G - patentability CH1 and 2 Flashcards
- Patentability requirements
There are four basic requirements for patentability:
(i)
there must be an “invention”, belonging to any field of technology (see G‑II);
(ii)
the invention must be “susceptible of industrial application” (see G‑III);
(iii)
the invention must be “new” (see G‑IV to VI); and
(iv)
the invention must involve an “inventive step” (see G‑VII).
A technical character is an implicit requisite for the presence of an “invention” within the meaning of Art. 52(1) (requirement (i) above, see G‑II, 1 and 2 for further details).
Furthermore,
Art. 52(1)
–
the invention must be such that it can be carried out by a person skilled in the art (after proper instruction by the application); this follows from Art. 83. Instances where the invention fails to satisfy this requirement are given in F‑III, 3; and
Art. 83
–
the invention must relate to a technical field (Rule 42(1)(a) – see F‑II, 4.2), must be concerned with a technical problem (Rule 42(1)(c) – see F‑II, 4.5) and must have technical features in terms of which the matter for which protection is sought can be defined in the claim (Rule 43(1) – see F‑IV, 2.1).
- Technical progress, advantageous effect
The EPC does not require explicitly or implicitly that an invention, to be patentable, must entail some technical progress or even any useful effect. Nevertheless, an advantageous effect, if any, with respect to the state of the art should be stated in the description (Rule 42(1)(c)), as any such effect is often important in determining “inventive step” (see G‑VII, 5).
- General remarks
The EPC does not define what is meant by “invention”, but Art. 52(2) contains a non-exhaustive list of “non-inventions”, i.e. subject-matter which is not to be regarded as an invention within the meaning of Art. 52(1). The items on this list are all either abstract (e.g. discoveries or scientific theories) and/or non-technical (e.g. aesthetic creations or presentations of information). In contrast to this, an “invention” within the meaning of Art. 52(1) must have a technical character (see G‑I, 1). It may be in any field of technology.
- Examination practice
The question of whether there is an invention within the meaning of Art. 52(1) is separate and distinct from the questions of whether it is susceptible of industrial application, is new and involves an inventive step.
The exclusions from patentability under Art. 52(2) play a role in assessing both patent eligibility and inventive step because patent protection is reserved for inventions involving a “technical teaching”, i.e. an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means. This twofold assessment is referred to as the “two-hurdle approach” (G 1/19).
The first hurdle, also referred to as the patent eligibility hurdle, requires that the claimed subject-matter as a whole must not fall under the “non-inventions” defined in Art. 52(2) and (3). The exclusion from patentability of the subject-matters and activities referred to in Art. 52(2) is limited by Art. 52(3) to such subject-matters or activities that are claimed “as such”. This limitation is a bar to a broad interpretation of the non-inventions. It implies that one technical feature is sufficient for eligibility: If the claimed subject-matter is directed to or uses technical means, it is an invention within the meaning of Art. 52(1). This assessment is made without reference to the prior art.
The second hurdle is where inventive step is assessed. In addition to technical features, claims may also comprise non-technical features. In this context, the term “non-technical features” refers to features which, on their own, would be considered “non-inventions” under Art. 52(2). Inventive step of claims comprising such a mix of technical and non-technical features is assessed using the COMVIK approach (G‑VII, 5.4). This approach is a special application of the problem-solution approach that involves establishing which features of the invention contribute to its technical character (i.e. contribute to the technical solution of a technical problem by providing a technical effect). A feature may support the presence of an inventive step if and to the extent that it contributes to the technical character of the invention. Whether any feature contributes to the technical character of the invention has to be assessed in the context of the invention as a whole.
- List of exclusions
The items on the list in Art. 52(2) will now be dealt with in turn, and further examples will be given in order better to clarify the distinction between what is patentable in the sense of not being excluded from patentability under Art. 52(2) and (3) and what is not.
3.1 Discoveries
If a new property of a known material or article is found, that is mere discovery and unpatentable because discovery as such has no technical effect and is therefore not an invention within the meaning of Art. 52(1). If, however, that property is put to practical use, then this constitutes an invention which may be patentable. For example, the discovery that a particular known material is able to withstand mechanical shock would not be patentable, but a railway sleeper made from that material could well be patentable. To find a previously unrecognised substance occurring in nature is also mere discovery and therefore unpatentable. However, if a substance found in nature can be shown to produce a technical effect, it may be patentable. An example of such a case is that of a substance occurring in nature which is found to have an antibiotic effect. In addition, if a microorganism is discovered to exist in nature and to produce an antibiotic, the microorganism itself may also be patentable as one aspect of the invention. Similarly, a gene which is discovered to exist in nature may be patentable if a technical effect is revealed, e.g. its use in making a certain polypeptide or in gene therapy.
