The EPO has constantly pursued a practice that is consistent with the criteria for patenting in general and patenting software in particular. In retrospect, though, there has been a struggle to get the examination logic right and, accordingly, a development of the practice. Three phases can be distinguished, wherein each phase is associated with an individual approach: Contribution approach, Further-technical-effect approach and Hitachi-Comvik approach. (Yannis Skoulikaris, ‘Patenting Software-related Inventions according to the European Patent Convention‘, 2013) In order to understand the approach that has been used throughout the last fifteen years and to anticipate examination results with regards to presently drafted patent claims, it helps to understand the previously used approaches.
6.4.1. Contribution approach
According to the Contribution approach, the Examiner identified a ‘delta’ between the claimed subject-matter and the closest prior art. Based on the ‘delta’, the Examiner established the objective technical problem solved by the claim features of the delta. If that problem was on the blacklist of excluded subject-matter, then the claimed subject-matter was found not to be patentable.
In the decision T 0769/92 of 31 May 1994 (General purpose management system/ SOHEI) the EPO’s Board of Appeal signaled that, consistent with the principle that an exceptional provision should be interpreted narrowly, any technical consideration in the solution of the problem was sufficient to lend technical character to an invention:
“…., if technical considerations concerning particulars of the solution of the problem the invention solves are required in order to carry out that same invention”, then such technical considerations “lend a technical nature to the invention in that they imply a technical problem to be solved by (implicit) technical features”.
Thus, according to the Board, where technical problems were solved by the claimed invention, it simply was not right to exclude the claimed invention from patenting. However, at the time, the Boards of Appeal seem not yet to have developed a differentiated understanding of how to distinguish one from the other, i.e., a technical invention from a non-technical invention, below the level of the technical character that was somehow found in the claimed subject-matter as a combination of claim features. In particular, the Boards of Appeal did not understand at which point in the examination to ask which question in order to differentiate a patentable invention from a non-patentable invention. Therefore, when trying to establish technical character, the Board asked questions related to claimed subject-matter vis-à-vis the prior art, i.e., questions that concerned novelty and inventive step.
6.4.2. Further technical effect approach
The Further technical effect approach was based on a recognition of the deficiency. In T 1173/97 of 1 July 1998 (Computer program product/IBM) the Board confirmed that a computer program product was not excluded from patentability under Article 52(2) and (3) EPC, i.e., the EPC’s blacklist of non-technical inventions, if, when it was run on a computer, it produced a further technical effect which went beyond the ‘normal’ physical interactions between program (software) and computer (hardware).
6.4.3. Comvik-Hitachi approach
Knowing that a claimed subject-matter was not per se excluded from patentability for lack of technical character left the problem of how to determine, if the claimed subject-matter was meeting the requirement of inventive step. In two landmark decisions the EPO’s Boards of Appeal developed a procedure that the EPO applied ever since. In particular, patent applications on inventions related to artificial intelligence are likely to fall in a category of what the EPO calls ‘mixed inventions’ that are defined by both, features that have technical effect and features that fail to provide technical effect.
In T 0641/00 of 26 September 2002 (Two identities/ COMVIK) the Board found that an invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step.
In the context of the problem-solution approach applied to assess the inventive step, it was also important to know how, in the case of mixed inventions, to define the objective technical problem underlying the claimed invention. In typical claimed subject-matter where all features have technical effect, the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it. According to the Board, where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met.
In T 0258/03 of 12 April 2004 (Auction method/ HITACHI) the Board made it clear that a method involving technical means is an invention within the meaning of Art. 52(1) EPC; the clarification meant, in fact, a change vis-à-vis a previous case law T 931/95 (Controlling pension benefits system/ PBS PARTNERSHIP). However, according to the Board, method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed.