T 1784/06 – Comvik Reaffirmed

This is an appeal against the refusal of the application under consideration by the Examining Division, for lack of inventive step.

Claim 1 of the main request on file read:

A method for classifying records by means of a computer program product, comprising

• receiving records containing several fields, the fields of which records contain values,
• reading the values contained in at least two specified fields from each received record, and
• classifying the received records using a classification structure containing conditions, the classification structure containing field-specific classification structures such that there is an own field-specific classification structure for each field according to the conditions of the classification structure,

characterized by

• selecting field-specific classification structures corresponding to the specified fields, and for each record:
• searching from the selected classification structures a set of suitable classes for each of the specified fields, wherein the suitable classes correspond to the value read from the field,
• forming an intersection set of the sets of suitable classes, and
• selecting a class from the intersection set and classifying the record into the selected class.

One of the crucial issues discussed before the Board of appeal (BoA) was whether the Comvik approach was to be applied. According to the applicant, this approach was not applied uniformly by the Boards of appeal. Therefore, the applicant requested the Board to refer several questions to the Enlarged Board (EBA):

Q1: Is the requirement of A 56 [EPC 1973] an independent requirement of substantial patent law or is it to be examined together with the requirements imposed in A 52(2) and (3)?

Q2: Can a condition laid down in the Implementing Regulation[s] be taken into account when examining a substantial requirement of patentability, in particular the requirement of inventive step laid down in A 56 [EPC 1973]?

Q3: Can a feature relating to excluded subject-matter listed under A 52(2) be omitted when examining other substantial requirements of patentability, in particular inventive step under A 56 [EPC 1973]?

Q4: If question Q3 is answered in the affirmative, what are the conditions on which such an omission from the examination can and should be made? Furthermore, what consequences does the narrow interpretation stipulated in A 52(3) have to this examination?

Q5: When using the problem-solution approach in the determination of an inventive step, is it an admissible and necessary requirement that the problem to be solved be technical in its nature in a sense that it resides in a field not excluded by A 52(2)?

The Board first reaffirmed the Comvik approach:

[2] The Board stands by the Comvik approach that only features contributing to the technical character of claimed subject-matter enter into the examination for inventive step, see T 641/00 [6]:

“... where a feature cannot be considered as contributing to the solution of any technical problem by providing a technical effect it has no significance for the purpose of assessing inventive step.”

[2.1] As patents can be granted only for technical subject-matter (A 52(1)(2)(3)), it is consequential that a (non-obvious) contribution which justifies the grant of a patent has to have a technical character. It would appear paradoxical to the Board to recognise an inventive step on the basis of a non-technical innovation (such as an organisational, administrative, commercial or mathematical algorithm) having no technical implication other than the (obvious) desire for its implementation on a general-purpose computer.

Already before the Comvik decision, technically non-functional modifications were considered as irrelevant to inventive step (see e.g. T 72/95 [5.4]).

[2.2] According to the appellant, claimed subject-matter as a whole should be examined for the presence of an inventive step once the subject-matter as a whole has been found to meet the technology criterion of A 52(1)(2)(3). The appellant argues that A 56 EPC 1973 should be applied independently of A 52(1)(2)(3) because A 52(2) has to be applied independently of A 56 EPC 1973 […].

The Board does not accept such formal reasoning and points out that it is normal and often necessary for legal provisions to be in an asymmetric relationship or hierarchical dependency. For example, the novelty of a claim has to be examined independently of inventive step considerations, whereas a finding of inventiveness presupposes a novelty examination. Another example is the validity of a priority claim which has to be checked independently of novelty and inventive step requirements, whereas novelty and inventive step cannot be established independently of the validity of a priority right.

[2.3] Regarding the Board’s insistence on a technical problem when applying the problem-and-solution approach, the appellant disputes that such a requirement can be deduced from the EPC or introduced from its Implementing Regulations. The appellant refers inter alia to decision T 473/08 (by a different BoA) to point out that “a non-technical problem can have a technical solution”.

However, there is no divergence, the Board agrees to the statement that a non-technical problem can have a technical solution. On the other hand, where an intrinsically non-technical solution (mathematical algorithm) seeks to derive a technical character from the problem solved, the problem must be technical. This is the point on which the present case hinges.

