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The Patentability Threshold: Computer Implemented
Inventions & Business MethodsRecent Board of Appeal (“BoA”) decisions in T1769/10-IGT &T1051/07-SK Telecom appear out of step with earlier EPO case law on the patentability of computer-implemented inventions (“CIIs”) and other “mixed” inventions containing interacting technical and non-technical features. The latter decision has been described (unofficially) by some senior examiners as “barking” (not Barking in Essex), a term painful to the ears of cats.The underlying issue with securing grant for such mixed inventions (including business methods, ‘apps’ and gaming systems) is that the meaning of “technical contribution” or “technical effect” is undefined in the EPC. Indeed, even when given the chance, the Enlarged Board of Appeal (“EBA”) has tried its utmost to delay, if not avoid, defining the term ‘technical’: “It is hoped that readers will accept these assertions without requiring a definition of exactly what falls within the boundaries of “technical”” - see section 9.2 of G03/08. The lack of clear guidance does however mean that viable claims are frequently rejected out of hand for apparently encompassing statutory excluded subject-matter, especially since “non-technical” features may actually form a dominating part of a claim. The decisions in T1769/10-IGT & T1051/07-SK Telecom reflect a degree of discomfort and perhaps a growing concern that firmer guidance is required. In fact, these recent decisions suggest that the point of patentability of “mixed” inventions is easing.The length of the hearing in T1769/10-IGT (some 10 hours) is not reflected in its headnotes, nor does the decision itself reflect the long deliberation of the Board with respect to referral questions to the Enlarged Board of Appeal and the detailed line of arguments made out at the hearing and in the accompanying written submissions.The Problem... and its solutionThe problem-solution approach is not the only mechanism for assessing inventive step before the EPO. However, it is the de facto standard. There are also fields of technology where even the modified problem-solution approach (i.e. the formulation of a problem as an ‘aim to be achieved in a non-technical field’ as set out in T0154/04-Duns Licensing) encounters unsolvable difficulties. For example, the assessment of inventive step is very difficult, if not inappropriate, where at least part of the originality involves appreciating the existence of a problem or the opportunity for an unexpected improvement.Further, during the assessment of inventive step for mixed inventions it is “too easy to throw too many things [read here: claim features that bring about an overall interaction and technical effect in the real world] out of the basket” to quote (without precise attribution) a senior EPO employee. Indeed, the rejection of features from consideration encourages the use of the defunct “contribution approach” that was expressly rejected by the EBA in G03/08. Quite simply, it is easy to identify differences over the prior art and then to exclude them from consideration under the misguided understanding that they cannot contribute to an invention and achievement of an overall technical effect. Also, the isolating of features encourages the framing of a problem using subjectivity and impermissible hindsight. Problems that are formulated in this way (even when stated “as an aim to be achieved in a non-technical field”) inappropriately suggest that the underlying invention relates to excluded “as such”, i.e. non-patent eligible, subject-matter.Turning to what is frequently asserted as the leading European case for mixed invention, T641/00‑Comvik, this widely applied decision:
(i) provides no real and clear guidance, especially since on the one hand we are told that it is necessary to consider “all those features which contribute to said technical character”, whilst on the other hand appreciating that “features making no such contributioncannot support the presence of inventive step”.(ii) provides no consistent and repeatable approach because, especially, Headnote 1 is interpreted by different people in different ways;(iii) fails to provide an effective test and objective framework for assessment of inventive step because it is poorly framed and confuses the (a) reasonable exclusion from consideration of features that inherently fail to support any form of technical interaction with (b) the totality of interaction(s) between mixed features that in the real world bring about some form of tangible, technical effect or benefit; and(iv) leaves the assessment of what constitutes invention and technical contribution open to abuse and/or subjectivity.To place Comvik into context, it is necessary to refer to section 10.13.2 of G03/08 in which the EBA questioned whether the present “elaborate” system for assessment of invention was correct. The EBA, while being aware of the use of T258/03-Hitachiand T641/00-Comvik, stated circa May 2010:“We note, in passing, that it is somewhat surprising that the referral does not address any of its questions to the validity of this way of judging an inventive step, an issue which is surely of general interest (and one which Lord Justice Jacob proposed should be put to the Enlarged Board – “How should those elements of a claim that relate to excluded subject matter be treated when assessing whether an invention is novel and inventive under Articles 54 and 56?”, Aerotel/Macrossan at 76, question (2)). The Board can only speculate that the President could not identify any divergence in the case law on this issue, despite the fact that (at present) approximately seventy decisions issued by a total of fifteen different Boards (in the sense of organisational units) cite T641/00, COMVIK (OJ EPO 2003, 352), and over forty decisions by eight Boards cite T258/03, Hitachi, the decisions which essentially defined the approach. Nor is the Enlarged Board aware of any divergence in this case law, suggesting that the Boards are in general quite comfortable with it. It would appear that the case law, as summarised in T154/04, has created a practicable system for delimiting the innovations for which a patent may be granted” [emphasis added].Statute only precludes patentable invention when such excluded subject-matter is “alone”, so the question is really ‘what qualifies as excluded subject-matter and when does something take on a technical significance?’ Comvik highlights an artificial approach that again doesn’t seemingly reduce the legal assessment to fundamental first principles, but rather produces an undesirable degree of arbitrariness with respect to what is or isn’t technical. In contrast, the objective assessments of invention and patentability both evidently require a step back and a mentally astute enquiry as to what is actually taking place and/or what in practical reality is being achieved by the claimed “mixed” invention. Is it not the advantage in practical reality that inherently establishes technical contribution and the presence of patentable subject-matter subject, of course, to conventional considerations of novelty and non-obviousness over the prior art? The answer appears to be ‘it must do’, since what in totality is achieved appears fundamental and significant in any objective assessment.A change in approach: T1769/10-IGTAccording to the reasoning accompanying the decision in T1769/10-IGT issued on 7 July 2011, the BoA recognized the inherent difficulties in using the problem-solution approach. A generic statement on the application of the problem-solution approach to mixed inventions is recorded on pages 10 and 11 of that decision:
“In the problem-solution approach, the objective technical problem to be solved is formulated based on the technical effect caused by the distinguishing features of the claim over the prior art, and thus depends on the individual case...In the case where some general form of implementation of the aim to be achieved in the non-technical field is already known from the prior art, the objective technical problem to be solved may be formulated more specifically as how to implement technically the aim in the non-technical field, or, reworded, to provide a technical solution involving technical means how to achieve the aim in the non-technical field” [emphasis added].In fact, the nature of “how” arose in a more limited sense in T1051/07-SK Telecom. The question of what was being achieved by the claimed subject-matter was largely ignored. The decision actually states, in section 4.1, second paragraph that the objective problem was: “to provide the system with means allowing a user to load money on his account in the host computer (or to realise money from his account)”. The objective problem did not consider ‘what’ in practical reality the invention sought to protect, although it is evident that the effect in the real world is a computerised banking system that provides access to funds, i.e. a computer-implemented business method that moves and releases funds to a client! The recited ‘technical’ means in the allowed claim supports implementation of the loading of a mobile financial account granted to a cell phone and very little else. In fact, it is not unreasonable to conclude that the “how” approach in T1051/07‑SK Telecom could in reality correspond to “the mere technical implementation of excluded subject-matter per se” as expressed in T1543/06-Gameaccount, so the allowance of the appeal in T1051/07 suggests that there is a liberalization with respect to the assessment of inventive step or that the decision was highly questionable. In short, T1051/07‑SK Telecom seems to divorce the question of “how” from the question of “what”.In T1051/07-SK Telecom, the “transaction system for providing a financial transaction service to a subscriber” seemingly becomes entirely subordinate to the way in which the system or method is achieved. But if the what being achieved is irrelevant, then we are left with the situation where any technical implementation is patentable even though the totality of the claims is directed towards a practical realization of excluded subject-matter, i.e. the claim is merely a dressed-up version of an underlying business method or the computerized implementation of a mental act or business process [see T0038/86, Headnotes 3 and 4]. Expressing this differently, in following the line of argument in T1051/07-SK Telecom, interactions between identified differences that were considered to be “administrative and commercial aspects and rules of games” seemingly only have ancillary impact and can by and large be ignored when considering inventive step under Art.56 EPC provided that the claim is otherwise based on some form of machine or transformation of data in the real world. The further technical effect, required in T1173/97 and T1543/06-Gameaccount, is possibly satisfied by the presence of the machine alone, even in circumstances where the “substance [is] held to be the straightforward technical implementation of an administrative... procedure lying outside the patentable regime” but provided that the claim is “not confined to merely reciting an administrative... procedure alongside straightforward technical means for its implementation, but rather provides a technical solution, involving technical means to the technical problem of howto...” [emphasis added]. See section 4.3 of the decision in T1051/07-SK Telecom.If T1051/07-SK Telecom and T0012/08-Nintendomerely represent evolution of the law rather than a step-change in approach, is it reasonable to say that these decisions are entirely consistent with inter alia T1543/06-Gameaccount to support a unified approach? Clearly, the questions of “how” and ‘what’ are not the same, especially since the latter imposes a contextual aspect and apparent requirement to identify an appropriate and further technical effect that arises (or is achieved by the features of the claim as a whole) in practical reality, i.e. in the real world. Is it a question of “how” something is achieved or instead a question of “what” is achieved or a combination of both?ObservationsThere are reasons for the EPO to attempt to sweep these recent decisions under the carpet and maintain uncertainty within the system. There is a belief that a defining principle is easier to work with than a rigid set of rules and, more significantly, no-one appears to want to be held responsible for grabbing the tiger by its tail. However, commercial uncertainty is not desirable.Certainly, at face value, T1769/10-IGT reinforces the earlier finding in T1051/07‑SK Telecomand suggests the patentability threshold for CIIs is lower than the seemingly Draconian standards frequently applied by EP Examining Divisions.Does the test for inventive step (cf non-patent eligible subject-matter under Art.52(2) EPC) in mixed inventions or CIIs reduce to “how” functional features are implemented, with the “how” being irrespective of what the claimed invention in totality seeks to protect and/or the further effect to be achieved? We leave it to the reader to decide whether the statement is always valid, although we have our doubts.ResolutionRather than provide our further opinion and commentary in a direct form, it seems better to list some of the questions that the BoA were asked to address in the appeal work in T1769/10. These “Threshold Questions” seek to drive the questions surrounding the patentability of mixed inventions and technicalcontribution back to a consideration of fundamental principles. The questions attempt to re-focus the legal issue surrounding the point of technical contribution to first principles by setting out consistent and effective tests.The Threshold QuestionsQ1. In the context of computer-implemented inventions, in determining whether the totality of a claim is acceptable under Articles 54 and 56 EPC, is it not first necessary:(i) to identify what the claimed subject-matter purports to achieve, rather than how something is achieved;(ii) to ask whether the ‘what is achieved’ brings about a practical technical advantage in the real world in the sense that the skilled person is able unambiguously to derive the merest scintilla of an advantage that causes in practical reality the technical implementation of the claimed arrangement to operate in a better, faster, more secure or more reliable fashion;(iii) to check that the advantage does not seek to dictate or look to control inevitable human behaviour and, in the affirmative, to reject the claim;(iv) to confirm that the subject-matter of the claim:a) is not merely the automation of an existing process, such as a mental act or a method, scheme or rule for playing a game or doing business; andb) produces a technical effect in the real world irrespective of the nature of the data/content being processed or the application being run by the computer; and only then(v) to ask whether the features of the claim in totality are inventive over the prior art?(vi) If not, then what is the test and do any of points (i) to (v) have independent validity in such a test?Q2. At what point does a commercial advantage take on a technical nature that in a corresponding claim element provides a technical contribution and/or further technical effect?Q3. In following T1769/10, if “the objective technical problem to be solved may be formulated more specifically as how to implement technically the aim in the non-technical field, or, reworded, to provide a technical solution involving technical means how to achieve the aim in the non-technical field”, does this mean that a technical contribution (and more particularly an inventive step) arises when a machine is configured to operate in a different way or to effect any transformation of something, for example data, into something else, e.g. higher resolution data that can be applied to enhance a real world effect, as in the processing applied within T208/84 Vicom? If not, then what is the approach to assessing inventive step and/or the exclusion of features from consideration?Q4. Is the issue of “technical contribution” or “technical effect” the point where the skilled person is able unambiguously to derive the merest scintilla of an advantage that causes in practical reality the technical implementation of the claimed arrangement to operate in a better, faster, more secure and/or more reliable fashion? How does this differ, if at all, from requiring a further technical effect in T1173/97-IBM Computer Program Product?Q5. Is it that a CII that automates a business process or a mental act not in fact looking to claim control of human behaviour and that, actually, any claim that dictates or controls inevitable human behaviour (through a claimed process or architecture) encompasses or defines “as such” excluded subject-matter? Is there a relationship between non-patentable subject-matter and “human behavioural control” and, if so, what is it?Q6. Is it that a claim that seeks to protect a program for a computer or a scheme, rule or method of playing a game “as such” not actually lacking a practical application in the real word that would, if present, otherwise give rise to a tangible technical contribution, i.e. a computer program “as such” has no patentable merit because it only goes through a number of fixed steps to process content without making any use/application of the result in a practical and technical way?Q7. Does a claim directed towards the implementation of an idea or function that brings about a surprising effect/advantage in practical reality that is a further effect in the real world always support patentable subject-matter, provided (of course) that the overall contribution (e.g. feature interaction) of a claim is non-obvious over the prior art? If not, why not?Q8. If claimed CII-based subject-matter provides a choice to an individual, does such a claim not seek only to influence an effect in the real world having regard to external considerations, and in the sense that influence is not equivalent to inevitable, unvarying control in which there is simply no choice and thus to be potentially patentable? If not, then why not?