AIPPI Study Question - Patentability of computer implemented inventions

Transcription

1 Study Question Submission date: May 28, 2017 Sarah MATHESON, Reporter General Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter General Patentability of computer implemented inventions Responsible Reporter: Ralph NACK National/Regional Group Contributors name(s) contact Germany Heiko Dumlich, Jochen Ehlers, Michael Fleuchaus, Stephan Freischem, Jan Freialdenhoven, Robin Keulertz, Jérome Kommer, Rainer Kuhnen, Matthias Rößler, Stefan Schohe I. Current law and practice 1 Does your current law contain any statutory provisions which specifically apply only to CII? No Both the European Patent Convention ( EPC ) and the German Patents Act ( PatG ) comprise provisions regarding the exclusion of computer programs (see answer to question 2). There is, however, no provision specifically dealing with computer implemented inventions in the sense of the definition given by AIPPI. The term computer implemented invention is neither used in the EPC nor in the PatG. In particular, there are no specific provisions on inventions which involve the use of a computer, computer network or other programmable apparatus or on inventions in which some, but not all features are realised by means of a computer program. 2 Please briefly describe the general patentability requirements in the written statute based law of your jurisdiction which are specifically relevant for the examination of the patentability of CII. The main provisions for patentability are Article 52 EPC and the German counterpart provision 1 PatG, which is harmonized therewith. Art. 52 EPC and 1 PatG require that there be an invention (in the sense of the provision) and that this invention isbe new, inventive and susceptible of industrial application. They furthermore provide a list of subject matter that in particular shall not be regarded as inventions under the statute. The two provisions read as follows: Article 52 (1) EPC: 1. European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. Page 1 of 20

2 2. The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information. 3. Paragraph 2 shall exclude the patentability of the subject matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject matter or activities as such. 1 (1) PatG: (1) Patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. (2) [...] (3) The following in particular shall not be regarded as inventions within the meaning of subdiv (1): 1. discoveries, scientific theories and mathematical methods; 2. aesthetic creations; 3. schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; 4. presentations of information. (4) Subdiv (3) shall exclude patentability only to the extent to which protection is being sought for the subject matter or activities referred to as such. The words in all fields of technology in Art. 52 (1) EPC were introduced in the revision of the EPC in 2000 in view of Art. 27 No. 1 TRIPS, which reads: Subject to the provisions of 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. Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced. [1] Neither Article 52 (1) EPC nor 1 (1) PatG define the term invention itself, other than mentioning that patents shall be granted in all fields of technology. While the mere wording of the provision does not preclude patents that are not in a field of technology, there is a common understanding that patents are only to be granted for technical inventions, i.e. inventions that have technical character. [2] It is important to note that the EPC and the PatG do not provide an exhaustive list of excluded subject matter. Rather, Art. 52 (2) EPC and the corresponding provision of the PatG ( 1 (3) PatG) say (2) The following in particular shall not be regarded as inventions... The overarching provision is Art. 52 (1) EPC/ 1 (1) PatG, which requires that the invention has to be in a field of technology. Accordingly, subject matter may be non-statutory, even if it is not listed in Art. 52 (2) EPC/ 1 (3) PatG. On the other hand, Art. 52 (3) EPC/ 1 (4) PatG establishes that the exclusions of Art. 52 (2) EPC/ 1 (3) PatG are to be construed narrowly. In particular, Article 52 (2) c) EPC and 1 (3) No. 3 PatG refer to programs for computers. As the implementation of inventions by computer implies the use of a computer program these provisions are frequently believed to say that CIIs are not patentable inventions. However, these provisions exclude the subject matter of an application or of a patent only to the extent that the claims define a program for computers as such. Hence, the existing legal provisions do not (explicitly) exclude computer-implemented inventions from patent protection, as long as a program is not claimed as such. 1. ^ Paragraphs 2 and 3 of Art. 27 TRIPS provide exceptions for methods of treatment of the human and animal body and for inventions that are contrary to the ordre publique. 2. ^ See, for example, EPO, decision T 935/97 of February 4, Computer Program Product. Page 2 of 20

3 3 Under the case law or judicial or administrative practice in your jurisdiction, are there rules which specifically apply only to CII? If yes, please explain. a) Both the European Patent Office ( EPO ) and the German courts have developed specific rules both for assessing whether a claimed invention is technical and is not excluded pursuant to Art. 52 (2) and (3) EPC/ 1 (3) and (4) PatG, and for assessing the question of an inventive step, i.e. whether the claimed invention was non-obvious in view of the prior art at the application or priority date. This implies two separate stages of examination. In the first stage it is assessed whether the claimed invention forms statutory subject matter, i.e. whether the EPC or the PatG, respectively, provide protection for the type of invention at issue. For the EPC and the PatG, this specifically means an assessment of whether the claimed invention has technical character and whether it comes under one of the categories of Art. 52 (2) and (3) EPC and 1 (3) and (4) PatG. This assessment relates to an intrinsic feature of the invention and is independent of the prior art. [1] The second stage of the examination relates to the assessment of novelty and inventive step, where the claimed subject matter is compared to the prior art. Also in this regard, specific rules for CII apply. The two stages of the examination are to be distinguished and will be described separately. b) Regarding the first stage of the examination, the EPO and the German courts have established different rules for establishing whether claimed subject matter is excluded under Art. 52 EPC or 1 PatG respectively. Case law of the EPO:[2] Historically, in the 1980 s and early 1990 s, the so called contribution approach was pursued by the EPO. According to the contribution approach, subject matter was only held patentable, if it provided a technical contribution to the prior art in a field not excluded from patentability under Art. 52 (2) EPC.