Technical implementation of excluded subject-matter 

In T 336/07 the board held that the mere fact that subject-matter (here rules for playing games), which is excluded per se under Art. 52(2)(c) EPC 1973, is technically implemented could not form the basis for inventive step. Inventive step can be based only on the particular manner of implementation of such subject matter. To this end it is therefore necessary to ask how the per se excluded subject matter was implemented. A consideration of the particular manner of implementation has to focus on any further technical advantages or effects associated with the specific features of implementation over and above the effects and advantages inherent in the excluded subject-matter (see also T 1543/06). The board concluded that the subject-matter of the claims did not involve an inventive step (on the technical implementation of game rules, see also T 1782/09 and T 1225/10). In these two decisions the board stated that "game rules" form part of "the regulatory framework agreed between [or with] players concerning conduct, conventions and conditions that are meaningful only in a gaming context. They govern the conduct and actions of the players during game play.

In T 1543/06 the board stated that it could not have been the legislator's purpose and intent on the one hand to exclude from patent protection excluded subject matter, while on the other hand awarding protection to a technical implementation thereof, where the only identifiable contribution of the claimed technical implementation to the state of the art is the excluded subject-matter itself. It was noted that here the term "contribution" encompasses both means (i.e. tangible features of the implementation) and effects resulting from the implementation. In that case, Art. 52(2) EPC would be reduced to a mere requirement as to form, easily circumvented. The board believed it was intended as substantive in nature, whatever considerations may have been the source of this exclusion at the time of its adoption. It followed that the mere technical implementation of excluded subject-matter per se could not form the basis for inventive step (see also T 1793/07). The board concluded that inventive step could be based only on the particular manner of implementation. To this end it was therefore necessary to ask how the per se excluded subject-matter (e.g. a game or business method) is implemented (T 859/07, T 414/12).

In the context of the problem-solution approach this can be rephrased as a fictional technical problem in which the per se excluded subject matter appears as an aim to be achieved, see T 641/00 (Headnote II). Where such excluded subject matter is novel such a formulation of the problem seemingly implies that such matter may be regarded as a given in the assessment of inventive step, which thus appears to depart from what is in fact a hidden starting point. The board viewed this fiction as an artefact of the systematic use of the problem-solution approach for assessing inventive step and the need to differentiate between excluded and non-excluded matter. This should not detract from the basic tenet that excluded subject-matter cannot form the sole basis for a patentable invention. A consideration of the particular manner of implementation must focus on any further technical advantages or effects associated with the specific features of implementation over and above the effects and advantages inherent in the excluded subject-matter (T 336/07). The latter are at best to be regarded as incidental to that implementation.

The board went on to state that the explicit requirement of a "further" technical effect was first formulated for computer-related inventions in decisions T 1173/97 (OJ 1999, 609) (see also T 935/97), but the same principle holds also for other categories of excluded subject-matter which may inherently possess some "technical" effect. In fact, inherent and arguably technical effects may be easily identified for practically all excluded subject-matter, for example such a simple one as reducing time when using or performing it. This is why it needs to be stressed that the "further" technical effect can not be the same one which is inherent in the excluded subject-matter itself (T 2449/10, T 1225/10, T 1547/09, T 1782/09, T 2127/09, T 1331/12). This consideration of the specific implementation must, moreover, be from the point of view of the relevant skilled person under Art. 56 EPC, who may be identified on the basis of the invention's technical character. This was analogous to the approach of T 928/03 (point 3.2 of the Reasons), which considered the actual contribution of each feature to the technical character by, for each feature, stripping away its non-technical content. Thus, "the extent to which the characterizing features contribute to the technical character ... in relation to the effects achieved by those features" had to be determined (T 1023/06, T 336/07 and T 859/07). The approach in T 1543/06 was based foremost on T 641/00 (OJ 2003, 352) (T 1331/12).

In T 1173/97 (OJ 1999, 609) the board held that a computer program product is not excluded from patentability under Art. 52(2) and (3) EPC 1973 if, when it is run on a computer, it produces a further technical effect which goes beyond the "normal" physical interactions between program (software) and computer (hardware)" (see point 9.4 of the Reasons). The board also held that, for the purpose of determining the extent of the exclusion under Art. 52(2) and (3) EPC 1973, the "further" technical effect could, in its opinion, be known in the prior art. Determining the technical contribution which 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 Art. 52(2) and (3) EPC (see also T 1461/12, T 556/14).

In T 1755/10 the board noted that in the light of Art. 52(1), (2) and (3) EPC, Art. 56 EPC 1973 requires a non-obvious technical contribution (see e.g. T 641/00, OJ 2003, 352; T 1784/06). However, non-technical aspects cannot meet that requirement. In the case at issue, as the overall goal of the claimed method (determining commissions) was not technical, the software concept could not derive any (further) technical character from that goal. In fact, the board judged that no "further" technical effect was present at all. The board made it clear that, in the absence of any other potential "further" technical effect, the mere use of a specific software solution did not amount to a technical implementation (which would have to be considered in the inventive step examination). It held that the frequent general argument that modified software causes a modified behaviour of the computer and should for that very reason (eo ipso) be considered as a technical implementation means was insufficient. Hence, a "software implementation fallacy" might be added to a pertinent gallery established recently by the board (see T 1670/07). The board also held that even a more specific program structure within the data model did not constitute a technical implementation by itself as the alleged technical effect was limited to the general observation that modified software results in a modified operation of the computer. This was just another way of saying that software interacts with hardware and thus was not sufficient to establish a "further" technical effect. Consequently, even the more specific programming structure did not enter into the examination for an inventive step.

In T 928/03 the board stated that in applying the Comvik approach in a fair manner, its purpose must be borne in mind: on the one hand, the approach is to make sure that non-technical aspects do not support a finding of inventiveness; on the other hand, actual contributions to the technical character by any feature of an invention must be taken into account when assessing inventive step. In this context, a game rule constraint has to be distinguished carefully from its technical implementation (T 1461/12).

In T 1834/10 the board held that the combination of two types of non-inventions (presentation of information, computer program) is not enough to define a technical contribution (T 1755/10, "software implementation fallacy").

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