From phm@a2e.de  Tue Aug 14 20:33:48 2001
From: phm@a2e.de (PILCH Hartmut)
Date: Tue, 14 Aug 2001 21:33:48 +0200 (CEST)
Subject: [Patents] EPO will not search pure business methods under PCT
Message-ID: <Pine.LNX.4.31.0108142125580.8233-100000@querty.oas.a2e.de>

According to the EPO press release

  http://www.epo.co.at/news/pressrel/2001_08_13_e.htm

it seems that the EPO is moving away from examining business method
patents and thereby also starting to demand more strictly that the
contribution to the state of the art be "technical" according to the
intuition of the EPO (unlike the BGH they don't have a definition).

What is strange however is that they refuse to examine business method
related applications at the PCT (Patent Cooperation Treaty) level.
Certainly for European companies it would be better if they could have
their novelty and non-obviousness examined at that level according to US
(and JP etc) standards.  That would't prevent the EPO from making it clear
that they are not considered to be patentable inventions in Europe.

Such a separation of examination and validity would facilitate access of
European companies to the patent systems of other countries.

By applying a local European standard to the PCT examination, the EPO
seems to be indicating that its own standard of patentability is not based
on European law but only on its own temporary lack of capacity for
examining certain types of applications.

The press release says:

<<

It has become apparent in recent months that an ever increasing
number of international applications for which the EPO is to act as
International Searching Authority and International Preliminary
Examining Authority relate primarily to methods of doing business and
commonplace features relating to their technological implementation.

For the avoidance of doubt the EPO wishes to remind applicants that
pursuant to Rule 39.1(iii) PCT it will not carry out an international
search on an application to the extent that its subject-matter
relates to no more than a method of doing business, in the absence of
any apparent technical effect.

Moreover, claims to commonplace technological implementations of such
methods will not be searched because it would not serve any useful
purpose to do so.

In such cases a declaration will be issued that no international
search report will be established or where appropriate that a partial
search report only will be established pursuant to Article 17(2) PCT.

This may well have consequences for the procedure before the EPO as
IPEA in view of the fact that claims relating to inventions for which
no international search report has been established need not be the
subject of international preliminary examination (Rule 66.1(e) PCT).
Furthermore the EPO is not required to carry out an international
preliminary examination on an application if its subject-matter is a
method of doing business (Rule 67.1(iii) PCT).

The EPO also wishes to remind applicants that methods of doing
business per se are excluded from patentability pursuant to Article
52(2)(c) & (3) EPC. Claims to such methods and their commonplace
technological implementation in European patent applications will not
be searched because it would not serve any useful purpose to do so.
In such cases no search report will be established or where
appropriate a partial search report only will be established pursuant
to Rule 45 EPC.

>>

--
Hartmut Pilch                                           http://phm.ffii.org/
Protecting Innovation against Patent Inflation	      http://swpat.ffii.org/
85000 signatures against software patents         http://www.noepatents.org/



