Re: [Patents] "Further technical effect"

[James Heald <j.heald@ucl.ac.uk>]

halber@idea.net.pl wrote:
> 
> 
> 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.

Interesting case.

So now I understand the Sohei case even less than I did before.

(T 0769/92,
http://legal.european-patent-office.org/dg3/biblio/t920769ep1.htm)

Sohei patented the use of the same on-screen form to update two
different databases without retyping, namely an inventory database and a
billing database.

The decision seems to have been regularly held up by the EPO as one of
its finest works.

Even though the application area would appear to be a business method,
and so non-technical; and the inventive step would appear to be entirely
achieved in software, so not a technical contribution, the Board of
Appeal ruled that it was indeed technical, because (sec 3.7):

        "Mere programming as such would, in the board's view, also be excluded
from patentability by virtue of the fact that it is an activity, which
essentially involves mental acts excluded and, in addition, only results
in computer programs which are also excluded from patentability by the
same Article 52(2)(c) EPC. However, the implementation, in the claimed
system and by the claimed method, of the said "interface" in the form of
said "transfer slip" is not merely an act of programming but rather
concerns a stage of activities involving technical considerations to be
carried out before programming can start".

According to the headnote: 

        "An invention comprising functional features implemented by software
(computer programs) is not excluded from patentability under Article
52(2)(c) and (3) EPC if technical considerations concerning particulars
of the solution of the problem the invention solves are required in
order to carry out that same invention. 

        Such technical considerations lend a technical nature to the invention
in that they imply a technical problem to be solved by (implicit)
technical features." 


If anyone is familiar with the case, could they explain in this instance
what were the "technical considerations" which had to be "carried out
before programming can start" ?


Because the patent is effectively for a user interface, I had assumed
that the "technical consideration" must have been that of the system
analyst; but since T 49/99 (rightly IMHO) rules that system analysis is
as much a mental activity as computer programming, then what *was* the
technical consideration in Sohei ?