T 258/03 - Reasoning On Patentable Subject-matter

Reasoning On Patentable Subject-matter

The invention in the application under examination related to an "automatic Dutch auction method executed in a server computer".

The Board of Appeal first made it clear that:

  1. there are four requirements to be fulfilled for some claimed subject-matter to be patented: "(1) it should be an "invention", and this invention must be (2) new, (3) inventive, and (4) industrially applicable", that
  2. the term "invention" is to be construed as "subject-matter having technical character", and finally that
  3. the "verification that claimed subject-matter is an invention within the meaning of Article 52(1) EPC" must be done before performing the three other tests, i.e. the novelty, the inventive step and the industrial applicability tests.

Consequently, and having regard to the structure of the EPC, the Board held that "it should be possible to determine whether subject-matter is excluded under Article 52(2) EPC without any knowledge of the state of the art (including common general knowledge)".

This approach confirmed that the Boards of Appeal of the EPO have abandoned the "contribution approach", which consisted in deciding whether a claimed subject-matter is an invention by deciding whether it brought forward a contribution to the art in a field non excluded from patentability, and therefore by inherently taking into account prior art during this first step.

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 themselves turn out to fulfil all requirements of Article 52(1) EPC."

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 from T 931/95. The Board justified this with the following analysis:

"an assessment of the technical character of a method based on the degree of banality of the technical features of the claim would involve remnants of the contribution approach by implying an evaluation in the light of the available prior art or common general knowledge."

What may be viewed as general guidelines for the examination of patentable subject-matter under the EPC were then stated or confirmed:

"What matters having regard to the concept of "invention" within the meaning of Article 52(1) EPC is the presence of technical character which may be implied by the physical features of an entity or the nature of an activity, or may be conferred to a nontechnical activity by the use of technical means. Hence, (...), activities falling within the notion of a non-invention "as such" would typically represent purely abstract concepts devoid of any technical implications."

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