EPO not to search “Business Method Patents“

 

In a press release[1] dated 13 August 2001, the European Patent Office (EPO) informed applicants using the Patent Co-Operation Treaty (PCT) that the EPO will NOT carry out an international search on “an application to the extent that its subject-matter relates to no more than a method of doing business, in the absence of any apparent technical effect”. “Moreover”, the press release continues, “claims to commonplace technological implementations of such methods will not be searched”. The EPO maintains that “it would not serve any useful purpose” to search these claims. The EPO acting as a PCT International Search Authority is entitled to refuse to do under Article 17 of the PCT in conjunction with Rule 39[2].

 

In refusing to search this subject matter, the EPO is giving the impression that methods of doing business will always be excluded from patentability. This interpretation is not only in conflict with the Member States obligations under the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) but is also in conflict with jurisprudence in at least one EPO member state. It could also be argued that the EPO is also not fulfilling its obligations under the PCT since the patentability of business methods is clearly not excluded in the United States.

 

Pension Benefit Systems/EPO

 

The EPO is following the interpretation of the exclusion from the patentability of scheme, rules and methods for doing business according to Art. 52 (2) of the European Patent Convention (EPC) as outlined by the Board of Appeal in its decision T 0931/95 Improved Pension Benefit Systems[3]. The patent application in that case was directed to a method and an apparatus for controlling a pension benefits program. The Board rejected the method claim on the basis that it was a method only involving economic concepts and practices of doing business and was therefore not an invention within the meaning of the EPC. The Board stated that “a feature of the method which concerns the use of technical means for a purely non-technical purpose and/or for processing purely non-technical information does not necessarily confer a technical character to such a method”. Thus, the Board argued, the use of a general-purpose computer programmed to implement the method does not make the method patentable.

 

The Board did, however, state that the apparatus claim is not necessarily excluded from patentability if the computer system is suitably programmed for use in a particular field, even if that is the field of business and economy. However, the Board went on to reject this claim since the improvement envisaged by the invention according to the application is an “essentially economic one…which cannot contribute to inventive step”.

 

Automatic Control of Turnover/German Patent Court

 

The EPO’s decision in Improved Pension Benefits is in contrast to the German Patent Court’s decision on a method for automatic control of the turnover of goods and/or services (Automatische Absatzsteuerung)[4]. This decision states that the technical character of a claim’s teaching is not put into doubt if use is made of a computer programmed in a conventional manner. The German Court further concluded that the use of technical means for the automatic control is a part of the solution to the problem. The economic rule implemented in the claim is in such a close relationship with the technical procedure, that the claimed method should be considered to be technical”.

 

Language Analysis Apparatus/German Supreme Court

 

In a later decision, to a claim directed toward an apparatus for the analysis of language (Sprachanalyseeinrichtung)[5], the German Supreme Court (BGH) approved the Patent Court’s approach in the “Automatische Absatzsteuerung” decision. The Supreme Court stated that an industrially manufactured and commercially implementable apparatus to which energy is supplied and in which different switching conditions arise, such as a general purpose computer or a specially configured electronic data processing system, has a technical character. As a result it is susceptible of patentability.

 

Conflict between EPO and National Patent Systems

 

The existence of two different systems of granting patents in most European countries (the EPO system and the national patent system) inevitably leads to different interpretations of the same legal provisions – even if they are identically worded. As yet there is no “single” legal body – similar to the US CAFC - that can be called upon to resolve the different interpretations of the law. It currently appears that whereas the EPO may reject patents directed to business methods, the German system may well allow such patents. As far as can be seen, the UK Patent Office is also reluctant to grant protection to business methods. The Merrill Lynch decision of the UK Court of Appeal stated that for a convention computer system executing a novel program to be patentable, there must be a technical advance on the prior art in the form of a new result.

 

Strategy for Protecting Business Methods

 

Given the EPO’s reluctance to search PCT patents directed toward methods for doing business, it may be inadvisable to file PCT applications on such patents and request the EPO as a Search Authority. US Applicants should certainly consider whether to ask the US PTO to search such applications rather than receive a refusal to search from the EPO.
When drafting such applications, care should be taken to describe not only the method but also to describe any adaptation of the computer. For example, any application program interfaces (API) should be described in detail. The configuration of the memory of the computer, or the manner in which a stack is used or the display outputted may later aid the applicant in pursuing the application through the EPO.

Patent applicants should also consider whether it might be better to file in certain European Countries as well as or instead of in the European Patent Office. It should be noted that some countries – notably France and Italy – do not allow national applications emanating from the PCT route. In these countries it is only possible to claim a Paris Convention priority.

 

© Dr. Robert Harrison 2001

 

For Further information, please contact:

 

Dr. Robert Harrison

Huber & Schuessler

Truderinger Str. 246

81825 München

Germany

 

Tel: +49 89 4272 4748

Fax: +49 89 4272 4749

E-Mail: rob.harrison@germanpatent.de

Web: www.huber-schuessler.com

 



[1] Available on the EPO’s website under

http://www.european-patent-office.org/news/pressrel/2001_08_13_e.htm

[2] Rule 39. 1 reads:
No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following:

….

(iii) schemes, rules or methods of doing business, performing purely mental acts or playing games,

….

(vi) computer programs to the extent that the International Searching Authority is not equipped to search prior art concerning such programs.

[3] Available on the EPO’s website under http://www.european-patent-office.org/dg3/biblio/t950931eu1.htm

[4] BPatG: „Automatische Absatzsteuerung“. Mitt 2000, Page 33-35.

[5] BGH Sprachanalyseeinrichtung