INFORMATION FROM THE EPO
Notice from the European Patent Office dated 26 March 2002 concerning business methods1
PCT
It has become apparent in recent months that an ever increasing number of international applications for which the EPO is to act as International Searching Authority and International Preliminary Examining Authority relate primarily to methods of doing business2 and commonplace features relating to their technological implementation.
To avoid any doubt, the EPO wishes to remind applicants that pursuant to Rule 39.1(iii) PCT it 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 character.
Moreover, claims which merely specify commonplace features relating to the technological implementation of such methods will not be searched if the search examiner cannot establish any technical problem which might potentially have required an inventive step for it to be overcome. In other words, in such cases it is not possible to carry out a meaningful search into the state of the art (Article 17(2)(a) PCT).
In these cases either a declaration will be issued that no international search report will be established or, where appropriate, a partial search report only will be established pursuant to Article 17(2) PCT.
This may well have consequences for the procedure before the EPO as IPEA in view of the fact that claims relating to inventions for which no international search report has been established need not be the subject of international preliminary examination (Rule 66.1(e) PCT). Furthermore, the EPO is not required to carry out an international preliminary examination on an application if its subject-matter is a method of doing business (Rule 67.1(iii) PCT).
EPC
The EPO also wishes to remind applicants that methods of doing business per se are excluded from patentability pursuant to Article 52(2)(c) and (3) EPC. Claims of European patent applications which relate to such methods or merely specify commonplace features relating to the technological implementation of such methods will not be searched if the search examiner cannot establish any technical problem which might potentially have required an inventive step for it to be overcome. In other words, in such cases it is not possible to carry out a meaningful search into the state of the art. Neither a European nor a supplementary search report will then be established or, where appropriate, a partial search report only will be established pursuant to Rule 45 EPC.
1 Revised version of the publication in OJ EPO 2001, 482.
2 See also Notice from the President of the European Patent Office dated 26 November 2001 concerning limitation of the EPO's competence as a PCT authority, published in OJ EPO 2002, 52.