KURZMITTEILUNGEN
29. June 2010
European Patent Law
In the newly rendered decision, T 528/07 – "Business-to-Business Relationship Portal/ACCENTURE", Technical Board of Appeal 3.5.1 of the EPO, which generally deals with appeals related to computer-implemented inventions (CII), has decided that the "modified problem solution approach" (also referred to as "Comvik approach") as applied following decision T 641/00 – "Two identities/COMVIK", is in line with Art. 27(1) TRIPS.
The Board notes (see point 2.2) that although the Comvik approach often leads to the conclusion that an invention involving non-technical aspects merely solves a trivial technical problem, it affirms that this is not an inevitable outcome. As soon as an invention solves a technical problem in a non-obvious way patent protection is in principle available even if the claim also contains non-technical features (c.f. T 769/92 - "General purpose management system/SOHEI").
In the decision T 528/07 the Board immanently acknowledged that the EPC2000 (i.e. the EPC as amended in the diplomatic revision conference of 2000 and as entered into force end of 2007) has to fulfil the requirements of TRIPS, which to our knowledge has not yet been decided. However, in the Board's view TRIPS would not require a modification of the Comvik approach (see point 2.3).
Article 27(1) TRIPS stipulates that, subject to the provisions of its paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step, and are capable of industrial application. At the revision conference in 2000, Article 52(1) EPC was amended to include the expression "in all fields of technology" to explicitly bring it in line with the TRIPS agreement. However, TRIPS does not give a definition of the term technology, but leaves it to the member states and their jurisdiction to define and apply this concept.
Moreover, under Article 27(1) TRIPS a patent shall only be granted if it is new and involves an inventive step. Again, TRIPS does not stipulate how these requirements are to be applied. Article 27(1) TRIPS reflects on the one hand a minimum consensus and on the other hand the member states' unreadiness to uniformly define the patentability requirements. Accordingly, the Board took the view that the TRIPS member states are free to adopt different standards for each patentability requirement, such as inventive step; the Comvik approach is one facet of the standard applied by the EPO (point 2.3).
Moreover, in T 528/07– "Business-to-Business Relationship Portal/ACCENTURE", Technical Board of Appeal 3.5.1 also clarified its interpretation of decision T 717/05 – "Auxiliary game/LABTRONIX CONCEPT INC.", issued in 2006 by Technical Board of Appeal 3.4.3, which in turn is based on the decision T 115/85 - "Computer-related invention/IBM", rendered in 1988.
In view of the statement that "giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem" from decision T 115/85 (see point 7), Board 3.4.3 decided in decision T 717/05 (point 5.4) that "any display of information of the internal state of an apparatus conveys a cognitive content to the user, as this is the fundamental reason for its existence. To exclude all such systems from patent protection cannot be seriously envisaged."
However, in T 528/07– "Business-to-Business Relationship Portal/ACCENTURE", Technical Board of Appeal 3.5.1 stated that two different interpretations of decision T 115/85 exist in the jurisprudence:
1) either the visual indications must concern technical conditions of the system in order to relate to a technical problem (T 833/91 – "Simulation of computer program external interfaces/IBM"), or
2) they may also concern non-technical conditions (T 717/05 – "Auxiliary game/LABTRONIX CONCEPT INC.")
Board 3.5.1 noted that it will follow approach 1) (the more restrictive approach cited above), according to which only technical conditions of a system can be taken into account. This line is also considered to have been taken in other decisions of the Boards of Appeal (see e.g. T 790/92, point 4.6; T 953/94, point 3.1; T 1161/04, point 4.5; T 1567/05, point 3.7; T 756/06, point 13). Moreover, in the Board's view the clear character of exception of this approach appears to be more consistent with the exclusion of "presentations of information" pursuant to Article 52(2) (d) EPC.
However, the Board's decision fails to acknowledge and resolve a discrepancy existing with other recent case law of the Technical Boards of Appeal (e.g. T 1793/07 – "Video game device/KONAMI", point 3.5.1), which explicitly follows the findings of decision T 717/05 – "Auxiliary game/LABTRONIX CONCEPT INC.", by taking approach 2) (the less restrictive approach cited above).
In the new decision T 528/07, the Technical Board of Appeal could have also taken the opportunity to refer this point of law to the Enlarged Board of Appeal under Art. 112 EPC, so that the Enlarged Board of Appeal would have had the chance to resolve this inconsistency, and possibly to address the Comvik approach and its application (which it did not in the President's referral G 03/08, since the President's referral did not address any of its questions to the validity of the modified problem and solution approach), particularly in view of Art. 27 TRIPS.
Download the full text of the decision T 528/07 under:
http://www.mueller-bore.de/tl_files/Decisions_EPO/Business_to_Business_Relationship_Portal.pdf
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