T 931/95

Last updated
T 931/95
Scale of justice 2.svg

Board of Appeal of the European Patent Office

Issued September 8, 2000
Board composition
Chairman: P. K. J. van den Berg
Members: R. R. K. Zimmermann, V. Di Cerbo
Headwords
Controlling pension benefits system/PBS PARTNERSHIP

T 931/95, commonly known as Pension Benefit Systems Partnership, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on September 8, 2000. At the time, it was a landmark decision for interpreting Article 52(1) and (2) of the European Patent Convention (EPC) but has now largely been superseded by the decisions in T 641/00 (Comvik, Two identities) and T 258/03 (Hitachi, Auction Method).

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

European Patent Convention

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally-enforceable, nationally-revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

T 641/00, also known as Two identities/COMVIK, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on September 26, 2002. It is a landmark decision regarding the patentable subject matter requirement and inventive step under the European Patent Convention (EPC). More generally, it is a significant decision regarding the patentability of business methods and computer-implemented inventions under the EPC.

Contents

It stated that having a technical character is an implicit requirement of the EPC to be met by an invention in order to be patentable. [1] In other words, the technical character requirement is inherent to the notion "invention" in Article 52(1). [2] It also confirmed that methods only involving economic concepts and practices of doing business, or methods for doing business as such, are not inventions within the meaning of Article 52(1) EPC, and are therefore not patentable. [3]

Invention the act of inventing something

An invention is a unique or novel device, method, composition or process. The invention process is a process within an overall engineering and product development process. It may be an improvement upon a machine or product or a new process for creating an object or a result. An invention that achieves a completely unique function or result may be a radical breakthrough. Such works are novel and not obvious to others skilled in the same field. An inventor may be taking a big step in success or failure.

Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid.

Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking and tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the appropriateness of patenting business methods. Nonetheless, they have become important assets for both independent inventors and major corporations.

In 2001, decision T 931/95, along with decision T 769/92 ("Sohei case"), were considered the most relevant cases from the EPO Boards of Appeal regarding business methods. [4]

Decision

The Board of Appeal first drew a distinction between a method for doing business as such, excluded under Article 52(2)(c) EPC (Article 52(2) EPC provides that methods for doing business are not regarded as inventions within the meaning of Article 52(1) EPC), and a method for doing business having a technical character. [5] The mere fact that data processing and computing means, i.e. technical means, are recited in a method claim does not necessarily confer a technical character to the claimed method. [5] In other words, "technical means for a purely nontechnical purpose and/or for processing purely nontechnical information does not necessarily confer technical character". [5]

In contrast, regarding an apparatus claim, the Board stated that

a computer system suitably programmed for use in a particular field, even if that is the field of business and economy, has the character of a concrete apparatus in the sense of a physical entity, man-made for a utilitarian purpose and is thus an invention within the meaning of Article 52(1) EPC. [2]

This distinction of treatment between methods and apparatuses is justified by the mention of "method" but not apparatus in the exclusion of Art. 52(2)(c) EPC. The recent decision T 258/03 does not make this distinction between method and apparatus claims anymore.

T 258/03, also known as Auction Method/Hitachi, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on April 21, 2004. It is a landmark decision for interpreting Article 52(1) and (2) of the European Patent Convention (EPC) which built on the principles suggested by the same Board in T 641/00. This decision, amongst others, but notably this one and T 641/00, significantly affected the assessment of an invention’s technical character and inventive step.

Regarding the fact that the meaning of the term "technical" or "technical character" may not be particularly clear, the Board stated this also applied to the term "invention". "(...) [T]he fact that the exact meaning of a term may be disputed does in itself not necessarily constitute a good reason for not using that term as a criterion, certainly not in the absence of a better term: case law may clarify the issue." [2]

The Board also rejected the so-called "contribution approach", [6] which consists in distinguishing between "new features" of an invention and features of that invention which are known from the prior art when examining whether the invention concerned may be considered to be an invention within the meaning of Art. 52(1) EPC. [2]