For further specific issues concerning biotechnological inventions see G‑II, 5, 5.3 to 5.5, and G‑III, 4.
3.2 Scientific theories
These are a more generalised form of discoveries, and the same principle as set out in G‑II, 3.1 applies. For example, the physical theory of semiconductivity would not be patentable. However, new semiconductor devices and processes for manufacturing these may be patentable.
3.3 Mathematical methods
Mathematical methods play an important role in the solution of technical problems in all fields of technology. However, they are excluded from patentability under Art. 52(2)(a) when claimed as such (Art. 52(3)).
The exclusion applies if a claim is directed to a purely abstract mathematical method and the claim does not require any technical means. For instance, a method for performing a Fast Fourier Transform on abstract data which does not specify the use of any technical means is a mathematical method as such. A purely abstract mathematical object or concept, e.g. a particular type of geometric object or of graph with nodes and edges, is not a method but is nevertheless not an invention within the meaning of Art. 52(1) because it lacks a technical character.
If a claim is directed either to a method involving the use of technical means (e.g. a computer) or to a device, its subject-matter has a technical character as a whole and is thus not excluded from patentability under Art. 52(2) and (3).
Merely specifying the technical nature of the data or parameters of the mathematical method may not be sufficient on its own to define an invention within the meaning of Art. 52(1). Even if the resulting method would not be considered a purely abstract mathematical method as such within the meaning of Art. 52(2)(a) and (3), it may still fall under the excluded category of methods for performing mental acts as such if no use of technical means is implied (Art. 52(2)(c) and (3); see G‑II, 3.5.1).
Once it is established that the claimed subject-matter as a whole is not excluded from patentability under Art. 52(2) and (3) and is thus an invention within the meaning of Art. 52(1), it is examined in respect of the other requirements of patentability, in particular novelty and inventive step (G‑I, 1).
For the assessment of inventive step, all features which contribute to the technical character of the invention must be taken into account (G‑VII, 5.4). When the claimed invention is based on a mathematical method, it is assessed whether the mathematical method contributes to the technical character of the invention.
A mathematical method may contribute to the technical character of an invention, i.e. contribute to producing a technical effect that serves a technical purpose, by its application to a field of technology and/or by being adapted to a specific technical implementation (T 2330/13). The criteria for assessing these two situations are explained below.
Technical applications
When assessing the contribution made by a mathematical method to the technical character of an invention, it must be taken into account whether the method, in the context of the invention, produces a technical effect serving a technical purpose.
Examples of technical contributions of a mathematical method are:
–
controlling a specific technical system or process, e.g. an X-ray apparatus or a steel cooling process;
–
determining from measurements a required number of passes of a compaction machine to achieve a desired material density;
–
digital audio, image or video enhancement or analysis, e.g. de-noising, detecting persons in a digital image, estimating the quality of a transmitted digital audio signal;
–
separation of sources in speech signals; speech recognition, e.g. mapping a speech input to a text output;
–
encoding data for reliable and/or efficient transmission or storage (and corresponding decoding), e.g. error-correction coding of data for transmission over a noisy channel, compression of audio, image, video or sensor data;
–
encrypting/decrypting or signing electronic communications; generating keys in an RSA cryptographic system;
–
optimising load distribution in a computer network;
–
determining the energy expenditure of a subject by processing data obtained from physiological sensors; deriving the body temperature of a subject from data obtained from an ear temperature detector;
–
providing a genotype estimate based on an analysis of DNA samples, as well as providing a confidence interval for this estimate so as to quantify its reliability;
–
providing a medical diagnosis by an automated system processing physiological measurements.
A generic purpose such as “controlling a technical system” is not sufficient to confer a technical character to the mathematical method. The technical purpose must be a specific one.
Furthermore, the mere fact that a mathematical method may serve a technical purpose is not sufficient, either. The claim is to be functionally limited to the technical purpose, either explicitly or implicitly. This can be achieved by establishing a sufficient link between the technical purpose and the mathematical method steps, for example, by specifying how the input and the output of the sequence of mathematical steps relate to the technical purpose so that the mathematical method is causally linked to a technical effect.
Defining the nature of the data input to a mathematical method does not necessarily imply that the mathematical method contributes to the technical character of the invention (T 2035/11, T 1029/06, T 1161/04).
If steps of a mathematical method are used to derive or predict the physical state of an existing real object from measurements of physical properties, as in the case of indirect measurements, those steps make a technical contribution regardless of what use is made of the results.
