No. of citations: 109
T 258/03 ("Hitachi") re-defined the manner in which the technical character of method claims is evaluated. It marked the end of the so-called "contribution approach" to the assessment of technical character.
In the underlying examination case, claim 1 of the Main Request related to an "automatic auction method executed in a server computer" comprising steps (a) to (l). Steps (a) to (l) included technical features (e.g., relating to the transmission of data through a computer network) as well as non-technical features (defining the rules of the auction method). Claim 3 was directed to a "computerised auction apparatus for performing an automatic auction" according to claim 1.
The Board firstly observed that:
"According to Article 52(1) EPC, European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step. [...] There are thus four requirements which claimed subject-matter must fulfil: it should be an "invention", and this invention must be new, inventive, and industrially applicable. In accordance with the established case law of the boards of appeal, the term "invention" is to be construed as "subject-matter having technical character". (point 3.1 of the reasons, emphasis added)The Board found that the presence of an "invention" in the sense of Art. 52 EPC is a prerequisite for the examination of novelty, inventive step and industrial application, since these latter requirements are defined only for inventions (cf. Articles 54(1), 56, and 57 EPC). They concluded that therefore it must in principle be possible to assess technicality on an invention without any knowledge of the state of the art (point 3.1 of the reasons).
The Board observed that the possibility for assessing technicality of an invention with no regard of the prior art is incompatible with "contribution approach". The contribution approach was based on the idea that the EPC only permitted patenting "in those cases in which the invention involves some contribution to the art in a field not excluded from patentability" (T 38/86). In other words, under the contribution approach, some prior art was taken into account when determining whether subject-matter was excluded under Article 52(2) and (3) EPC.
The Board in T 258/03 explicitly distanced itself from the contribution approach. They cited earlier decisions that had departed from the contribution approach, such as:
"Determining the technical contribution an invention achieves with respect to the prior art is therefore more appropriate for the purpose of examining novelty and inventive step than for deciding on possible exclusion under Article 52(2) and (3)" (T 1173/97, point 8); and
"There is no basis in the EPC for distinguishing between 'new features' of an invention and features of that invention which are known from the prior art when examining whether the invention concerned may be considered to be an invention within the meaning of Article 52(1) EPC. Thus there is no basis in the EPC for applying this so-called contribution approach for this purpose" (T 931/95, headnote IV).This view was shared by the Board in T 258/03.
The Board also agreed with earlier case law, according to which a claim may contain a mix of technical and non-technical features and still be regarded an "invention" in the sense of Art. 52 EPC. They found that non-exclusion from patentability could not be destroyed by an additional feature which as such would itself be excluded (point 3.4 of the reasons).
For this reason, the Board firstly considered that apparatus claim 3 defined a technical invention. This finding was in agreement with earlier case law, in particular T 931/95.
The Board then also found that the conclusion regarding technical character of the apparatus claim would also apply to method claim 1. This was not in agreement with earlier case law, T 931/95. However, the Board in T 258/03 found that, upon strict non-application of the contribution approach, any technical feature recited in a method claim (even if it was trivial) lends technical character to the corresponding method.
The Board admitted that its approach to the assessment of technicality was very broad. They realised that the exclusion from patentability for non-technical methods could easily be circumvented by inclusion of (trivial) technical features in the claim. However, they found this approach is nevertheless justified, because method claims, which take the hurdle of technicality by inclusion of potentially trivial technical features are not automatically patentable. The claims must still be new inventive. Therefore method claims with only trivial technical contributions will normally not proceed to grant (point 4.6 of the reasons).
The Board concluded that, in general, a method involving technical means is an invention within the meaning of Article 52(1) EPC.
The invention defined by claim 1 and 3, however, was considered to lack inventive step, because the technical features of the claims were trivial.
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Headnote:
I. A method involving technical means is an invention within the meaning of Article 52(1) EPC (as distinguished from decision T 931/95-Controlling pension benefits system/PBS PARTNERSHIP)(see points 4.1 to 4.4 of the reasons).
II. Method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed (see point 5.7 of the reasons).
The full text of the decision can be found here.
Quotes from random decisions citing T 258/03 can be found here.
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