Although the claim under examination was found to meet Art. 52 EPC requirement, the claim was eventually considered to lack inventive step. [7] The improvement put forward by the invention belonged to the field of economy and could not therefore contribute to inventive step. [7]

See also

Related Research Articles

The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973. The subject also includes the question of whether European patents granted by the European Patent Office (EPO) in these fields are regarded as valid by national courts.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

In certain jurisdictions' patent law, industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is susceptible of industrial application, i.e. for an invention which can be made or used in some kind of industry. In this context, the concept of "industry" is far-reaching: it includes agriculture, for instance. An example of invention which would not be susceptible of industrial application is "a method of contraception [...] to be applied in the private and personal sphere of a human being".

Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries provide that certain subject-matter is excluded from patentability, even if the invention is novel and non-obvious. Together with novelty, inventive step or nonobviousness, utility, and industrial applicability, the question of whether a particular subject matter is patentable is one of the substantive requirements for patentability.

The European Patent Convention (EPC), the multilateral treaty providing the legal system according to which European patents are granted, contains provisions regarding whether a natural or juristic person needs to be represented in proceedings before the European Patent Office (EPO).

G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office (EPO), which were both issued on April 8, 2004.

T 1173/97, also known as Computer program product/IBM or simply Computer program product, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on July 1, 1998. It is a landmark decision for interpreting Article 52(2) and (3) of the European Patent Convention (EPC) and whether computer programs are excluded from patentability under the EPC.

Article 84 of the European Patent Convention (EPC) defines the function of the claims under the European Patent Convention, the function being to define the matter, i.e. the purported invention, for which patent protection is sought. This legal provision also imposes that the claims must be clear, concise as well as supported by the description of the European patent application or patent. The form and content of the claims are defined in Article 84, and supplemented by the Rule 43 EPC.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.

Article 83 of the European Patent Convention (EPC) relates to the disclosure of the invention under the European Patent Convention. This legal provision prescribes that a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia involve an inventive step. The central legal provision explaining what this means, i.e. the central legal provision relating to the inventive step under the EPC, is Article 56 EPC. That is, an invention, having regard to the state of the art, must not be obvious to a person skilled in the art. The Boards of Appeal of the European Patent Office (EPO) have developed an approach, called the "problem-and-solution approach", to assess whether an invention involves an inventive step.

Under case number G 3/08, the Enlarged Board of Appeal of the EPO issued on May 12, 2010 an opinion in response to questions referred to it by the President of the European Patent Office (EPO), Alison Brimelow, on October 22, 2008. The questions subject of the referral related to the patentability of programs for computers under the European Patent Convention (EPC) and were, according to the President of the EPO, of fundamental importance as they related to the definition of "the limits of patentability in the field of computing." In a 55-page long opinion, the Enlarged Board of Appeal considered the referral to be inadmissible because no divergent decisions had been identified in the referral.

Under Article 82 EPC, a European patent application must "...relate to one invention only or to a group of inventions so linked as to form a single general inventive concept." This legal provision is the application, within the European Patent Convention, of the requirement of unity of invention, which applies also in many other jurisdictions.

Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia are new. The central legal provision explaining what this means, i.e. the central legal provision relating to the novelty under the EPC, is Article 54 EPC. Namely, "an invention can be patented only if it is new. An invention is considered to be new if it does not form part of the state of the art. The purpose of Article 54(1) EPC is to prevent the state of the art being patented again."

References

  1. ↑ T 931/95, headnote 1
  2. 1 2 3 4 T 931/95, Reasons 5
  3. ↑ T 931/95, headnote 2
  4. ↑ Yannis Skulikaris, Software-Related Inventions and Business-Related Inventions, Patent World, February 2001.
  5. 1 2 3 T 931/95, Reasons 3
  6. ↑ Nick Reeve, Down to business, Journal of Intellectual Property Law & Practice, July 2007; 2: 445 - 451.
  7. 1 2 T 931/95, Reasons 8
This page is based on this Wikipedia article
Text is available under the CC BY-SA 4.0 license; additional terms may apply.
Images, videos and audio are available under their respective licenses.