6.6.2 Methods for performing mental acts

The use of technical means for carrying out a method for performing mental acts, partly or entirely without human intervention, might, having regard to Art. 52(3) EPC 1973, render such a method a technical process or method and therefore an invention within the meaning of Art. 52(1) EPC 1973 (T 38/86, OJ 1990, 384; see also T 258/03, OJ 2004, 575).

In T 2720/16, the board held that an activity was purely mental if it was performed entirely by the human brain. As soon as it manifested itself physically outside the brain, it lost its purely mental character. It did not matter whether this physical dimension to the activity was performed using a body part (eye, hand, etc.) or separate mechanical devices.

In T 471/05 the board pointed out that claim 1 merely formulated a series of mathematical and optical abstract concepts without properly requiring a physical, technical implementation. It followed that the subject-matter for which protection is sought was the mere "design" of an optical system and encompassed purely abstract and conceptual implementations excluded from patent protection pursuant to Art. 52(1), (2) and (3) EPC 1973. More particularly, the claimed method could be carried out as a purely mental act or as a purely mathematical design algorithm and, consequently, encompassed embodiments falling within the category of methods for performing mental acts as such and within the category of mathematical methods as such both expressly excluded from patent protection under Art. 52(2)(a) and (c) EPC 1973 in conjunction with Art. 52(3) EPC 1973.

The board stated that the criteria for technical character of a claimed invention discussed in decision T 619/02 (OJ 2007, 63) implicitly presupposed that the claimed subject-matter defining the matter for which protection is sought related to a physical entity or a physical activity. It could not be denied that the method defined in claim 1 of the main request could be carried out using some physical means and that such implementations of the claimed method constitute physical, technical activities not excluded from patent protection (see for instance decisions T 914/02, and T 258/03, OJ 2004, 575). Nonetheless, contrary to the appellant's contention, the claimed method did not require the use of technical means and the method was not restricted to physical, technical implementations, and the fact that the claimed method encompassed non-excluded implementations such as those mentioned above did not overcome the fact that the claimed method also encompassed excluded subject-matter (T 914/02, and T 388/04, OJ 2007, 16; see also T 453/91, T 930/05). Thus, as long as the claimed design method was not confined to physical, technical implementations, the claimed subject-matter encompassed embodiments excluded from patentability under Art. 52(1) to (3) EPC 1973 and was not entitled to patent protection under the EPC. The board also stated that the mere presence in the claim of such purely conceptual technical considerations did not overcome the conclusion above that the claim merely formulated a sequence of mathematical and optical concepts without properly requiring a technical or even a physical implementation. In particular, a purely mental implementation of the claimed method remains a mental act as such within the meaning of Art. 52(2) and (3) EPC 1973 even if the mental act involves conceptual technical considerations as already concluded in decision T 914/02 in which a method claim involving technical considerations and encompassing technical embodiments was refused on the grounds that the invention as claimed could still be exclusively performed by purely mental acts. In view of the above the subject-matter defined in claim 1 of the main request was excluded from patent protection under Art. 52(1), (2) and (3) EPC 1973.

In T 603/89 (OJ 1992, 230) the invention consisted of an apparatus for and a method forlearning how to play a keyboard instrument, where numbers corresponding to notes on a sheet of music also appeared on the keys. The technical feature claimed was the marking of the keys. Patentability was ruled out by Art. 52(2)(c) and (d) EPC 1973. Since the key markings were merely known technical features, the contribution made by the claimed invention to the working of the teaching apparatus lay solely in the content of the information displayed, not in the apparatus itself. The invention was not based on a technical problem, but on an improvement to a teaching method, which was equivalent to an improvement to a method for performing mental acts.

The invention at issue in T 547/14 concerned a method for predicting the formation of mould on an object, for an example a building component. The examining division had found that there was nothing to distinguish the features of claim 1, which related to an experimental determination of biological germination conditions for moulds, from a purely intellectual activity, because the experimental determination was not specified in technical terms and could be performed by purely cognitive observation. The board disagreed: if the biological germination conditions were determined experimentally, experiments had to be carried out and that meant having to use technical means; if they were determined using a computer, its use as a technical means similarly rendered the subject-matter technical. For the purpose of establishing whether the claimed method had technical character, it did not matter what details the application gave as to how the claimed experimental determination was technically implemented. That was instead a matter to be considered when assessing whether the invention could be carried out.

In T 670/19 the claim concerned a scale system for clinical assessment of the lips and mouth area comprising a lip fullness scale comprising illustrations of the mouth area. The board held that the invention did not relate to purely abstract subject-matter and did have a technical character. The presence of a concrete physical medium, such as a board or a screen, carrying the illustrations was implied. The implicit presence of a physical medium conferred technical character to at least part of the subject-matter of the claim and this regardless of a possibly non-technical nature of the cognitive content of the illustrations carried by or displayed on the physical medium "per se".

In T 1465/22 The board held that while at least some of the method steps of claim 1 might be carried out manually, this did not lead to these method steps being "schemes, rules and methods for performing mental acts" as set out in Art. 52(2)(c) EPC. A method for performing mental acts requires that the method be performed entirely within the human brain. As the respondent (patent proprietor) argued, the features of claim 1 inter alia of "inserting, extracting, transferring, juxtaposing and capping" could not be considered to be purely mental acts. They required concrete handling of containers, nests, a transport tub, a substance, a stopper and a cap. It could not be seen how any of these steps could possibly be achieved purely through mental activity. The appellant's further argument that a user might not actually carry out the steps of the method, as the method steps were merely instructions, was not convincing either. The board noted that claims to methods were clearly allowed under the EPC (G 2/88). Any method claim requires that the steps are indeed carried out (whether manually, automatically or in a combination of both) and not just given to a user as instructions, otherwise the user would not be working within the scope of the claim.