EPO on business methods: in this acre you can find no silver 300 ounces

[PILCH Hartmut <phm@a2e.de>]

This month the EPO has issued three press releases which make quite a
lot of noise about refusal to search/grant applications for pure genes 
or pure business mehtods:

  Notice from the European Patent Office concerning business methods
  http://www.epo.co.at/news/info/2002_03_25_e.htm

  Information from the European Patent Office International Treaties PCT
  http://www.epo.co.at/news/info/2002_03_01_e.htm

  Decision of the Opposition Division dated 20 June 2001: Genes not
  patentable without verified disclosure of function
  http://www.epo.co.at/news/info/2001_06_20_e.htm

The EPO is sending out the message that it wants to put limits on
patentability, but from this alone it is very difficult to say whether
this involves real limits on patentability or only warnings that
patent claims and descriptions must be crafted more carefully.

The latter is of course also helpful, because it can mean that not
everything coming from the USA will be granted a patent automatically
in Europe.  The need to reword business methods in computing terms and
to substantiate functions of genes can be a hurdle that diminishes the
number of patents and thus helps the EPO reduce its backlog.

It is interesting to see how seriously the EPO seems to be taking Art
52 when the search for business methods is concerned.  They do not
even use any aprostrophes to make the term "as such" appear mysterious
or meaningless:

   The EPO also wishes to remind applicants that methods of doing
   business per se are excluded from patentability pursuant to [5]Article
   52(2)(c) and (3) EPC. Claims of European patent applications which
   relate to such methods or merely specify commonplace features relating
   to the technological implementation of such methods will not be
   searched if the search examiner cannot establish any technical problem
   which might potentially have required an inventive step for it to be
   overcome. In other words, in such cases it is not possible to carry
   out a meaningful search into the state of the art.

The same should be true if the examiner cannot establish any technical
problem outside the realm of programming, which are also per se not
patentable inventions according to Art 52 EPC.

On the other hand there is no reason why the EPO should not act as a
PCT searching authority for either programs or business methods.  Yes,
a "meaningful search" may be impossible, but if the USPTO and others
grant "meaningless patents", related searches nevertheless acquire a
meaning, "particularly for European SMEs who lack experience in global
patenting", as our patent politicians would usually chant.

Interestingly, a press release of the same content n

But let's be glad that the EPO at least sees a need to present itself
as moderate.  This need seems to be felt quite urgently.  Two press
releases are used on it this month, and one of almost exactly the same content
and wording was already published in August 2001.

        EPO Press Release: We will no longer conduct novelty searches
        for innovations that use conventional technology to implement
        what is essentially a method for doing business not patentable
        under Art 52 EPC

This was two months before the release of new examination guidelines
which make all computer-implemented business methods patentable:

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

See also EPO president Ingo Kober's related article

        http://swpat.ffii.org/papers/grur-kober0106/

which also says that "technical processes in the field of programming
and computer-implemented business methods remain patentable" and
announces a change of examination guidelines to reflect this doctrine.

Since "computer-impemented business methods" are a subcategory of
"computer-implemented inventions" and "computer-implemented
inventions", according to the EU/BSA/EPO terminology, "belong to a
field of technology", we can prove by a simple sequence of quotations
from the EU/BSA directive, combined with a few allowable substitution
operations:

  2.a. - If the performance of the business method use a computer and if the 
  business method have new features realised by a computer program it's a 
  "computer-implemented invention".  

  4.1. - A computer-implemented business method is patentable on the 
condition 
  that it is susceptible of industrial application, is new, and involves an 
  inventive step.

  4.2. - A condition of involving an inventive step is that a 
  computer-implemented business method must make a technical contribution.

  2.b. - A "technical contribution" is a contribution to the state of the art 
  in a technical field.

  3. - A "computer-implemented business method" is considered to belong to a 
  field of technology

  Business methods are patentable. 
  Q.E.D.

Thanks to Erik for this proof.

There is an old Chinese idiom that seems to say very accurately what
the EPO is repeatedly shouting to us here:

        In this acre you can find no silver 300 ounces
        此地無銀三百兩       

-- 
Hartmut Pilch, FFII & Eurolinux Alliance              tel. +49-89-12789608   
Protecting Innovation against Patent Inflation       http://swpat.ffii.org/
100,000 signatures against software patents      http://www.noepatents.org/