[3] Therefore, prior art was taken into account. [4] That is, determining the technical character of subject matter by way of the contribution approach, it was distinguished between novel features and features that were known in prior art. Only novel features were taken into account when assessing the technical character of the subject matter. In particular with a decision of 1998[5] the contribution approach was abandoned and is no longer applied by the EPO today. [6] Since then, the determination of technical character is straightforward. Determining whether or not the claimed subject matter has technical character, all non-technical and all technical features of the subject matter are equally taken into account. In particular, the features are not weighted according to their relevance for the invention and/or according to the contribution over the prior art. In contrast to the contribution approach, the current approach treats the technical character as an inherent property of the subject matter that has to be assessed without taking any prior art into account.[7]. The technical character of subject matter cannot be lost merely due to the fact that the subject matter is known from the prior art.[8] According to the current case law and practice, if the claim at issue is not directed to a computer program, it is sufficient that the claim comprises at least one technical feature.[9] This feature can be any physical entity, including, but not limited to matter, in particular condensed matter, and fields, in particular electromagnetic fields. Especially, if the claim recites a computer or another programmable device, the claimed subject matter is considered technical and outside the exclusions of Art. 52 (2) and (3) EPC. Likewise, the mere formulation of a method as being computer-implemented lends the demanded technicality to the claimed subject matter. [10] Since a computer implemented invention in the sense of this study question involves the use of a computer, computer network or other programmable apparatus, it is not excluded from patentability under Art. 52 EPC, provided the use of a computer or programmable device is directly and unambiguously clear from the claim. Claims directed to a computer program, i.e. claims following the format computer program which, when executed, causes a computer to perform the steps A, B and C or a similar format, are not excluded according to the case law of the EPO, if the program has the potential to create a further technical effect.[11] More specifically, a computer program is not excluded from patentability if it is capable of bringing about, when executed, a further technical effect going beyond the "normal" physical interactions between the program (software) and the computer (hardware) on which it is run. This further technical effect may be known from the prior art. [12] The mere fact that a computer program can be executed on a technical device (computer) is not in itself sufficient for providing technical character. [13] The normal physical interactions are those that are common to all computer programs. Accordingly, a further technical effect goes beyond the technical effects that occur during the execution of any program and is specific for the claimed program. As the Board put it in the decision T 935/97:[14] This means that physical modifications of the hardware (causing, for instance, electrical currents) deriving from the execution of the instructions given by programs for computers cannot per se constitute the technical character required for avoiding the exclusion of those programs. Although such modifications may be considered to be technical, they are a common feature of all those programs for computers which have been made suitable for being run on a computer, and therefore cannot be used to distinguish programs for computers with a technical Page 3 of 20

4 character from programs for computers as such. It is thus necessary to look elsewhere for technical character in the above sense: It could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. Where said further effects have a technical character or where they cause the software to solve a technical problem, an invention which brings about such an effect may be considered an invention, which can, in principle, be the subject matter of a patent. Examples of a further technical effect are the control of an industrial process or of a device different from a computer, the internal functioning of the computer components or its interfaces under the influence of the program, e.g. operation with improved efficiency or security or increased processing speed, the processing of signals generated by a sensor to create output data of the sensor. Technical character and the exclusions of Art. 52 (2) and (3) EPC are assessed without regard to the prior art. As the criteria applied by the EPO in this stage of the application are fairly liberal, only few inventions fail at this stage. Case law of the German courts: The current case law of the German Federal Court of Justice ( BGH ) distinguishes between the requirement of technical character and the specific exclusions of 1 (3) PatG. For the proper construction of 1 (1) PatG the term technical character has to be defined. A