Technical implementations
A mathematical method may also contribute to the technical character of the invention independently of any technical application when the claim is directed to a specific technical implementation of the mathematical method and the mathematical method is particularly adapted for that implementation in that its design is motivated by technical considerations of the internal functioning of the computer system or network (T 1358/09, G 1/19). This may happen if the mathematical method is designed to exploit particular technical properties of the technical system on which it is implemented to bring about a technical effect such as efficient use of computer storage capacity or network bandwidth. For instance, the adaptation of a polynomial reduction algorithm to exploit wordsize shifts matched to the word size of the computer hardware is based on such technical considerations and can contribute to producing the technical effect of an efficient hardware implementation of said algorithm. Another example is assigning the execution of data-intensive training steps of a machine-learning algorithm to a graphical processing unit (GPU) and preparatory steps to a standard central processing unit (CPU) to take advantage of the parallel architecture of the computing platform. The claim should be directed to the implementation of the steps on the GPU and CPU for this mathematical method to contribute to the technical character.
Computational efficiency
If the mathematical method does not serve a technical purpose and the claimed technical implementation does not go beyond a generic technical implementation, the mathematical method does not contribute to the technical character of the invention. In such a case, it is not sufficient that the mathematical method is algorithmically more efficient than prior-art mathematical methods to establish a technical effect (see also G‑II, 3.6).
However, if it is established that the mathematical method produces a technical effect due to having been applied to a field of technology and/or adapted to a specific technical implementation, the computational efficiency of the steps affecting that established technical effect is to be taken into account when assessing inventive step. See G‑II, 3.6.4 for examples where an improvement in computational efficiency qualifies as a technical effect.
3.3.1 Artificial intelligence and machine learning
Artificial intelligence and machine learning are based on computational models and algorithms for classification, clustering, regression and dimensionality reduction, such as neural networks, genetic algorithms, support vector machines, k-means, kernel regression and discriminant analysis. Such computational models and algorithms are per se of an abstract mathematical nature, irrespective of whether they can be “trained” based on training data. Hence, the guidance provided in G‑II, 3.3 generally applies also to such computational models and algorithms.
Terms such as “support vector machine”, “reasoning engine” or “neural network” may, depending on the context, merely refer to abstract models or algorithms and thus do not, on their own, necessarily imply the use of a technical means. This has to be taken into account when examining whether the claimed subject-matter has a technical character as a whole (Art. 52(1), (2) and (3)).
Artificial intelligence and machine learning find applications in various fields of technology. For example, the use of a neural network in a heart monitoring apparatus for the purpose of identifying irregular heartbeats makes a technical contribution. The classification of digital images, videos, audio or speech signals based on low-level features (e.g. edges or pixel attributes for images) are further typical technical applications of classification algorithms. Further examples of technical purposes for which artificial intelligence and machine learning could be used may be found in the list under G‑II, 3.3.
Classifying text documents solely in respect of their textual content is however not regarded to be per se a technical purpose but a linguistic one (T 1358/09). Classifying abstract data records or even “telecommunication network data records” without any indication of a technical use being made of the resulting classification is also not per se a technical purpose, even if the classification algorithm may be considered to have valuable mathematical properties such as robustness (T 1784/06).
Where a classification method serves a technical purpose, the steps of generating the training set and training the classifier may also contribute to the technical character of the invention if they support achieving that technical purpose.
3.3.2 Simulation, design or modelling
Claims directed to methods of simulation, design or modelling typically comprise features which fall under the category of mathematical methods or of methods for performing mental acts. Hence, the claimed subject-matter as a whole may fall under the exclusions from patentability mentioned under Art. 52(2)(a)(c) and (3) (see G‑II, 3.3 and 3.5.1).
The methods considered in this section, however, are at least partially computer-implemented so that the claimed subject-matter as a whole is not excluded from patentability.
Computer-implemented methods of simulating, designing or modelling should be examined according to the same criteria as any other computer-implemented inventions (G‑VII, 5.4, G 1/19).
For establishing the presence of a technical effect, it is not decisive whether the simulated system or process is technical or whether the simulation reflects technical principles underlying the simulated system and how accurately it does so.
Simulations interacting with the external physical reality
Computer-implemented simulations that comprise features representing an interaction with an external physical reality at the level of their input or output may provide a technical effect related to this interaction. A computer-implemented simulation that uses measurements as input may form part of an indirect measurement method that calculates or predicts the physical state of an existing real object and thus make a technical contribution regardless of what use is made of the results.
