Article Taking care of business methods
The article Taking care of business (methods) discusses the current case law at the European Patent Office regarding patents on business methods. Its conclusion:
With its new criterion for technical character, the EPO appears to open the door for patents on computer-implemented business methods. However, this door is firmly closed by the new, rigorous application of the inventive step criterion. Effectively, a patent related to a business method will be limited in scope to only a specific nonobvious technical implementation thereof.
The article was published on pages 69-72 of epi Information issue 2, June 2006. The PDF is available online. A shortened version appears below.
In the past few years, an often-heard allegation was that business methods, especially computer-implemented ones, can be patented at the European Patent Office. The required 'technical character' of the invention supposedly is no more than an exercise in proper claim drafting.
Recently, however, the EPO Boards of Appeal have been issuing several decisions (most notably T 641/00 and T 258/03) on how to assess such inventions. These decisions make it virtually impossible to argue in favour of inventive step when part of the invention is realized through non-technical features.
The first requirement for a patentable invention is that it has technical character. The EPO applies different criteria for methods, devices and computer programs.
- A method claim that recites technical means always has technical character, regardless of the purpose or use of these means. In many cases these technical means will be a computer or other programmed apparatus. The claim is then treated as a computer-implemented invention.
- A device or apparatus, being a physical entity or concrete product, necessarily has technical character.
- If a method claim to an industrial process or data processing technique is technical, so is the corresponding computer program claim.
More generally speaking, merely referring to improved efficiency, a user-friendlier interface or better performance is unlikely to be accepted today. For instance, the graphic design of menus is, as a rule, not a technical activity. A specific design may however be considered technical. Similarly, creating a model to represent information or designing diagrams is generally considered an intellectual activity and hence not technical.
A patentable claim actually has to claim a specific effect that is related to the solution of a technical problem. Merely identifying a possible technical effect in general terms will not be sufficient.
Today it is often possible to take the hurdle of technical character. However for business method applications, the hurdle of inventive step generally proves too steep.
The starting point in assessing inventive step is to determine the closest prior art. Non-technical documentation, e.g. business literature cannot be used as such a starting point.
Next, the distinguishing feature(s) of the invention over the closest prior art and the technical problem that is solved by these features need to be identified.
It is permissible to include non-technical features into the technical problem. Generally the non-technical features are deemed a framework or set of constraints of the technical problem that is to be solved. The skilled person would be given those constraints and asked to solve the technical problem. The technical problem is then usually formulated as providing an implementation of the non-technical features on a computer system.
If the solution to the technical problem is obvious to a skilled person, the invention lacks an inventive step. This is the ground on which the vast majority of business method-related applications will be rejected.
With the current caselaw, there is virtually no possibility of proving inventive step by relying on non-technical features. For business methods, an inventive step can exist only if the technical solution is nonobvious when the non-technical features are assumed to be known. This approach has proven to be a formidable hurdle for many business method patent applications. The actual technical implementation usually is not the focus of the invention. In many cases, the implementation is phrased as "computing means for performing a business step". Obviously, these can be implemented without inventive activity, regardless of how clever the business step actually is.