definition given by the BGH in 1969 [15] is still applicable today. According to this definition, an invention is a teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result." Until the early 1990 s, a so called core theory was applied in the German practice to determine the technical character within the meaning of 1 (1) PatG. Therein, the core of the claimed subject matter had to be technical. [16] The core of the invention was determined particularly in the light of prior art. A computer implemented invention could, according to the core theory, be technical or non-technical. However, the core theory was abandoned in particular by a decision of the BGH in [17] Since then, the technical character is determined independently of the core of the invention and independently of any prior art. [18] Instead, the claimed subject matter is taken into account as a whole[19] and the individual features are not weighted. [20] It is also no longer required that the claimed subject matter constitutes a teaching that is exclusively or predominantly technical. That is, a combination of technical and non-technical features as a whole can have technical character.[21] In particular, a teaching that combines software and hardware has technical character. [22] Therefore and similar to the case law of the EPO, a single technical feature is sufficient to establish technical character of the claimed subject matter.[23] The BGH, however, consistently holds that not any method or apparatus that involves the use of a computer avoids the exclusions of 1 (3) and (4) PatG.[24] In order to overcome these exclusions, the BGH holds that the claim must include features that constitute the solution of a specific technical problem by technical means. [25] For example, patentability was denied for a method for electronically transferring money[26] and for a computer-based method for evaluating the content of documents. [27] Due to this additional criterion, a larger number of inventions already fail at this stage, compared to EPO practice, because although they employ technical means, the court does not recognize a technical problem that is solved by the claimed subject matter. c) Regarding the second stage of the examination, the EPO and the German courts use a specific approach for assessing inventive step (Art. 56 EPC, 4 PatG), i.e. for assessing whether the claimed subject matter was obvious in view of the prior art. Essentially, both hold that only features contributing to the solution of a technical problem by technical means are to be considered in the assessment of inventive step. To the extent the claim contains or refers to purely non-technical features, these can legitimately be used for defining the problem to be solved under the problem/solution approach. [28] There are slight differences in the criteria for determining which features are to be considered in the assessment of inventive step. According to the approach followed by the EPO, all features that contribute to the technical nature of the claimed solution, are considered when assessing whether an inventive step is involved in the claimed subject matter. [29] According to German case law, when assessing the inventive step for a claim involving a computer program, only those features are considered that determine or at least influence the solution of a technical problem with technical means. [30] The result of these slightly different approaches is, however, similar. The examination of the inventive step requirement both before the EPO and before the German courts, includes the following steps: 1. Identify all technical features of the claim, including those that are (only) implied in the claim language, e.g. by non-technical language, such as read, write, calculate, determine etc. 2. Identify the technical effect(s) of the technical feature(s). 3. Define an objective technical problem based on the technical effects of the technical features. Page 4 of 20

5 4. Compare the combination of all technical features to the closest prior art. 5. Decide whether the solution defined by the combination of all technical features would have been obvious for a skilled person in view of the prior art. In some instances, the EPO uses a simplified approach for assessing inventive step, [31] in which it only considers those features, which are by themselves technical. In the case law of the Boards of Appeal, this approach is sometimes used for inventions which are prima facie mere implementations of administrative schemes. [32] In the practice of the examining divisions of the EPO, this approach is not uncommon, if the examining division is of the opinion that no technical problem beyond the implementation of non-technical subject matter is involved. This approach does, however, not consider the concurrence of features in the solution of a technical problem and, when limited to explicitly mentioned technical features, also does not consider the possibility of a technical feature being implied by non-technical language. It is only appropriate, if it can be established a priori (not prima facie) that no technical features are involved beyond those explicitly mentioned in the claim and the technical features form an aggregation, wherein the individual features do not co-operate in the solution of a common problem. d) By definition, the methodology for assessing inventive step outlined above establishes a technical solution to a specific technical problem, which is required by the German courts to avoid the exclusions of 1(3) PatG/Art. 52 (2) EPC. By definition, it simultaneously establishes a further technical effect required in the case law of the EPO for avoiding the exclusion of computer programs with a claim directed to a computer program. Namely, if a technical feature realized when running the claimed program is non-obvious, it is by definition not common to all programs for computers [33] and hence goes beyond the normal operation of a computer. Thus, if an inventive step is found according to the methodology outlined above, the statutory requirements for patentability are simultaneously fulfilled both according to the approach of the EPO and according to the approach of the German courts. Thus, in practice the main focus of the examination is on the issue of inventive step. Generally, the initial examination of the statutory requirements is considered to be a coarse filter excluding those cases in which the claim does not have any technical instructions that could reasonably serve as the basis for assessing inventive step. This not only applies to the exclusion of programs for computers, but also to the exclusion of presentation of information (Article 52 (2) (d)/ 1 (3) No. 4 PatG) which is frequently implemented by means of a computer program. [34] 1. ^ The requirement of statutory subject matter is frequently referred to as patent eligibility. In this sense, patent eligibility is an intrinsic property of an invention, irrespective of the date when the invention was made or when it is examined for patentability and hence independent of the prior art. The German Group, however, also noted that in the context of the working questions, the term eligibility seems to have a broader meaning beyond the requirements for statutory subject matter (see also question 17). 2. ^ Guidelines for Examination in the EPO, November 2016, Part G Chapter II. 6, ^ EPO, decision T 121/85 of March 14, 1989; decision T 38/86 of February 14, 1989 Text processing; decision T 95/86 of October 23, 1990; decision T 603/89 of July 3, Marker; decision T 71/91 of September 21, 1993; decision T 236/91 of April 16, 1993; decision T 833/91 of April 16, 1993; decision T 77/92 of October 13, ^ EPO, decision T 258/03 of April 21, Hitachi; decision T 769/92 of May 31, 1994 General purpose management system. 5. ^ EPO, decision T 1173/97 of July 1, Computer program product/ibm. 6. ^ EPO, Enlarged Board of Appeal Opinion G 3/08 of May 12, Programs for computers. 7. ^ EPO, decision T 154/04 of November 15, ^ EPO, decision T 1177/97 of July 9, ^ EPO, decision T 258/03 of April 21, 2004 Hitachi. 10. ^ EPO, decision T 424/03 of February 23, Clipboard Formats I; EPO, Enlarged Board of Appeal Opinion G 3/08 of May 12, Programs for computers, div ^ EPO, decision T 935/97 of February 4, Computer Program Product, supra; decision T 1173/97 of July 1, Computer program product/ibm; EPO, Enlarged Board of Appeal Opinion G 3/08 of May 12, Programs for computers. 12. ^ EPO, decision T 1173/97 of July 1, Computer program product/ibm. 13. ^ For the avoidance of doubt, a method of executing a program on a computer and a computer capable of executing the steps of a program have technical character, cf. EPO, decision T 258/03 of April 21, 2004 Hitachi, supra; decision T 424/03 of February 23,2006 Clipboard Formats I; EPO, Enlarged Board of Appeal Opinion G 3/08 of May 12, Programs for computers, supra, div Page 5 of 20

6 ^ EPO, decision T 935/97 of February 4, Computer Program Product, supra, divs 6.2. to 6.4 of the reasons. 15. ^ BGH, decision X ZB 15/67 of March 27, Rote Taube. 16. ^ BGH, decision X ZB 23/74 of June 22, 1976 Dispositionsprogramm. 17. ^ BGH, decision X ZR 43/91 of February 4, 1992 Tauchcomputer. 18. ^ BGH, decision X ZB 13/88 of June 1981 Seitenpuffer; decision X ZB 20/03 of May 24, elektronischer Zahlungsverkehr. 19. ^ BGH, decision X ZR 43/91 of February 4, 1992 Tauchcomputer; decision X ZB 11/98 of December 13, 1999 Logikverifikation ; decision X ZB 20/03 of May 24, elektronischer Zahlungsverkehr. 20. ^ BGH, decision X ZB 22/07 of January 20, Steuerungseinrichtung für Untersuchungsmodalitäten. 21. ^ BGH, decision Xa ZB 20/08 of April 22, Dynamische Dokumentengenerierung; decision X ZB 15/98 of May 11, 2000 Sprachanalyseeinrichtung; decision X ZB 22/07 of January 20, Steuerungseinrichtung für Untersuchungsmodalitäten. 22. ^ BGH, decision X ZB 11/98 of December 13, 1999 Logikverifikation. 23. ^ See, for example, BGH, decision X ZB 22/07 of January 20, 2009 Steuerungseinrichtung für Untersuchungsmodalitäten; decision Xa ZB 20/08 of April 22, 2010 Dynamische Dokumentengenerierung, Headnote a); decision X ZR 121/09 of February 24, 2011 Webseitenanzeige, Headnote b). 24. ^ BGH, decision X ZB 16/00 of October 17, Suche fehlerhafter Zeichenketten. 25. ^ BGH, decision X ZB 22/07 of January 20, Steuerungseinrichtung für Untersuchungsmodalitäten. 26. ^ BGH, decision X ZB 20/03 of May 24, elektronischer Zahlungsverkehr. 27. ^ BPatG, decision 17 W (pat) 14/99 of April 9, 2002 Geschäftliche Tätigkeit. 28. ^ Cf. EPO, decision T 641/00 of September 26, 2002 Comvik. 29. ^ EPO, decision T 154/04 of November 15, 2006 Estimating Sales Activity/DUNS LICENSING ASSOCIATES. 30. ^ BGH, decision X ZR 110/13 of August 25, 2015 Entsperrbild. 31. ^ EPO, decision T 756/06 of April 18, 2008 Displaying a schedule/fujitsu, div 5 of the reasons. 32. ^ EPO, decision T 931/95 of September 8, 2000 Controlling pension benefits system. 33. ^ EPO, decision T 935/97 of February 4, Computer Program Product, supra, divs 6.2. and 6.3 of the reasons. 34. ^ BGH, decision X ZR 47/07 of October 26, Wiedergabe topografischer Informationen. 4 Please briefly describe the general patentability requirements under the case law or judicial or administrative practice of your jurisdiction which are specifically relevant for the examination of the patentability of CII. 1 (1) PatG and Article 52 (1) EPC define the general patentability requirements of a technical invention, which in particular is not subject matter listed in Art. 52 (2) EPC/ 1 (3) PatG as such, - See answer to question 3 as to details. Page 6 of 20