Purely numerical simulations
A computer-implemented simulation without an input or output having a direct link with physical reality may still solve a technical problem. In such a “purely numerical” simulation, the underlying models and algorithms may contribute to the technical character of the invention by their adaptation to a specific technical implementation or by an intended technical use of the data resulting from the simulation.
Models and algorithms that do not make a contribution to the technical character of the invention form constraints that may be included in the formulation of the objective technical problem when following the COMVIK approach outlined in G‑VII, 5.4.
Specific technical implementation of a numerical simulation
The technical contribution that may be made by a model or algorithm because of their adaptation to the internal functioning of the computer system or network on which they are implemented is assessed in the same manner as adaptations of mathematical methods to specific technical implementations, see G‑II, 3.3.
Intended technical use of the calculated numerical output data of a numerical simulation
Calculated numerical data reflecting the physical state or behaviour of a system or process existing only as a model in a computer usually cannot contribute to the technical character of the invention, even if it reflects the behaviour of the real system or process adequately.
Calculated numerical data may have a “potential technical effect”, which is the technical effect that will be produced when the data is used according to an intended technical use. Such a potential technical effect may only be considered in the assessment of inventive step if the intended technical use is either explicitly or implicitly specified in the claim.
If the data resulting from a numerical simulation is specifically adapted for an intended technical use, e.g. it is control data for a technical device, a potential technical effect of the data can be considered “implied” by the claim. The specific adaptation implies that the claim does not encompass other non-technical uses because the intended technical use is then inherent to the claimed subject-matter over substantially the whole scope of the claim (see also G‑II, 3.6.3). On the other hand, if the claim also encompasses non-technical uses of the simulation results (such as gaining scientific knowledge about a technical or natural system), the potential technical effect is not achieved over substantially the whole scope of the claim and therefore cannot be relied on in the assessment of inventive step.
Accuracy
Whether a simulation contributes to the technical character of the claimed subject-matter does not depend on the quality of the underlying model or the degree to which the simulation represents reality.
However, the accuracy of a simulation is a factor that may have an influence on an already established technical effect going beyond the mere implementation of the simulation on a computer. It may be that an alleged improvement is not achieved if the simulation is not accurate enough for its intended technical use. This may be taken into account in the formulation of the objective technical problem (Art. 56) or in the assessment of sufficiency of disclosure (Art. 83), see F‑III, 12. Conversely, a technical effect may still be achieved by a method where certain simulation parameters are inaccurate but sufficient for its intended technical use.
Design processes
The aforementioned principles apply equally if a computer-implemented simulation is claimed as part of a design process.
If a computer-implemented method results merely in an abstract model of a product, system or process, e.g. a set of equations, this per se is not considered to be a technical effect, even if the modelled product, system or process is technical (T 49/99, T 42/09). For example, a logical data model for a family of product configurations has no inherent technical character, and a method merely specifying how to proceed to arrive at such a logical data model would not make a technical contribution beyond its computer-implementation. Likewise, a method merely specifying how to describe a multi-processor system in a graphical modelling environment does not make a technical contribution beyond its computer-implementation. Reference is made to G‑II, 3.6.2 related to information modelling as an intellectual activity.
3.4 Aesthetic creations
Subject-matter relating to aesthetic creations will usually have both technical aspects, e.g. a “substrate” such as a canvas or a cloth, and aesthetic aspects, the appreciation of which is essentially subjective, e.g. the form of the image on the canvas or the pattern on the cloth. If technical aspects are present in such an aesthetic creation, it is not an aesthetic creation “as such” and it is not excluded from patentability.
A feature which might not reveal a technical aspect when taken by itself could have a technical character if it brings about a technical effect. For example, the pattern of a tyre tread may actually be a further technical feature of the tyre if, for example, it provides improved channelling of water. On the contrary, this would not be the case when a particular colour of the sidewall of the tyre serves only an aesthetic purpose.
The aesthetic effect itself is not patentable, neither in a product nor in a process claim.
For example, features relating solely to the aesthetic or artistic effect of the information content of a book, or to its layout or letter font, would not be considered as technical features. Nor would features such as the aesthetic effect of the subject of a painting or the arrangement of its colours or its artistic (e.g. Impressionist) style be technical. Nevertheless, if an aesthetic effect is obtained by a technical structure or other technical means, although the aesthetic effect itself is not of a technical character, the means of obtaining it may be. For example, a fabric may be provided with an attractive appearance by means of a layered structure not previously used for this purpose, in which case a fabric incorporating such structure might be patentable.
