EPO Boards of Appeal Case Law 2018 and 2019

Online publication date: 18.6.2020

BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2018 AND 2019

I. PATENTABILITY

A. Exceptions to patentability

1. Patentability of biological inventions

(Case Law of the Boards of Appeal, 9th ed. 2019 ("CLB"), I.B.3.3.2 a))

In G 3/19, under Art. 112(1)(b) EPC the President of the EPO referred the following points of law to the Enlarged Board of Appeal:

1. Having regard to Art. 164(2) EPC, can the meaning and scope of Art. 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?

2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to R. 28(2) EPC in conformity with Art. 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

On the admissibility of the referral, the President stated that there is conflicting case law with regard to the way boards of appeal have assessed the EPC rules which implement Art. 53 EPC under Art. 164(2) EPC. In particular, decision T 1063/18, where the board found that R. 28(2) EPC is in conflict with the meaning of Art. 53(b) EPC "as interpreted by the Enlarged Board of Appeal", differed from earlier case law. The President stated that in decision T 1063/18 the board assessed the conformity of R. 28(2) EPC, which implements Art. 53(b) EPC, in relation to an interpretation of said article in an earlier decision of the Enlarged Board of Appeal. The board thus equated law, i.e. "provisions of this Convention" within the meaning of Art. 164(2) EPC, with case law, i.e. the interpretation of Art. 53(b) EPC in an earlier decision of the Enlarged Board of Appeal. This approach differs from other decisions, such as T 315/03 (OJ EPO 2006, 15), T 272/95 (OJ EPO 1999, 590), G 2/07 (OJ EPO 2012, 130).

The President argued that question 1 should be answered in the affirmative, since pursuant to Art. 33(1)(c) EPC the Administrative Council is competent to amend the Implementing Regulations to the EPC. This competence covers the possibility to implement the articles of the Convention – including those related to substantive patentability requirements – by interpreting and clarifying their meaning and scope. Furthermore, Art. 164(2) EPC does not provide a basis to a priori exclude the Administrative Council's interpretation and implementation of Art. 53 EPC, because it deviates from an earlier interpretation of the Enlarged Board of Appeal. The Administrative Council is limited only by the hierarchy of laws laid down in Art. 164(2) EPC. In other words, the applicability of a rule adopted by the Administrative Council is limited to the extent that it conflicts with an article of the Convention.

However, under Art. 164(2) EPC the Administrative Council's power is not limited by an interpretation of the article in question in an earlier decision of the Enlarged Board of Appeal. This approach finds confirmation in decisions T 315/03, T 272/95, T 666/05 and T 1213/05.

The President argued that question 2 should also be answered in the affirmative, since having regard to Art. 164(2) EPC, R. 28(2) EPC is in conformity with Art. 53(b) EPC. In decisions G 2/12 (OJ EPO 2016, 27) and G 2/13 (OJ EPO 2016, 28) the Enlarged Board did not conclude or even imply that Art. 53(b) EPC itself explicitly acknowledges the patentability of plants (or plant material such as fruit) exclusively generated by an essentially biological process. It was only by reference to R. 27 EPC that the Enlarged Board considered that Art. 53(b) EPC was to be interpreted on account of a "rather wide notion of the patentability of biotechnological inventions concerning plant-related processes and products other than plant varieties".

As concerns Art. 53(b) EPC itself, the Enlarged Board acknowledged that it is open to different interpretations. R. 28(2) EPC is a permissible clarification of the meaning and scope of Art. 53(b) EPC. It is also in conformity with Art. 53(b) EPC which neither explicitly, nor when interpreted in accordance with established principles, precludes its application to plants and animals exclusively obtained by means of an essentially biological process via an implementing rule. Furthermore, legislative intent is one element to be taken into account in the interpretation of a provision and the EPC legislator's intention was to interpret Art. 53(b) EPC in line with the EU Biotechnology Directive.

It should also be taken into account that since the European Commission Notice was published in November 2016, all 38 contracting states of the European Patent Convention have declared that under their national law and practice the products (plants and animals) of essentially biological processes are excluded from patentability. These considerations further support the conclusion that, having regard to Art. 164(2) EPC, R. 28(2) EPC is in conformity with Art. 53(b) EPC.

Opinion G 3/19 was issued on 14 May 2020, see Annex 3.

2. Product claims for plants or plant material

(CLB, I.B.3.3.3)