7 novelty - This requirement rarely matters in practice, as the additional requirement of inventive step needs to be assessed as well, except in cases of Art. 54(3) EPC (unpublished European patent applications that form prior art for the assessment of novelty). inventive step, - See answer to question 3 as to details. industrial applicability, - As in other fields of technology, this requirement is virtually always fulfilled. 5.a Exclusion of non-patentable subject matter per se. Do the statutory provisions, case law or judicial or administrative practice (hereinafter collectively referred to as Law / Practice) in your jurisdiction exclude any particular subject matter relating to CII from patentability per se? In this context, per se means that the non-patentable subject matter is identified without any implicit or explicit examination of the contribution to the state of the art the claimed CII makes. If yes, please answer questions 5.b-5.e, if no, please go to question 6.a Preliminary remark The study questions use the term contribution in two ways. First, they refer to a contribution to the technical character of the invention (see, for example, recital 16, see also recitals 25 and 26). Second, they refer to a contribution to the state of the art (see, for example, recital 17). Subsequently, contribution to the technical character is considered to mean the entirety of features that are technical in themselves or that, either alone or in combination with other features, bring about a technical effect. Contribution to the state of the art is considered to mean a combination of features which, as a whole, is not known from the prior art, whereas individual features of this combination may be known from the prior art. Accordingly, a technical contribution to the state of the art is considered to mean a combination of all technical and non-technical features that determine or influence the solution of one or more technical problems by technical means, which is not known from the prior art, whereas individual features of this combination may be known from the prior art. [1] In particular, a contribution to the state of the art or a technical contribution to the state of the art is not considered to be limited to those features that are not comprised in the prior art or, as the case may be, in the closest prior art. Contribution from an area of human endeavour is considered to mean that the claimed invention comprises one or more features that are in the area of human endeavour in question or contribute to an effect in said area. As set out in the answers to questions 2 and 3, both according to the PatG and the EPC patents are only granted for technical subject matter. Furthermore, an invention is not patent eligible, if it relates to subject matter listed in Art. 52 (2) EPC/ 1 (3) PatG as such. The assessment of whether the invention has technical character and whether it comes under the exclusions of Art. 52 (2) EPC/ 1 (3) PatG is made without reference to the prior art, as it relates to intrinsic properties of the invention, which do not depend on the time when the invention was made or the patent application was filed. The existing legal provisions do not define the term invention, but merely provide a non-exhaustive list of subject matter that is not deemed to constitute an invention to the extent it is claimed as such, including, but not limited to schemes, rules and methods for [ ] doing business, and programs for computers and presentation of information. Page 7 of 20

8 Traditionally, and as also set out in the case law, [1] a field of technology in the sense of patent law is characterized in that it (exclusively) relies on natural sciences,[2] especially physics, chemistry and biology, and their applications, for example, electrical engineering, mechanical engineering or biotechnology. Accordingly, one may consider the exclusions of Art. 52 (2) EPC/ 1 (3) PatG as listing abstract creations, lacking in technical character.[3] As set out in more detail in the answer to question 3, the requirement that the claimed subject matter has technical character and that it is not excluded from patentability under Art. 52 (2) and (3) EPC or 1 (3) and (4) PatG forms one of two hurdles in the examination of patentability that are specific for computer-implemented inventions. The requirement of an inventive step forms the second hurdle. As mentioned in the answer to question 3, the technical character also matters in the assessment of inventive step. This second hurdle, however, involves an assessment of the prior art and, accordingly, is not pertinent to this question. The first hurdle is treated differently under German and European jurisdiction. As described in the answer to question 3. (subdiv b)), while the EPO does not assess the requirements of technical character and the exclusion of Art 52 (2) EPC separately, the German case law distinguishes between the general requirement of technical character ( 1 (1) PatG) and the exclusion of the above mentioned subject matter referred to in 1 (3) No. 3, 4 PatG.[4] 1. ^ See, for example, EPO, decision T 935/97 of February 4, Computer Program Product, div 5.1 of the reasons. 2. ^ See, for example, BGH, decision X ZB 15/67 of March 27, Rote Taube; decision X ZB 1/15 of June 30, 2015 Flugzeugzustand. 3. ^ EPO, decision T 935/97 of February 4, Computer Program Product, supra, div 5.2 of the reasons. 4. ^ BGH, decision X ZB 16/00 of October 17, Suche fehlerhafter Zeichenketten; decision X ZB 20/03 of May 24, elektronischer Zahlungsverkehr; decision X ZB 33/03 of October 19, Anbieten interaktiver Hilfe; decision X ZB 34/03 of October 19, Rentabilitätsermittlung. 5.b Please describe the subject matter excluded from patentability per se and explain in detail how it is identified in practice Referring to the specific categories in Art. 52 (2) EPC, [1] the subject matter listed in Art. 52 (2) (a) EPC relates to abstract concepts or insights without an implementation or concrete application in a physical entity, although they are or can be, of course, an element of natural sciences. For example Newton s law of gravity, taken per se, is a scientific theory. However, using the law of gravity in a lift is technical subject matter. The duality of particle and wave in quantum physics is a discovery, but the use of the wave character of a particle in a device, e.g. in a SQUID, would be statutory subject matter. A method of filtering data by matrix operations is a mathematical method, a method of digital processing images in the form of a two-dimensional data array is statutory. [2] Thus, whereas discoveries, scientific theories and mathematical methods, taken per se, are abstract and do not change anything in the