Similarly, a book defined by a technical feature of the binding or pasting of the back is not excluded from patentability under Art. 52(2) and (3), even though it has an aesthetic effect too. A painting defined by the kind of cloth, or by the dyes or binders used, is likewise not excluded.
A technical process, even if it is used to produce an aesthetic creation (such as a cut diamond), is nevertheless a technical process which is not excluded from patentability. Similarly, a printing technique for a book resulting in a particular layout with aesthetic effect is not excluded, and nor is the book as a product of that process. Again, a substance or composition defined by technical features serving to produce a special effect with regard to scent or flavour, e.g. to maintain a scent or flavour for a prolonged period or to accentuate it, is not excluded.
3.5 Schemes, rules and methods for performing mental acts, playing games or doing business
3.5.1 Schemes, rules and methods for performing mental acts
The exclusion from patentability of schemes, rules and methods for performing mental acts under Art. 52(2)(c) concerns instructions to the human mind on how to conduct cognitive, conceptual or intellectual processes, for instance how to learn a language. The exclusion applies only when such schemes, rules and methods are claimed as such (Art. 52(3)).
If a method claim encompasses a purely mental realisation of all method steps, it falls under the category of methods for performing mental acts as such (Art. 52(2)(c) and (3)). This applies regardless of whether the claim encompasses also technical embodiments and of whether the method is based on technical considerations (T 914/02, T 471/05, G 3/08).
An example is a claim defining a method for designing an arrangement for loading nuclear reactor fuel bundles into a reactor core in order to maximise the amount of energy that is generated before the reactor fuel needs to be refreshed. The method involves determining optimal values for specific technical parameters of the arrangement by starting with initial values, performing simulations based on these values, and iteratively changing the values based on simulation results until a stopping criterion is met. Such a method is based on technical considerations related to the technical field of nuclear reactors. However, as long as the claim does not exclude that all method steps may be carried out mentally, the claimed subject-matter is excluded from patentability. This objection also applies when the simulation involves real world values obtained by a technical measurement, if the claim does not include either a step of carrying out the technical measurement or a step of receiving the measured real world values using technical means.
In general, the complexity of a method cannot disqualify it as a method for performing mental acts as such. If technical means (e.g. a computer) are necessary to carry out the method, they are included in the claim as an essential feature (Art. 84, F‑IV, 4.5). See also G‑II, 3.3 for aspects related to algorithmic efficiency.
A claimed method is not a method for performing mental acts as such if it requires the use of technical means (e.g. a computer, a measuring device, etc.) to carry out at least one of its steps or if it provides a physical entity as the resulting product (e.g. if it is a method of manufacturing a product comprising steps of designing the product and a step of manufacturing the product so designed).
Once it is established that the claimed method as a whole is not excluded from patentability under Art. 52(2) and (3), it is examined in respect of the other requirements of patentability, in particular novelty and inventive step (G‑I, 1).
Where a claim defining a method for performing mental acts as such is limited by specifying that the method is carried out by a computer, not only the use of a computer but also the steps carried out by the computer themselves may make a technical contribution if they then contribute to a technical effect. The presence of technical considerations, such as those related to the technical field of nuclear reactors in the example above, is not in itself sufficient to acknowledge the presence of a technical effect (G 1/19).
A method comprising steps which involve the use of technical means may also specify steps which are to be carried out mentally by the user of the method. These mental steps contribute to the technical character of the method only if, in the context of the invention, they contribute to producing a technical effect serving a technical purpose.
For example, a method may specify steps which result in the selection of a product among a family of products based on various criteria, as well as a step of manufacturing the selected product. If said selection steps are carried out mentally, they contribute to the technical character of the method only to the extent that a technical effect can be derived from the features characterising the sub-family of selected products over the generic family of suitable products (T 619/02). If the selection steps rely on purely aesthetic criteria, they result in a non-technical selection and thus do not contribute to the technical character of the method. As another example, in a method of affixing a driver to a Coriolis mass flowmeter, steps specifying how to select the position of the driver so as to maximise the performance of the flowmeter make a technical contribution to the extent that they define that particular position (T 1063/05).
For additional information about methods of simulation, design and modelling, see G‑II, 3.3.2. For methods of information modelling and the activity of programming a computer, see G‑II, 3.6.2.
3.5.2 Schemes, rules and methods for playing games
Under Art. 52(2)(c) and (3), schemes, rules and methods for playing games are excluded from patentability, if claimed as such. The exclusion applies to rules for traditional games such as card or board games, as well as to game rules that underlie contemporary forms of gameplay such as in gambling machines or video games.
Game rules define a conceptual framework of conventions and conditions that govern player conduct and how a game evolves in response to decisions and actions by the players. They comprise the setup of the game, options that arise as gameplay unfolds, as well as goals defining progress in the game. They are normally perceived (or even agreed to) by the players as rules serving the explicit purpose of playing the game. Game rules are hence of an abstract, purely mental nature and are meaningful only in the gaming context (T 336/07). For example, a condition requiring two randomly drawn numbers to match for winning is a game rule.
Contemporary games, and in particular video games, are often characterised by complex interactive and narrative elements of a virtual game world. Such game elements govern how the game proceeds of its own accord (e.g. evolving characters and storylines) as well as how it proceeds in interaction with the player(s) (e.g. tapping along with the game soundtrack to make your character dance if rhythms match). Given that these elements are conceptual in nature, they qualify, in a wider sense, as rules for playing games according to Art. 52(2)(c) (T 12/08). This holds true irrespective of the fact that they might be untold or revealed only while playing.
If the claimed subject-matter specifies technical means for implementing game rules, it has a technical character. For example, when implementing the aforementioned condition of matching random numbers, the use of a computer calculating a pseudo-random sequence or of mechanical means such as cubic dice or uniformly sectored reels is sufficient to overcome an objection under Art. 52(2)(c) and (3).
Inventive step of a claim comprising a mix of game rules and technical features is examined in accordance with the problem-solution approach for mixed-type inventions as set out under G‑VII, 5.4. As a principle, inventive step cannot be established by the game rules themselves, irrespective of how original they may be, or by their mere automation. It must rather be based on further technical effects of a technical implementation of the game, i.e. technical effects that go beyond those already inherent to the rules. For example, a networked implementation of a game of chance like bingo, in which numbers physically drawn by an operator undergo a random mapping prior to transmission to remote players, makes a technical contribution since the scrambling of results has the technical effect of securing a data transmission, analogous to encryption, while having no bearing on the actual playing of the game. In contrast, a reduction of memory, network, or computational resources achieved by limiting the complexity of a game does not overcome a technical constraint by a technical solution. Rather than solving the technical problem of improving the efficiency of an implementation, such a limitation would at best circumvent it (G‑VII, 5.4.1). Similarly, the commercial success of a game product resulting from simplified rules is an incidental effect without a direct technical cause.
Inventive step of an implementation is to be assessed from the point of view of the skilled person, typically an engineer or a game programmer, who is tasked with implementing game rules as set by a game designer. Mere claim drafting exercises such as paraphrasing non-technical game elements (“win computation means” for monitoring the number of game tokens) or abstracting them (“objects” instead of “game tokens”) using terms that are technical only on the surface have no bearing on inventive step.
Game rules often are designed to entertain and keep the interest of players by way of psychological effects such as amusement, suspense, or surprise. Such effects do not qualify as technical effects. Similarly, giving rise to a balanced, fair or otherwise rewarding gameplay are psychological effects, not technical ones. Hence, rules and corresponding computations which determine a game score or a skill rating for players, even if computationally complex, are usually considered non-technical.
Highly interactive gameplay such as in video games involves technical means for sensing user input, updating the game state and outputting visual, audio or haptic information. Features defining such presentations of information and user interfaces are assessed according to G‑II, 3.7 and 3.7.1. Cognitive content that informs the player about the current game state at a non-technical level, e.g. about a game score, the arrangement and suits of playing cards, the state and attributes of a game character is regarded as non-technical information. This equally holds for instructions presented on game boards or cards such as “go back to square one”. An example of a technical context in which the manner of presenting information can make a technical contribution is the interactive control of real-time manoeuvres in a game world, the display of which is subject to conflicting technical requirements (T 928/03).
Aside from rules, the state of a game world may also evolve in accordance with numerical data and equations that model physical principles or pseudo-physical behaviour, especially in video games. The systematic calculation of updates to such game states amounts to a computer-implemented simulation based on these models (G 1/19). For the purpose of assessing inventive step in this context, the models are to be understood as defining a given constraint for a corresponding implementation on a computer (G‑VII, 5.4). In contrast to effects that reside within the virtual game world or are otherwise inherent to the model already, a specific implementation of a simulation, if adapted to the internal functioning of a computer system, produces a technical effect. For instance, merely predicting the virtual trajectory of a billiard ball shot by the player, even if highly accurate, fails to solve a technical problem beyond its implementation. In contrast, adjusting the step sizes used in the distributed simulation of bullets fired in a multi-player online game based on current network latencies produces a technical effect.
