|Reviews||EPO||Kober 2001/06||Kober 1997||WIPO SPLT 2001||Melullis||Statskontoret||Consilium|
Claims for business methods can be divided into three groups:
The following approaches to examination are to be applied in each of these cases:
The same approaches should be applied for PCT Chapter II, whereby (1) would lead to non-examination as to novelty, inventive step and industrial applicability according to Article 34(4)(a)(i) and Rule 67 PCT.
To (1): It would be possible to argue by analogy with the discussion of "programs for computers" in T1173/97 (OJ 1999, 609) that a claim directed to an abstract business method itself is not necessarily for a business method "as such". However, the reasoning in that decision was very special, and relied on the intimate relationship between program and an undeniably technical apparatus, the computer. Hence it was possible to argue that programs, even in abstract, can show a "technical effect". No such reasoning would appear to be applicable to abstract business methods.
To (2): This is in line with the "Sohei" decision T769/92 (OJ 1995, 525), in which the claim is for a data processing method used in a business context. It also enables us to have a coherent policy which is applicable to all the areas given in the list of Article 52(2) EPC (and the equivalent in PCT). Simply, as soon as a claim is for a computer implementation of an innovation which relates to any of those areas (e.g. games, aesthetic creations, presentations of information), it is to be examined according to the scheme for computer-implemented inventions.
To (3): It is arguable that since the scheme for examining computer-implemented inventions is based on BoA decisions (in particular T1173/97) concerned with that particular field, another approach could or should be used for "non-computer implementations", in particular the traditional approach of rejecting claims evincing no "technical contribution to the art" under Article 52(2) EPC. However, this would lead to confusion and undoubtedly also to accusations of lack of consistency from applicants. A change in approach in the course of the examination of a case should particularly be avoided. As noted above, cases falling in this group are relatively rare, and it would seem unprofitable and inadvisable to introduce a special examination scheme for them.
The scheme for examining computer-implemented inventions is as follows:
As to the lack of need to consider "further technical effect", this assertion is based on the proposition that according to the scheme put forward no patent would be granted which should have been refused for lack of further technical effect. This is because the existence of an objective technical problem overcome is itself sufficient proof of the requisite further technical effect. Further, it is to be remarked that this scheme of examination should not lead to refusals where previously a patent would have been granted, since the requirement for an objective technical problem is long-established. The only change is an explicit statement of the already implicit consequences of the lack of such a problem.
Examiners should however be familiar with the concept of "further technical effect", since it may be employed by applicants or by parties in an opposition.