[2.4] Another argument of the appellant refers to the legislative history of the EPC (travaux préparatoires) which is said not to provide any explicit support for a cumulative application of A 52(2) and A 56 EPC 1973.

However, the restriction of substantive patent law to technical subject-matter is so self-evident that the founding fathers of the EPC did not even mention that requirement in the original (1973) version of A 52(1). The explicit clause “in all fields of technology” was not added to A 52(1) until the Diplomatic Conference in the year 2000 harmonised the Article with the TRIPs treaty (see OJ EPO 2007, Special Edition 4, page 48). Nevertheless, A 52(1) has always been understood as referring to technical inventions.

Similarly, in the Board’s understanding, it is implicit to the patent system under the EPC that only contributions to a field of technology – escaping the list of non-inventions – justify patent protection.

[2.5] Opinion G 3/08 of the EBA backs the Comvik approach rather than raising any objection to it. This becomes clear when points 10.13.1 and 10.13.2 of the Opinion are read to the end (italics added by the Board):

G 3/08, point 10.13.1: “[...] However, this does not mean that the list of subject-matters in A 52(2) (including in particular “programs for computers”) has no effect on such claims. An elaborate system for taking that effect into account in the assessment of whether there is an inventive step has been developed, as laid out in T 154/04, Duns. While it is not the task of the EBA in this Opinion to judge whether this system is correct, since none of the questions put relate directly to its use, it is evident from its frequent use in decisions of the BoAs that the list of “non-inventions” in A 52(2) can play a very important role in determining whether claimed subject-matter is inventive.”

G 3/08, point 10.13.2: “[...] The Board can only speculate that the President could not identify any divergence in the case law on this issue, despite the fact that (at present) approximately seventy decisions issued by a total of fifteen different Boards (in the sense of organisational units) cite T 641/00, and over forty decisions by eight Boards cite T 258/03, Hitachi, the decisions which essentially defined the approach. Nor is the EBA aware of any divergence in this case law, suggesting that the Boards are in general quite comfortable with it. It would appear that the case law, as summarised in T 154/04, has created a practicable system for delimiting the innovations for which a patent may be granted.”

The Board then found all of the claims 1 on file to lack inventive step. It finally dealt with the request for referral of questions to the EBA:

[9] The appellant has formulated five questions for referral to the EBA under A 112(1)(a) EPC 1973. The questions are said to relate to points of law of fundamental importance and to be important to ensure uniform application of the law.

[10] The appellant quotes a number of decisions handed down by other Boards in order to demonstrate that the Comvik approach is not applied uniformly by the BoAs in that other Boards accept non-technical problems as the objective problem. The appellant refers inter alia to decision T 473/08 (by a different BoA) to point out that “a non-technical problem can have a technical solution”.

[10.1] However, there is no divergence. The Board agrees to the statement that a non-technical problem can have a technical solution (assuming that a problem properly formulated with respect to the closest prior art can ever be of a completely non-technical nature). On the other hand, where an intrinsically non-technical solution (mathematical algorithm) seeks to derive a technical character from the problem solved, the problem must be technical. Otherwise, the solution remains non-technical and does not enter into the examination for an inventive step.

[10.2] To the Board’s knowledge, the other BoAs also apply A 56 EPC 1973 in the light of A 52(1)(2)(3), i.e. the Comvik approach is shared by all Boards. Opinion G 3/08 [10.13.2] did not identify any divergence in the case law on this issue.

Nor does the Board deviate from an interpretation or explanation of the Convention contained in an earlier opinion (in particular G 3/08) or decision of the EBA (see point [2.5] supra).

Thus, the Comvik approach does not require any further harmonisation or clarification by the EBA.

[11] The Board considers the proposed questions to relate to points of policy and legislation rather than points of the existing law. Only the legislators would be entitled to expand the legal definition of inventions such as to provide patent protection on the basis of non-technical contributions (to encourage their publication and dissemination, for example). However, a referral of questions to the EBA for legislative purposes would not be admissible.