physical world, their use or application in a physical article or in a method involving physical entities usually determines the properties and the functions of the product or method and thus constitutes patentable subject matter. Aesthetic creations, listed in Art. 52 (b) EPC, are similarly excluded per se. However, a product designed in such a way that its physical properties render an aesthetic effect or a process creating a certain aesthetic effect by physical means are not excluded. [3] For example, the color green as such cannot be patented. However, a green paint having a certain composition causing the green color can be patented, as can be, in consequence, an article painted with this specific paint. Likewise, a projector projecting a picture to a screen is a technical subject matter and both the projector and the method of projecting the picture can be patented. However, a corresponding patent would not protect the reproduction of the image by any other means, e.g. by printing. Thus, the picture as such could not be patented, but only a specific technical way of reproducing it. Referring to Art. 52 (2) (c) EPC, schemes, rules and methods for performing mental acts, playing games or doing business are abstract concepts, like discoveries, scientific theories and mathematical methods. However, the difference is that they are usually not related to natural sciences or related technologies and hence usually they do not provide or imply any technical effect on a physical entity per se. Physical entities specifically adapted for such schemes, rules and methods may, however, be patentable. Playing chess is both a mental act and a method of playing a game. A chess computer, mimicking the mental acts of a chess player by a technical process or autonomously operating within the constraints of the rules of chess is, in principle, patentable. Likewise, playing a role game is excluded, whereas a game console allowing the user to play a role game is technical. The concept of manufacturing articles in a distributed fashion is not technical. A Page 8 of 20

9 manufacturing plant having a plurality of assembly lines implementing this concept to render a finished product by distributed manufacture of parts or elements on the various assembly lines is, of course, patentable subject matter. Turning to the exclusion of programs for computers, the exclusion from patentability of programs for computers means that the program is claimed as an abstract creation, lacking technical character. [4] Operating a computer according to a given computer program, however, is not a computer program, as a computer programmed to operate according to a computer program is not a computer program. [5] Likewise, a computer-readable medium carrying a program is a technical product and thus has technical character and is distinct from a program. [6] As set out in more detail in the answer to question 3 the decision T 935/97 - Computer Program Product [7] held that a program per se can be patented, if it has the potential to provide a further technical effect beyond the normal operation of a computer. This means that, differently from other subject matter listed in Art. 52 (2) EPC, according to this decision the computer program does not need to be implemented or employed in a physical device, e.g. a computer, or in a method, e.g. a method of operating a computer, but can actually be claimed per se, as the Board put it. Apparently, the Board recognized a distinction between a computer program as such (Art. 52 (3) EPC) and a computer program per se. Presentations of information are treated similar to aesthetic creations. In the case law, a distinction is made between the information content ( What is displayed? ) and the technical way of presenting the information ( How is it displayed? ). The latter is patentable, the former is not. [8] Consequently, the physical processes that cause the information to be apparent for a user can be patented, if they are new and inventive. For example, devices for presenting information, such as a TV screen, a beamer, an LED display etc., are all technical devices, although they are or can be used for the presentation of information. Prior to the era of LED television screens, the presentation of a given information by means of an LED screen would, of course, have been patentable (as a matter of course, no applicant in its right mind would limit the scope of protection to the display of a specific information). Today, this is, of course, no longer true. The reason is, however, not that this is excluded subject matter, but rather that presentation of information on an LED screen is a known and in fact standardized technology by now so that it is patently obvious how to present any given information by means of an LED screen. Assessing whether the subject matter listed in Art. 52 (2) EPC is indeed claimed as such and thus excluded from patentability or whether it is implemented and/or applied in a physical device or physical process, the EPO and the German Courts use different approaches. The EPO considers any subject matter that involves a physical entity as not coming under the exclusions of Art. 52 (2) EPC. A physical object may not only be a tangible object, but can also be a non-tangible object, such as an electromagnetic wave. In contrast, German courts hold that a claimed subject matter is not excluded under Art. 52 (2) EPC or the parallel provision of the PatG only if it solves a specific technical problem by technical means. This is similar to the problem solution approach used in the assessment of inventive step, but with one significant difference: The solution to the problem and/or the problem need not be new or inventive, but can be known or obvious in view of the prior art. For example, a television set solves the technical problem of creating a visual impression for a user by appropriately controlling e.g. a cathode ray tube or LED. The control method and, of course, the cathode ray tube or the LED are technical means to solve the problem. This does, however, apply irrespective of the fact that television sets based on CRT technology or LED technology have been known for a long time and cannot be patented for reasons of prior art. 1. ^ For the ease of discussion, reference will only be made to the EPC in this div, it being understood that the explanations in this div apply, of course, also to the identical provisions of the PatG. 2. ^ Cf. EPO, decision T 208/84 of July 15, 1986 Computer-related invention/vicom, which also provides a lucid discussion of the difference between a mathematical method and a technical process. 