Technical Boards of Appeal March 2002, case T 49/99

title:: EPO TBA 2002/03 T 49/99: information modelling not technical, computer-implementation not new
source:: http://legal.european-patent-office.org/dg3/pdf/t990049eu1.pdf

Introduction
Annotated Links

A. introduction

The EPO (or German) jurisdiction did not give up the definition of "technical" by reference to "use of controllable forces of nature". Rather, the change consists in the fact that the EPO no longer insisted that the new part of the teaching be technical and that the technical part be new. However not all EPO decisions use the new laxist doctrine. Occasionally the pendulum swings back in toward the original spirit of Art 52 EPC. This is an important reason why industrial patent lawyers are pressing for a directive as proposed by the European Commission and leading politicians in the European Parliament's Legal Affairs Committee (JURI). Under such a directive, EPO decisions such as this one would no longer be possible.

This decision is not using "both technical and non-technical features" formula as found in CEC directive Article 4 paragraph 3 but rather a reasoning similar to CULT Amendment 15:

The technical contribution shall be assessed of the difference between scope of technical features of the patent claim considered as a whole and the state of the art

From reasons for the decision T 49/99:

4. The subject-matter of claim 1 [...] is not patentable [...] for lack of inventive step.

5. [...] If the invention as claimed relates to non-technical subject-matter or activities, only those aspects or elements of the invention which contribute to its technical character are to be given significance in assessing inventive step.

7. Information modelling is a formalized process carried out by a system engineer or a similar skilled person in a first stage of software development for systematically gathering data about the physical system to be modelled or simulated and to provide so to say a real world model of the system on paper. Although information modelling embodies useful concepts and methods in developing complex software systems, it is as such an intellectual activity having all traits typical for non-technical branches of knowledge and thus being closely analogous to the non-inventions listed under Article 52(2)(a) and (c) EPC.

In examining inventive step, it should hence be treated like any other human activity in a non-technical field, which is, as such, not an invention for the purposes of Article 52(1) EPC. Only the purposive use of information modelling in the context of a solution to a technical problem, as e.g. is the case for the preferred embodiment relating to the control and management of technical processes in a power system, may contribute to the technical character of an invention.

B. Annotated Links

EPO 1990: T 0022/85: A Technical Board of Appeal of the European Patent Office (EPO) rejects a patent application which is directed to a program for computers. In 1984, the EPO's examiners had rejected the patents based on the original Examination Guidelines of 1978, saying that the claims referred to a "program for computers". The appellant argued on the basis of newer Guidelines and caselaw that his claims are directed to technical effects and not a program as such. The Board of Appeal rejects the appeal by arguing indirectly that the use of general-purpose computer hardware does not confer technicity on an abstract method: "Abstracting a document, storing the abstract, and retrieving it in response to a query falls as such within the category of schemes, rules and methods for performing mental acts and constitutes therefore non-patentable subject-matter under Article 52 EPC" and "The mere setting out of the sequence of steps necessary to perform an activity, excluded as such from patentability under Article 52 EPC, in terms of functions or functional means to be realised with the aid of conventional computer hardware elements does not import any technical considerations and cannot, therefore, lend a technical character to that activity and thereby overcome the exclusion from patentability."
Art 52 EPC: Interpretation and Revision: The limits of what is patentable which were laid down in the European Patent Convention of 1973 have been eroded over the years. Influential patent courts have interpreted Art 52 in a way that renders it obscure and meaningless. Not all courts have followed this interpretation, and numerous law scholars have shown why it is not permissible. The EPO had accepted the inconsistencies in anticipation of an expected change of law. However this expectation was frustrated in 2000 by the governments and in 2003 by the European Parliament. The Parliament voted for a clarification which gives Art 52 back its meaning. Meanwhile, proponents from all sides have proposed to modify Art 52(3) EPC in one or the other way, of course while claiming that this merely serves to "clarify the status quo" or to implement a directive which serves this purpose, and, since the European Commission and the Council have not signalled support for the Parliament's approach, there is still no common understanding of which "status quo" we are talking about.
Patentjurisprudenz auf Schlitterkurs -- der Preis für die Demontage des Technikbegriffs: So far computer programs and other rules of organisation and calculation are not patentable inventions according to European law. This doesn't mean that a patentable manufacturing process may not be controlled by software. However the European Patent Office and some national courts have gradually blurred the formerly sharp boundary between material and immaterial innovation, thus risking to break the whole system and plunge it into a quagmire of arbitrariness, legal insecurity and dysfunctionality. This article offers an introduction and an overview of relevant research literature.
2003/06/10 BXL: How to Patent Business Methods under the Proposed Directive: Everybody in the European Parliament (EP) seems to agree that we want clear limits on patentability and that they should be enforced throughout the EU. But there is disagreement as to whether the proposed software patent directive brings us anywhere close to that goal. This meeting in EP room A8F 388 at 14.-16.00 may be the last opportunity for software innovators and MEPs to examine the proposed Software Patentability Directive before the scheduled vote in the Legal Affairs Committee (JURI).
Call for Action: The European Commission's proposal for the patentability of software innovations requires a clear response from the European Parliament, the member state governments and other political players. Here is what we think should be done.


Software Patents > Reviews > Akte München 1973 > Guidelines EPO 1978 > EPO 1990 T 22/90 > Technical Boards of Appeal March 2002, case T 49/99
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EPO TBA 2002/03 T 49/99: information modelling not technical, computer-implementation not new

A. introduction

B. Annotated Links