Features which specify how to provide user input normally make a technical contribution (G‑II, 3.7.1). However, a mapping of parameters obtained from known input mechanisms to parameters of a computer game qualifies as a game rule in a wider sense if it reflects the choice of the game designer, set for the purpose of defining the game or making it more interesting or challenging (e.g. a condition specifying that a slide gesture on a touchscreen determines both the power and the spin of a virtual golf shot).
3.5.3 Schemes, rules and methods for doing business
Subject-matter or activities which are of a financial, commercial, administrative or organisational nature fall within the scope of schemes, rules and methods for doing business, which are as such excluded from patentability under Art. 52(2)(c) and (3). In the rest of this section, any such subject-matter or activities will be subsumed under the term “business method”.
Financial activities typically include banking, billing or accounting. Marketing, advertising, licensing, management of rights and contractual agreements, as well as activities involving legal considerations, are of a commercial or administrative nature. Personnel management, designing a workflow for a business process or communicating postings to a target user community based on location information are examples of organisational rules. Other activities typical of doing business concern operational research, planning, forecasting and optimisations in business environments, including logistics and scheduling of tasks. These activities involve collecting information, setting goals, and using mathematical and statistical methods to evaluate the information for the purpose of facilitating managerial decision-making.
If the claimed subject-matter specifies technical means, such as computers, computer networks or other programmable apparatus, for executing at least some steps of a business method, it is not limited to excluded subject-matter as such and thus not excluded from patentability under Art. 52(2)(c) and (3).
However, the mere possibility of using technical means is not sufficient to avoid exclusion, even if the description discloses a technical embodiment (T 388/04, T 306/04, T 619/02). Terms like “system” or “means” are to be looked at carefully, because a “system” might e.g. refer to a financial organisation and “means” to organisational units if it cannot be inferred from the context that these terms refer exclusively to technical entities (T 154/04).
Once it is established that the claimed subject-matter as a whole is not excluded from patentability under Art. 52(2) and (3), it is examined with respect to novelty and inventive step (G‑I, 1). The examination of inventive step requires an assessment of which features contribute to the technical character of the invention (G‑VII, 5.4).
Where the claim specifies a technical implementation of a business method, the features which contribute to the technical character of the claim are in most cases limited to those specifying the particular technical implementation.
Features which are the result of technical implementation choices and not part of the business method contribute to the technical character and thus have to be duly taken into account. This is illustrated with the following example: The claim defines a computerised networked system which allows customers to obtain audio-visual content about selected products using computers installed at each sales outlet of a company, all connected to a central server with a central database storing the audio-visual content as electronic files. The distribution of the electronic files from the central server to the sales outlets could be technically implemented either by enabling download of individual files directly from the central database to the computer on request of a customer or, alternatively, by transferring a plurality of selected electronic files to each sales outlet, storing these files in a local database of the sales outlet and retrieving the corresponding file from the local database when audio-visual content is requested by a customer at the sales outlet. Choosing one implementation among these two options lies within the competence of a technically skilled person, such as a software engineer, as opposed to, for example, specifying that the set of audio-visual contents offered is different for each sales outlet, which would typically be within the competence of a business expert. Features of the claim specifying any of these two possible technical implementations contribute to the technical character of the invention, whereas features specifying the business method do not.
In the case of claims directed to a technical implementation of a business method, a modification to the underlying business method aimed at circumventing a technical problem, rather than addressing this problem in an inherently technical way, is not considered to make a technical contribution over the prior art. In the context of an automation of a business method, effects which are inherent in the business method do not qualify as technical effects (G‑VII, 5.4.1).
For instance, an automated accounting method that avoids redundant bookkeeping may be considered to require fewer computer resources in terms of computer workload and storage requirements. These advantages, in so far as they result from a reduction of the number of operations to be performed and the amount of data to be considered due to the business specification of the accounting method, are inherent to the accounting method itself and hence do not qualify as technical effects.
Another example is based on an electronic auction that is performed by successively lowering the price until the price is fixed by the remote participant who first transmits a message. Since messages may be received out of order due to possible transmission delays, each message contains timestamp information. Changing the auction rules to obviate the need for timestamp information amounts to circumventing the technical problem of transmission delays rather than solving it with technical means (T 258/03). As a further example, in a method for carrying out electronic financial transactions with credit cards at a point of sale, the administrative decision to dispense with the need to obtain the name or address of the buyer to authorise the transaction may result in saving time and reducing data traffic. However, this measure, on its own, is not a technical solution to the technical problem of the bandwidth bottleneck of communication lines and the limited capacity of server computers, but an administrative measure which does not contribute to the technical character of the claimed subject-matter.
