ODP:Re: [Patents] "Further technical effect"

[halber@idea.net.pl]

Gregory Aharonian wrote:
James proposes the following:
>In this spirit, the following should all be considered non-technical
>and non-patentable: the underlying ideas of software (or algorithms);
>information processing methods; representations of information and 
data;
>methods of interaction between human beings and computers"

What is your definition of the word "technical"?

As I understand the EPO (or German) jurisdiction did not give up the 
definition of “technique” as controlled use of natural forces. 
The change 
consists in the fact that “technique” ceased to be foremost 
factor taken 
into consideration by answering the question of patentability.

Some EPO decisions are in complete harmony with CULT proposals. For 
example look to decision Boards of Appeal of March 2002 (case T 49/99)
http://legal.european-patent-office.org/dg3/pdf/t990049eu1.pdf

It is not using “both technical and non-technical features” 
formula of the 
EPO standard practice (in directive Article 4 paragraph 3) but as in CULT 
Amendment 15:
The technical contribution shall be assessed of the difference between 
scope of technical features of the patent claim considered as a whole 
and the state of the art

From reasons for the decision T 49/99:
4. The subject-matter of claim 1 . . .is not patentable . . . .for lack of 
inventive step.
5. . . . If the invention as claimed relates to non-technical subject-
matter or activities, only those aspects or elements of the invention 
which contribute to its technical character are to be given significance in 
assessing inventive step.
7. Information modelling is a formalized process carried out by a system 
engineer or a similar skilled person in a first stage of software 
development for systematically gathering data about the physical 
system to be modelled or simulated and to provide so to say a real 
world model of the system on paper. Although information modelling 
embodies useful concepts and methods in developing complex software 
systems, it is as such an intellectual activity having all traits typical for 
non-technical branches of knowledge and thus being closely analogous 
to the non-inventions listed under Article 52(2)(a) and (c) EPC.
In examining inventive step, it should hence be treated like any other 
human activity in a non-technical field, which is, as such, not an 
invention for the purposes of Article 52(1) EPC. Only the purposive use 
of information modelling in the context of a solution to a technical 
problem, as e.g. is the case for the preferred embodiment relating to 
the control and management of technical processes in a power system, 
may contribute to the technical character of an invention.

Why CULT Amendment 15 is not enough?
There are two reasons. (1) It is not making difference with “further 
technical effect”. (2) If the EPO is finding that an application is 
essentially non-technical but there are some shades of technicality – 
as 
everybody suspects they are usually artificial – it must prove that 
this 
technicality is known and obvious. It is not easy because according the 
case law examiner is not allowed match any document. The examiner 
must prove a link between them. Any amendment to the Directive is 
aimed to change this situation. If fact CULT amendments relate to the 
technical contribution, and the technical contribution is investigated by 
analysing an inventive step.

What is needed to enable outright rejection of essentially non-technical 
application? A border between technical and non-technical world should 
be drawn more sharply - already in paragraph 1. CULT Amendment 13:
Member States shall ensure that a computer-implemented invention is 
patentable on the condition that it is susceptible of industrial application, 
is new, involves an inventive step, and belongs to a technical field. 

should extented by:
If the problem solution is already completed as an abstract solution of 
an abstract problem before its implementation in technical field the 
subject matter is not patentable. An abstract problem solution is not 
becoming patentable only because variables, parameters and other 
abstract constructs of a simulation model used to its description are 
based on transformations of gathered real world data.

Problem is that even compromise CULT Amendments 15 and 13 are 
seen in the Parliament as highly controversial.