[11.1] The first question (Q1) asks whether the requirement of A 56 EPC 1973 is an independent requirement of substantive patent law or whether it is to be examined together with the requirements imposed in A 52(2) and (3).

As noted above (cf point [2.5]), in Opinion G 3/08 the EBA noted that the jurisprudence of the BoAs recognises a relationship between A 52(2) and A 56:

“... it is evident from its frequent use in decisions of the BoAs that the list of ‘non-inventions’ in A 52(2) can play a very important role in determining whether claimed subject-matter is inventive” (point [10.13.1]).

Indeed, it would appear illogical to recognise an inventive step on the basis of a non-technical contribution for which no patent protection is available “as such”. Hence, question 1, insofar as it has not already been answered by the EBA, effectively aims at opening the EPC to non-technical innovations. This would exceed the competence of the BoAs (including the EBA).

[11.2] The second question (Q2) asks whether a condition laid down in the Implementing Regulations can be taken into account when examining a substantive requirement of patentability, in particular the requirement of inventive step laid down in A 56 EPC 1973.

The background of this question is that R 27 and R 29 EPC 1973, for example, were often cited by BoAs to underpin the requirement for a technical invention when interpreting A 52(1) EPC 1973 (see e.g. T 154/04 [8]).

This question, however, was already answered by the EBA in decision G 1/08 [2.2]:

“It is the function of the Implementing Regulations to determine in more detail how the Articles should be applied and there is nothing in the Convention allowing the conclusion that this would not also apply in the case of Articles governing issues of substantive patent law”.

[11.3] The third question (Q3) asks whether a feature relating to excluded subject-matter listed under A 52(2) can be omitted when examining other substantive requirements of patentability, in particular inventive step under A 56 EPC 1973.

The answer to this question is implied by the answer to the first question: as A 56 EPC 1973 cannot be applied independently of the list of non-inventions according to A 52(2)(3), such non-inventions have to be disregarded in the examination for inventive step.

[11.4] The third question having been answered in the affirmative, the fourth question (Q4) also needs to be considered. It asks on what conditions such an omission from the examination can and should be made and what consequences the narrow interpretation stipulated in A 52(3) has to this examination.

A 52(3) limits the non-inventions listed in A 52(2) to subject-matter lacking a concrete and technical character. This understanding of A 52(2) is part of the “practicable system for delimiting the innovations for which a patent may be granted”, as already identified by the EBA (G 3/08 [10.13.2]). As to A 52(3) the Board cannot see why this stipulation should be considered at all in this context. Nor, apparently, could the EBA in Opinion G 3/08 when, in connection with inventive step, it referred to “the list of ‘non-inventions’ in A 52(2)” without mention of A 52(3) (cf. point [11.1] above).

[11.5] The fifth question (Q5) relates to the problem-solution approach in the determination of an inventive step and asks whether it is an admissible and necessary requirement that the problem to be solved be technical in its nature in a sense that it resides in a field not excluded by A 52(2).

The Board reiterates that it does not consider a technical problem to be an absolute requirement of the problem-solution approach. However, where an intrinsically non-technical solution (here: a mathematical algorithm) seeks to derive a technical character from the problem solved, the problem must be technical. Otherwise, the solution remains non-technical and does not enter into the examination for an inventive step under A 56 EPC 1973.

A less restrictive interpretation of the inter-relationship between A 56 EPC 1973 and A 52(1)(2)(3) would remove a legal threshold of the EPC and, thus, go beyond the competence of the BoAs.

[12] Hence, the Board sees no reason to refer any of the appellant’s questions to the EBA.

It is interesting to see that the Board vigorously defends the Comvik approach but nevertheless qualifies it. The present Board, so it seems, would accept non-technical problems (provided the proposed solution is technical), whereas T 641/00 made it quite clear that only technical problems were to be accepted (consider, for instance, its paragraph [5], the last sentence of which reads: “If no technical problem can be derived from the application, then an invention within the meaning of A 52 does not exist ...”) Even taking into account the fact that the concept of “invention” has undergone a shift in more recent case law (meaning that “an invention within the meaning of A 52” would have to be replaced by “an inventive step within the meaning of A 56” in the above statement), I guess that hardly any Board would endorse such a statement in all its generality today.

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