Re: [Patents] "condition of ..." amendment

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

PILCH Hartmut wrote:

> This amendment proposal can gain support of from all parties,
> especially by people with a weak understanding of software and a
> strong sense for legal logics.
>
> The justification is extremely long but needed for educational
> purposes in and outside the Parliament.
>
> Critical review would also be most welcome.
>
> ----------------------------------------------------------
>
> Article 4(2)
>
>                             amendment                              
>                                                                    
> Member States shall ensure that      Member states shall ensure that
> it is a condition of involving       it is a condition of           
> an inventive step that a             constituting an invention in   
> computer-implemented invention       the sense of patent law that an
> must make a technical                innovation, be it              
> contribution.                        computer-implemented or not,   
>                                     must be of technical character.
>                                                                    
>                           justification                            
>                                                                    
> The Commission text opens several doors for unlimited patentability by
> deviating from Article 52 EPC.
>
> The EPO Examination Guidelines of 1978 explain Art 52 EPC as follows:
>                                                                    
>    There are four basic requirements for patentability:           
>
>     1. There must be an "invention".                               
>     2. The invention must be "susceptible of industrial            
>        application".                                               
>     3. The invention must be "new".                                
>     4. The invention must involve an "inventive step".             
>
>    In addition to these four basic requirements, the examiner      
>    should be aware of the following two requirements that are      
>    implicitely contained in the Convention and in the Regulations: 
>
>     1. The invention must be such that it can be carried out by a  
>        person skilled in the art [...]
>     2. The invention must be of "technical character" [...]
>
> The Commission text deviates from Art 52 EPC by merging the
> independent requirement of "technical invention" (renamed to
> "technical contribution") into the requirement of "inventive step".
> This is counter-intuitive and theoretically inconsistent, as even the
> European Commission implicitely admits in the Explanatory Memorandum:
>
>        The presence of a "technical contribution" is to be assessed
>        ... under inventive step.  Experience has shown that this
>        approach is the more straightforward to apply in practice.
>
> Indeed the approach has significant practical effects.  It opens an
> infinite space of interpretation for those patent offices that conduct
> a full substantive examination, such as the EPO and the German Patent
> Office, while preventing other patent offices (such as French,
> Italian) from rejecting patents on non-inventions.
>                                                                    
> Furthermore, treating "computer-implemented" inventions in a special
> way, as suggested by the European Commission, runs counter to Art 27
> TRIPs. And, as has been pointed out above, the term
> "computer-implemented invention" itself may run counter to Art 52 EPC
> by implying that algorithms framed in terms of generic computing
> equipment (programs for computers) are patentable inventions.
>
> The amendment solves all these problems by restating the structure of
> Art 52 EPC as explained by the EPO's Examination Guidelines of 1978.
>
>  
This is the crux of the matter. I am trying to speak about it since 
Dorint, but my answer is slightly different as yours. Which one is more 
effective it is difficult to say.

Only one additional note. Quoted by you part of Guidelines was never 
amended and is in force till now.

How to force the EPO to separate looking for technicality and
non-obviousness?

The answer. Put them in one Article but in separate paragraphs.
Therefore combination Articles 3 and 4 it is not a bad idea. It gives
an impresion of a compromise because it allow to leave much of CEC text
intact. In fact deliberations on non-obviousness are superflous because
they are part of general rules.

New Article 4

Member States shall ensure that a computer-implemented invention is
patentable on condition that it is susceptible of industrial
application, is new, involves an inventive step and belongs to a
technical field.

Member States shall ensure that the use of natural forces to control
physical effect belongs to a technical field. The processing, handling
and presentation of information do not belong to a technical field,
regardless of whether they are executed in the human mind or by means
of technical devices.

The belonging to a technical field shall be assessed by consideration
of the difference between all of the technical features of the patent
claim and the state of art.

Member States shall ensure that it is a condition of involving an
inventive step that a computer-implemented invention must make a
technical contribution.

The technical contribution shall be assessed by consideration of the
difference between the scope of the patent claim considered as a whole,
elements of which may comprise both technical and non-technical
features, and the state of art.


Example of non-technical subject matter that according to the EPO
metodology hurdles test of an inventive step, but will be stoped by
proposed technicality filter.

Title: CHIP CARD AND METHODS FOR ITS USE
Patent Number: EP0968485 (WO9828718, DE19718115, PL334183)
Applicant(s): DEUTSCHE BANK AG (DE), CCS CHIPCARD & COMM SYST GMBH (DE)
Abstract:
The invention relates to a chip card for carrying out transactions in
which value data representing units of monetary value or other,
non-monetary entitlements is transferred between the card holder and at
least one transaction partner (service provider) or is presented to the
service provider for verification of such entitlements. The chip card
is characterised in that it comprises a memory in which the data
required for carrying out the transactions is stored, and in that
it has a device for loading the card with one or more card applications
(VAS applications), which in each case permit transactions to be
carried out between the cardholder and one or more service providers.

Jozef Halbersztadt