3. ^ Cf. BGH, decision Ia ZR 37/65 of May 18, Garagentor. 4. ^ Cf. EPO, decision T 935/97 of February 4, Computer Program Product, supra, div 5.2 of the reasons. 5. ^ Cf. EPO, decision T 424/03 of February 23,2006 Clipboard Formats I; decision T 931/95 of September 8, 2000 Controlling pension benefits system., EPO, Enlarged Board of Appeal Opinion G 3/08 of May 12, Programs for computers, div ^ Cf. EPO, decision T 424/03 of February 23,2006 Clipboard Formats I, supra. 7. ^ EPO, decision T 935/97 of February 4, Computer Program Product, supra. 8. ^ For example, EPO, decision T 1749/06 of February 24, 2010 Nokia, sec of the reasons. 5.c If there is any subject matter identified in a patent claim relating to CII that is excluded from patentability per se, is it possible to overcome a rejection of the patent claim by adding other subject matter to the claim? If yes, please answer questions 5.d-5.e, if no, please go to question 6.a Page 9 of 20

10 , it is generally possible to overcome a rejection based on excluded subject matter by amending the claim so that the amended claim fulfils the requirements for patentability outlined above, i.e. the amendment needs to overcome the exclusion from patentability as such. [1] Any such amendment of course also needs to fulfil the general requirements for amendments during prosecution or nullity proceedings. In particular, the amendment may not add subject matter that extends beyond the content of the application as filed or that extends the scope of protection the granted patent confers (Art. 138, 123 (2), (3) EPC / 21, 22 PatG). 1. ^ C.f., BGH, decision X ZR 47/07 of October 26, Wiedergabe topografischer Informationen, para. 48 et seq. 5.d Does the other subject matter need to have a certain quality, e.g. does it need to be inventive? No The other subject matter does not need to be inventive to overcome a rejection of the patent claim because of the exclusion from patentability per se. However, the subject matter of the claim as a whole has to be novel and inventive. As explained previously, according to the case law of the EPO, any technical feature can overcome the rejection. According to the case law of the German courts, only claim features that determine or at least influence the solution of a technical problem by technical means will be considered for this test. Therefore, in practice an essential question in proceedings before the EPO and the German courts is whether the amendment made to the claim relates to technical subject matter. German case law further requires that the features added by the amendment determine or at least influence the solution of a technical problem by technical means. In particular, it is not sufficient to add subject matter that only relates to the usual execution of software already mentioned in a claim on a computer, such as standard computer components (e.g. input/output devices, interfaces), or to only add further software elements that have no relevance for the solution of a technical problem. [1] 1. ^ From the German case law, see, for example, BPatG, decision 18 W (pat) 167/14 of August 31, 2016, ; decision 17 W (pat) 4/12 of March 19, e Can you describe the areas of human endeavour the other subject matter needs to relate to? If yes, please explain According to EPO practice, the other subject matter simply has to be any physical entity, including, but not limited to solid, liquid or gaseous substances, electromagnetic waves, elementary particles etc. It is important to note that a physical entity does not necessarily need to be mentioned, although this is the preferred way of overcoming the rejection. Rather, it is sufficient, that it is clear that such a physical entity is involved in the subject matter of the claim. According to German case law, one additionally needs to establish a technical problem to be solved. For example, if the claim merely claims a gaseous or liquid substance without any interrelation to other features of the claim, one would ask whether indeed a technical problem or any problem at all is solved. These are, however, exotic scenarios that rarely occur in practice and would usually be dealt with under aspects of clarity (cf. Art. 84 EPC). In most instances, a technical problem can always be formulated as obtaining a certain technical effect by applying a discovery, scientific theory or mathematical method (Art. 52 (2) a) EPC/ 1 (3) No. 1 PatG) or implementing subject matter listed in Art. 52 (2) b) to d) EPC/ 1 (3) No. 2 to No. 4 PatG by or in a technical device. However, it should be noted that German case law requires the solution of a specific technical problem. The case law does not explain what renders a problem specific. One may, however, assume that the courts believe that generic problems, such as the problem of implementing non-technical subject matter by technical means, should not be considered in this regard. Page 10 of 20