The mere fact that the input to a business method is real-world data is not sufficient for the business method to contribute to the technical character of the claimed subject-matter, even if the data relate to physical parameters (e.g. geographic distances between sales outlets) (T 154/04, T 1147/05, T 1029/06). See also G‑II, 3.3.
In a computer-implemented method for facilitating managerial decision-making, automatically selecting from a set of business plans the most cost-effective one which also enables meeting certain technical constraints (e.g. to achieve a targeted reduction in environmental impact) is not considered to make a technical contribution beyond the computer-implementation.
The mere possibility of serving a technical purpose is not enough for a method to contribute to the technical character of the invention. For example, a claim to a “method of resource allocation in an industrial process” encompasses pure business processes and services in finance, administration, or management, without limiting the method to any specific technical process due to the breadth of meaning of the term “industry”.
The result of a business method may be useful, practical or saleable but that does not qualify as a technical effect.
Business method features, e.g. administrative features, can be found in different contexts. For example, a medical support system may be configured to deliver information to the clinician on the basis of data obtained from patient sensors, and only if such data is not available, on the basis of data provided by the patient. The prioritisation of the sensor data over the data provided by the patient is an administrative rule. Establishing it lies within the competence of an administrator, e.g. the head of the clinic, rather than within that of an engineer. As an administrative rule with no technical effect, it does not contribute to the technical character of the claimed subject-matter and may be used in the formulation of the objective technical problem as a constraint that has to be met when assessing inventive step (G‑VII, 5.4). For further examples of applying the problem-solution approach to assess inventive step for subject-matter comprising business-method features, see G‑VII, 5.4.2.1-5.4.2.3.
3.6 Programs for computers
Computer programs are excluded from patentability under Art. 52(2)(c) and (3) if claimed as such. However, following the generally applicable criteria for Art. 52(2) and (3) (G‑II, 2), the exclusion does not apply to computer programs having a technical character.
In order to have a technical character, and thus not be excluded from patentability, a computer program must produce a “further technical effect” when run on a computer. A “further technical effect” is a technical effect going beyond the “normal” physical interactions between the program (software) and the computer (hardware) on which it is run. The normal physical effects of the execution of a program, e.g. the circulation of electrical currents in the computer, are not in themselves sufficient to confer technical character to a computer program (T 1173/97 and G 3/08).
Examples of further technical effects which confer technical character to a computer program are the control of a technical process or of the internal functioning of the computer itself or its interfaces (see G‑II, 3.6.1).
The presence of a further technical effect is assessed without reference to the prior art. It follows that the mere fact that a computer program serving a non-technical purpose requires less computing time than a prior-art program serving the same non-technical purpose does not on its own establish the presence of a further technical effect (T 1370/11). Likewise, comparing a computer program with how a human being would perform the same task is not a suitable basis for assessing if the computer program has a technical character (T 1358/09).
If a further technical effect of the computer program has already been established, the computational efficiency of an algorithm affecting the established technical effect contributes to the technical character of the invention and thus to inventive step (e.g. where the design of the algorithm is motivated by technical considerations of the internal functioning of the computer; see also G‑II, 3.3).
A computer program cannot derive a technical character from the mere fact that it has been designed such that it can be automatically performed by a computer. “Further technical considerations”, typically related to the technical considerations of the internal functioning of the computer, going beyond merely finding a computer algorithm to perform a task are needed. They have to be reflected in claimed features that cause a further technical effect (G 3/08).
If a claim is directed to a computer program which does not have a technical character, it is objected to under Art. 52(2)(c) and (3). If it passes the test for having technical character, the examiner then proceeds to the questions of novelty and inventive step (see G‑VI and G‑VII, in particular G‑VII, 5.4).
Computer-implemented inventions
“Computer-implemented invention” is an expression intended to cover claims which involve computers, computer networks or other programmable apparatus wherein at least one feature is realised by means of a computer program. Claims directed to computer-implemented inventions may take the forms described in F‑IV, 3.9 and subsections.
A computer program and a corresponding computer-implemented method are distinct from each other. The former refers to a sequence of computer-executable instructions specifying a method while the latter refers to a method being actually performed on a computer.
Claims directed to a computer-implemented method, a computer-readable storage medium or a device cannot be objected to under Art. 52(2) and (3) as any method involving the use of technical means (e.g. a computer) and any technical means itself (e.g. a computer or a computer-readable storage medium) have technical character and thus represent inventions within the meaning of Art. 52(1) (T 258/03, T 424/03, G 3/08).
