6.6. Pläne, Regeln und Verfahren für gedankliche Tätigkeiten, für Spiele oder für geschäftliche Tätigkeiten

In T 425/24 the claimed invention concerned a method for optimising a work cycle in a robot system comprising at least two manipulators with a common work area. The examining division had found that the subject-matter of claim 1 of the main request and auxiliary request 1 was excluded from patentability as it related to a method of performing mental acts (Art. 52(2)(c) EPC). The examining division reasoned that the method steps of claim 1 could be carried out exclusively mentally.

The appellant had argued that the description as filed clearly set out that the use of a computer was an "overriding requirement" of the claim as defined by decisions T 416/87 and T 717/98, so that the method did have a technical implementation due to the use of a computer.

The board however agreed with the examining division that claim 1 of the main request was excluded from patentability. As the examining division noted, it is established case law that if a method may be exclusively carried out mentally, i.e. if it is not confined only to a technical implementation, then it is not entitled to patent protection under the EPC (see CLB, 11th ed. 2025, I.A.6.6.2).

In decisions T 416/87 and T 717/98, referred to by the appellant, it was reasoned that if features are indicated in the description to be of overriding importance, they must be read into the claim, for the purposes of claim interpretation. The board however was of the view that these decisions were not relevant here because any conclusion on overriding importance has to be determined according to the circumstances of the specific case and neither of the two cases cited deals with exclusions to patentability.

In the present case a computer is not an overriding requirement, in simple cases the method steps can certainly be carried out purely mentally. The board noted further that even complexity of a solution may not necessarily be a bar to a finding that a method consists of performing mental acts, see for example decision T 914/02. If an appellant has no intention of seeking protection for purely mental implementations, then the technical implementation means should be included in the claim (see T 914/02).

The board held that the appellant had not convincingly demonstrated that the decision under appeal was incorrect on this point.

On auxiliary request 1 the examining division had found that the amendment made to claim 1 of auxiliary request 1 did not overcome the issue relating to the main request. The appellant had argued that the introduction of the feature "each of the at least two manipulators is allowed to operate only within that part of the common work area that is allocated to the respective manipulator" required technical means as it required control of the manipulators. This meant that the "work area division" could not be a purely mental idea. The board disagreed since this understanding of the newly introduced feature presupposes that a work cycle was actually implemented. Claim 1 of auxiliary request 1 however only required that cycle times are calculated, not that any cycle is in fact carried out. It is possible to mentally divide a layout into two areas, creating a work area division and then calculate cycle times. The appellant had therefore not convincingly demonstrated that the decision under appeal was incorrect on this point.

Claim 1 of auxiliary request 2 differed from claim 1 of auxiliary request 1 in that the feature "wherein the step of defining the layout (150) and/or the step of defining the work area division is executed by a computer" was introduced. The board held that this step now required technical means and the claim as a whole was no longer excluded from patentability under Art. 52 EPC.