EPO T258/03: business methods patentable

[Hartmut Pilch <phm@a2e.de>]

GregNews quotes a report from a patent lawyer about a new EPO case:

David Krivoshik, a patent lawyer and PATNEWS reader from Australia,
recently emailed me the following interesting information about
developments involving business method patents.  Sad to say, I am hearing
stories that the PTO is resurrecting 101 rejections using the evil
phrase "technical effects".
                                      ----

[...]
 
Our European Associate advises that the EPO Technical Board of Appeal,
in the recent Hitachi decision T258/03, has extended the teaching of the
Pensions Benefit case, T931/95, to say that methods of doing business
are potentially patentable provided the claimed method contains
technical features.
 
[...]

The EPO Technical Board of Appeal (TBA), in recent Hitachi decision
T258/03, has extended the teaching of the Pensions Benefit case, T931/95,
to say that methods of doing business are potentially patentable provided
the claimed method contains technical features. Good news therefore for
innovative software houses - the sting in the tail however is that the
requirement that the invention solves a technical problem remains.

This decision takes the EPO forward as it expressly states that the
'level of banality' of the technical features should not be material to
the issue of excluded subject matter and that even the use of pen and
paper comprises technical features, but of course patent applications
should be refused when appropriate for lack of novelty and inventiveness.

[...]

The TBA overturned the earlier ED decision, that the apparatus claim was
not an invention because it lacked technical merit, on the basis that it
comprises features that are clearly technical, such as a 'server computer',
'client computers' and a 'network'.  The TBA also stated the independent
method claim is not excluded from patentability as also comprising
technical features; in this case being an automatic auction method the
weight of the technical features of which are said to be irrelevant.
However, the Board found that the claims of this particular application
lacked inventive step over the prior art, and the appeal was refused.

-- 
Hartmut Pilch, FFII & Eurolinux Alliance              tel. +49-89-18979927
Protecting Innovation against Patent Inflation       http://swpat.ffii.org/
330,000 votes 3000 firms against software patents    http://noepatents.org/