11 6.a Requirement of a contribution in a field of technology. Does the examination of the patentability of CII in your jurisdiction implicitly or explicitly involve an examination of the contribution the claimed CII makes to the state of the art (such examination may be part of a general patentability test or part of the novelty and inventive step/non-obviousness test)? If yes, please answer questions 6.b-6.d, if no, please go to question 7 Preliminary remark See the preliminary remarks to the answer to question 5a. Contribution to the technical character is considered to mean the entirety of features that are technical in themselves or, either alone or in combination with other features, bring about a technical effect. Contribution to the state of the art is considered to mean a combination of features which, as a whole, is not known from the prior art, whereas individual features of this combination may be known from the prior art. Technical contribution to the state of the art is considered to mean a combination of all technical and non-technical features that determine or influence the solution of one or more technical problems by technical means, which is not known from the prior art, whereas individual features of this combination may be known from the prior art. In particular, a contribution to the state of the art or a technical contribution to the state of the art is not considered to be limited to those features that are not comprised in the prior art or, as the case may be, in the closest prior art. and No: No: The contribution the CII makes to the state of the art as such is not decisive for determining whether or not the CII lies in a field of technology (Art. 52 (1) EPC and 1 (1) PatG), and thus relates to patentable matter. The claimed invention lies in a field of technology within the meaning of Art. 52 (1) EPC and 1 (1) PatG), if it includes technical means (regardless of whether these means, separate or in combination, are known from the state of the art). [1] As discussed in the previous divs, only technical inventions - i.e. rules for a technical activity - are eligible for protection by patents. [2] : Examination of inventive step of a claimed CII is limited to an examination of the technical contribution to the state of the art.[3] Features which do not contribute to the technical character of the invention are disregarded. 1. ^ EPO, decision T 258/03 of April 21, 2004 Hitachi. 2. ^ BGH, decision X ZB 10/74 of July 1, 1976 Kennungsscheibe. 3. ^ EPO, decision T 641/00 of September 26, 2002 Comvik; EPO, Enlarged Board of Appeal Opinion G 3/08 of May 12, Programs for computers. 6.b Does this test implicitly or explicitly involve excluding contributions from areas of human endeavour which are not deemed to be sources of patentable inventions? In other words, does patentability of CII implicitly or explicitly require a contribution from areas of human endeavour which are deemed to be sources of patentable inventions (e.g. engineering, natural sciences)? If yes, please explain. Both German case law and that of the EPO require a technical character of the claimed invention. The examination of inventive step of a claimed CII by the German case law and the EPO is limited to the technical contribution, as explained in detail in the answer to question 3 Page 11 of 20

12 (subdivs c) and d)). As mentioned, there are slight differences in determining which subject matter contained in the claim is subject to this examination and which may be excluded, although the result is usually similar. 6.c Does this test also implicitly or explicitly require that the relevant contribution the CII makes to the state of the art qualifies as inventive/non-obvious? This additional test may be integrated into the general inventive step / non-obviousness examination, or may be a stand-alone test. If yes, please explain. As set out in the preliminary remarks to question 6a, a contribution to the state of the art is considered to be a combination of all features that contribute to or influence a solution of a technical problem by technical means. Understood in this sense this contribution has to be new and inventive. Thus, it is not the contribution of the features different from the prior art that is examined, but the entire technical content of the patent claim, including those features that are known from the prior art. In the practice of the EPO, the CII passes the inventive step test if it provides a solution to an objective technical problem that neither could nor would have been found by a person skilled in the art. [1] In the German jurisprudence, only those features and instructions are considered in the examination of inventive step which determine or at least influence the solution of a technical problem by technical means. [2] As already explained, within the framework of the examination of inventive step, all features which do not contribute to the technical character of the invention are disregarded and only the resulting subset of features is examined as to inventive step. 1. ^ EPO, decision T 1/80 of April 6, 1981 Carbonless copying paper; decision T 20/81 of February 10, 1982 Aryloxybenzaldehydes ; decision T 24/81 of October 13, 1982 Metal refining. 2. ^ EPO, decision T 935/97 of February 4, Computer Program Product/IBM, supra, div 6.2 of the reasons. 6.d Is there an implicit or explicit consensus in your jurisdiction as to the areas of human endeavour which are accepted as sources of patentable CII? If yes, are these areas of human endeavour defined, and if so how? The areas of human endeavour which are accepted as sources of patentable CII are limited to inventions that relate to a technical field. As set out before, there is a fairly clear understanding that any phenomenon or entity in the physical world is technical. However, problems arise when it comes to inventions comprising non-technical features which, as it is termed in the case law, interact with the technical features of the claim. Depending on the area of human endeavour from which these non-technical features are taken, e.g. scientific theories, business methods, information, there is not always consensus whether the interaction of such features establishes technical character. In particular, physical processes corresponding to data processing steps in a claim, although acknowledged as technical in the decision T 935/97,[1] are frequently not considered when assessing inventive step. 1. ^ EPO, decision T 935/97 of February 4, Computer Program Product/IBM, supra, div 6.2 of the reasons. 7 Does the Law / Practice in your jurisdiction contain any specific claim drafting or other formal requirements which are applicable to CII, i.e. which deviate from the Law / Practice applicable to inventions which are not CII? If yes, please explain. No Page 12 of 20