and (3) EPC",  likely because the claimed invention was considered to be a method of doing business and therefore excluded by Article 52(2)(c) EPC.
• However, the claimed method also recites technical features and therefore is not excluded from patentability, according to the Board. 

IV. Claim 1 reads as follows:

"A method for secure payment via a communication network, the method involving in a payment session three agents, [...]

Reasons for the Decision

3. Patentability

3.1 The Examining Division found that the claims related to "subject matter excluded from patentability under Art. 52(2) and (3) EPC." No subsection of Article 52(2) EPC was mentioned, but in the light of the comments in the final two paragraphs on page 4 of the Reasons, it would appear that the claimed invention was considered to be a method of doing business, and therefore excluded by Article 52(2)(c) EPC.

3.2 Although methods of doing business are excluded from patentability by Article 52(2)(c) EPC, this is only to the extent to which the application relates to methods of doing business "as such" (Article 52(3) EPC).

In the present case, claim 1 seeks protection for a method for secure payment via a communication network, and the subject-matter is chiefly defined in terms of a sequence of messages exchanged between three agents, the content of the messages and the extent and nature of the encryption used being set out in detail. The subject-matter of the claim does not, therefore, relate to a method of doing business "as such", but rather to the field of secure communication over a network using cryptography, and hence it has a technical character (see e.g. T 789/08, Reasons, point 3.2, first paragraph).

3.3 The Board accepts that claim 1 comprises certain individual features which might be seen as purely related to business, for example transferring by the broker a payment amount to an account of the vendor. This, however, is irrelevant. By virtue of the technical features referred to above, the claimed method is an invention within the meaning of Article 52(1) EPC and not excluded from patentability under Articles 52(2) and (3) EPC 1973 (see e.g. T 258/03, Points 4.1 to 4.7).

[...]

4.6 The subject-matter of claim 1 is therefore judged to involve an inventive step within the meaning of Article 52(1) EPC and Article 56 EPC 1973.