Computer-Related Inventions - New EU Draft Directive and New EPO Guidelines

EPO Guidelines on Computer-Related Inventions

The EPO Guidelines for examining computer related inventions call for there to be a "further technical effect" which must be more than merely causing the computer to operate, i.e. an effect that goes beyond the normal interactions between the program and the computer. The Guidelines say that inventions may be patentable under Article 52 even if the further technical effect is known in the prior art. Technical character may be indicated by whether "technical considerations" are taken into account in making the invention, as in Board of Appeal Decision T 769/92 Sohei.

This appears to open the door to claims for inventions which derive their novelty from subject matter which is excluded per se (e.g. presentations of information or methods of doing business). However, in many cases this will be illusory; the change brought about by other recent decisions of the EPO Technical Boards of Appeal merely shifts the focus from patentability (Article 52) to inventive step (Article 56). For example, Board of Appeal Decision T 931/95 Pension Benefits Systems Partnership holds that for a method claim, the inclusion of technical means (e.g. a computer) for a purely non-technical purpose, or processing purely non-technical data, does not confer technical character, whereas a computer system programmed for use in a non-technical field (e.g. business and economy) has the character of a concrete apparatus and is an invention within Article 52. This appears on its face to permit methods of doing business so long as they can be dressed up in a conventional computer or computer network, as in the US State Street Bank v. Signature. However, on a full reading it merely takes the examination past the roadblock of Article 52 and requires that the Examiner proceed to consider inventive step, by the usual process of identifying the closest prior art and the technical problem it presents.

If (according to the new Guidelines) a technical problem with the prior art, solved by the invention, can be identified, then the solution to that problem is the invention's "technical contribution". The presence of a technical contribution establishes that the claimed subject matter has a technical character and is patentable subject matter within the terms of Article 52. If the problem solved over the prior art is not a technical problem, the claim will be rejected for lack of inventive step - even if the new matter defining the difference from the prior art (for example, an inventive new pension scheme as in Decision T 931/95 Pension Benefits Systems Partnership) is non-obvious.

Thus it remains the case that an improvement over the prior art that lies exclusively in subject matter which is excluded under Article 52(2) (typically, business methods) cannot contribute to inventive step.