Re: [Patents] "Further technical effect"

[Jozef Halbersztadt <halber@idea.net.pl>]

James Heald wrote:

> 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
> >
> >    
>
> 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.
>
>
> 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 ?
>
>
>  
Still, there are more cases like T49/99. The one is highlighted by them 
and published in the OJ - T641/00. The technical character is underlined 
in T 641/00 even more explicitely.

http://legal.european-patent-office.org/dg3/biblio/t000641ex1.htm

You are right that the EPO forced Germans to abandin "the core theory". 
But together with Hartmuts and Betten comments you will find in English 
German Federal Court decision of 2001 on IBM Search for Faulty Character 
Strings. http://lists.ffii.org/archive/mails/news/2002/Nov/0001.html The 
Court is not looking for "a core of an invention", nevertheless the 
question of technicality is continue to be answered on the basis of an 
overall consideration of the subject-matter of the application. There is 
no place for any "further technical effect".

Your

> My understanding is therefore that, in the EPO thinking, the "specific
> contribution" need not be technical per se (eg if it is a computer
> program), but must somehow improve the ability of the device as a whole
> to carry out its technical function (ie not just add a pretty
> screensaver).
>
>
> Trying to convert this position succinctly into legislation, without
> overturning any previous EPO decisions, appears to be one of the
> contributory factors worsening Arlene McCarthy's mental condition...
is too ambitious.

But we should try to convince the Parliament that to Article 4 should be 
added:

An invention is to be understood as a solution to a technical problem. 
An effect cannot be considered as contributing to the technicality when 
it is not integral with the problem solution.