Artist Bjørn Bjørnholt

Business methods and computer-implemented inventions How can they be patented?

Erik Sigh M.Sc. Electrical Engineering European Patent Attorney European Design Attorney T +45 33 63 93 46 E ers@pv.eu January 2012

Patentable inventions - European patents shall be granted for any inventions, in all fields of

technology. Article 52(1) EPC

- The description shall disclose the invention in such terms that the technical problem and its solution can be understood. Rule 42(1)(c) EPC

- A patentable invention is a technical solution to a technical problem

- The invention must have technical character

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Patentable inventions must have technical character Technical character may be present when e.g.:

• A technical effect is achieved

• A technical problem is solved

• Technical features are defined, and

• Implementation requires technical considerations

The technical character must be reflected in the claims

Inventions having technical character are not excluded from patenting, even if they involve e.g. a business method

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An invention is NOT patentable if it lacks technical character, in particular if it is - A discovery

- A scientific theory or a mathematical method

- An aesthetic creation, literary, dramatic or artistic work

- A scheme or method for performing a mental act, playing a game or doing business

- A presentation of information

- A computer program Article 52(2) EPC

- But only to the extent the invention relates to such subject-matter or activities as such Article 52(3) EPC

- The exclusions are flexible and have a narrow definition

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Computer-implemented inventions are inventions whose implementation involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realized wholly or partly by means of a computer program

Computer-implemented business methods are typically described in terms of subject-matter which appears to be separable into

• Aspects having technical character, and

• Aspects lacking technical character

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Assess the claimed subject-matter as a whole Determine

- The clearly technical aspects, i.e. aspects of the subject-matter which contribute to technical character

and

- The apparently non-technical aspects, i.e. aspects which do not contribute to technical character according to Article 52(2)

How should apparently non-technical aspects be assessed?

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Assessment of apparently non-technical aspects - Are any of the apparently non-technical aspects capable of causing a

change in the physical nature or the technical functioning of the clearly technical aspects?

or

- Do they reflect technical considerations required to carry out the invention?

Any such apparently non-technical aspect contributes to technical character and is therefore not purely non-technical

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Inventive step – state of the art - An invention shall be considered as involving an inventive step if, having

regard to the state of the art, it is not obvious to a person skilled in the art. Article 56 EPC

- The closest prior art will be from a technical field and is established on the basis of the technical content identified in the claims and the description

- The technical contribution of the subject-matter over the state of the art is important for assessing inventive step

- Purely non-technical aspects not contributing to technical character are not relevant for assessing inventive step

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Objective technical problem - Should be formulated based on the technical aspects of the prior art

disregarding purely non-technical aspects

- Purely non-technical aspects may however appear in the formulation of the technical problem as a constraint that has to be met

- Purely non-technical aspects in the claims define a constraint to be met as part of the problem to be solved and do not contribute to technical character and should be disregarded in assessment of inventive step

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Technical character of the whole subject-matter

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Summary - Claimed subject-matter is always considered as a whole when evaluating

whether individual features contribute to its technical character.

- Only that part of the subject-matter which is determined to contribute to its technical character is taken into account when assessing inventive step.

- The purely non-technical aspects of a claimed subject-matter which define an aim to be achieved in a non-technical field may appear in the formulation of the technical problem in the form of a requirement specification, in particular as a constraint that has to be met.

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T 1051/07 – System and method for financial transactions - The application related to a transaction system for providing a financial

transaction service to a subscriber.

- The closest prior art disclosed a secure payment system allowing a user (payer) to pay, using e.g. a mobile phone, a service provider (payee) via a host computer.

- The examining division had refused the application for the reason that the claim then was in substance held to be the straightforward technical implementation of an administrative banking procedure lying outside the patentable regime.

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T 1051/07 – System and method for financial transactions

- The board of appeal stated that the objective problem to be solved relative to the closest prior art was to provide the system with means allowing a user to put money into his account in the host computer (or withdraw money from his account).

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T 1051/07 – System and method for financial transactions - The board of appeal generally agreed that reloading the host computer

account fundamentally constituted (part of) a business method and, thus, lacked technical character.

- However, insofar as administrative banking procedures indeed lacked technical character, claim 1 was not confined to merely reciting an administrative banking procedure alongside straightforward technical means for its implementation, but rather provided a technical solution, involving technical means for the technical problem of how to reload such an account.

- The solution as claimed was not considered obvious by the board. Accordingly, the subject-matter of claim 1 involved an inventive step.

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