In T 1063/18 the board decided that R. 28(2) EPC was in conflict with Art. 53(b) EPC, as interpreted by the Enlarged Board of Appeal in decisions G 2/12 (OJ EPO 2016, 27) and G 2/13 (OJ EPO 2016, 28). In accordance with Art. 164(2) EPC, the provisions of the Convention prevailed. The Enlarged Board in G 2/12 and G 2/13 had stated that applying the various methodical lines of interpretation to Art. 53(b) EPC pointed towards not extending the scope of the process exclusion to a product claim or product-by-process claim directed to plants or plant material. As secondary considerations, the Enlarged Board had also considered whether a dynamic interpretation of Art. 53(b) EPC was warranted and whether allowing the patentability of such a product claim rendered the exception to patentability of essentially biological processes for the production of plants meaningless. The Enlarged Board concluded that there was no legal justification for altering the understanding of Art. 53(b) EPC achieved by applying traditional means of interpretation. In the light of G 2/12 and G 2/13, the board did not agree with the reasoning of the examining division in the decision under appeal that R. 28(2) EPC constituted a "clarification of the scope of Article 53(b) EPC". Rather the meaning of this rule was in conflict with the meaning of Art. 53(b) EPC as interpreted by the EBA. While recognising the Administrative Council's power to lay down provisions concerning substantive law in the Implementing Regulations, the board also agreed with the finding in G 2/07 (OJ EPO 2012, 130) that the limits to the Administrative Council's law-making powers by means of the Implementing Regulations can be inferred from Art. 164(2) EPC. Moreover, the board concurred with the finding in T 39/93 (OJ EPO 1997, 134) that the meaning of an article of the EPC, on its true interpretation as established by a ruling of the Enlarged Board of Appeal, cannot be overturned by a newly drafted rule of the Implementing Regulations, the effect of which is to conflict with this interpretation. The interpretation of the Biotech Directive as put forward in the Notice of the European Commission on certain articles of Directive 98/44/EC was not seen as a relevant development because it had not been confirmed in a legally binding way. Considering whether an interpretation of Art. 53(b) EPC, different from that given in decisions G 2/12 and G 2/13, was necessary in view of Art. 31(3)(a) of the Vienna Convention on the Law of Treaties, the board concluded that neither the decision of the Administrative Council to adopt R. 28(2) EPC nor the Notice of the European Commission could be regarded as a subsequent agreement between the parties in the sense of the Vienna Convention.

3. Medical methods

3.1 "Treatment by surgery" in the case law since G 1/07

(CLB, I.B.4.3.4)

In T 2699/17 the application related to the guided expansion of an elastomeric material within the sulcus of a tooth. In this way, the gingiva was retracted from the tooth, such that an appropriate impression of the tooth could be obtained, which was then used in the manufacture of the crown restoration.

The board referred to T 1695/07 (point 6.3 of the Reasons) for a review of the understanding of what constituted a "treatment by surgery" within the meaning of Art. 53(c) EPC after G 1/07 (OJ EPO 2011, 134). The criteria as defined in G 1/07 and as summarised in T 1695/07 were then applied to the specific method claimed.

In the case at hand, the board held that minor injury of the epithelium could occur. However, the detailed evidence provided by the appellant demonstrated that periodontal attachment fibres were not violated, that an index of gingival irritation and inflammation increased after the retraction but returned to baseline levels within seven days, and that the periodontium was respected and the junctional epithelium remained intact.

It then had to be examined whether the method qualified as "substantial physical intervention on the body", i.e. whether the health risk was a substantial health risk within the meaning of G 1/07.

For that evaluation, different approaches have been suggested in the case law, namely, the "risk matrix" in decision T 663/02 and a "more abstract risk criterion" in decision T 1695/07 (see point 12.2.4 of the Reasons). As in T 1695/07 the "risk matrix" approach of T 663/02 was rejected with a view to its practical feasibility and the board followed the "more abstract risk criterion" approach, limiting the assessment to a more abstract basis, i.e. to the question "Is a certain health risk present?" and "Is it substantial?". For the specific method claimed, the board came to the conclusion that though certain health risks were present, these were at a level equal to those present in the methods which G 1/07 considered not to involve a substantial health risk.

Thus, the claimed method did not comprise or encompass an invasive step representing a substantial physical intervention on the body and did not entail a substantial health risk in the sense of G 1/07.

See also under chapter V.A.5.4 "Reimbursement of the appeal fee".

3.2 Apparatus claim – disguised method claim?

(CLB, I.B.4.3.4 c))

In T 1731/12 the invention concerned a device for the desynchronisation of the activity of pathologically active brain areas comprising means for stimulating brain regions.

Assessing whether the device was excluded from patentability under Art. 53(c) EPC, the board considered T 775/97. It had dealt with a claim for a new product made by a surgical step in the human body from two parts known individually. It had been decided there that a European patent could not be granted for a product defined by a construction that could be arrived at only by a surgical method step in a human or animal body.

It was generally accepted, and explained for instance in the Enlarged Board decisions dealing with medical methods (most recently in G 1/07, OJ EPO 2011, 134), that a single surgical step was sufficient for a multi-step method to be considered unpatentable. In T 775/97 that approach had been applied to particular products.

The board saw no reason to diverge from T 775/97. It agreed with the thinking that a product defined by a surgical step could not exist without it, and thus that the surgical step was part of the claimed product.

Moreover, the exclusion of such a product from patentability was not contrary to the second clause of Art. 53(c) EPC, which provided that products for use in therapeutic or surgical methods were patentable. Otherwise medical and veterinary practitioners' freedom would be limited, as also discussed for example in G 1/07.

The board saw a fundamental difference between the actions of "using" and "making" a product. Using patented subject-matter was generally allowed once that subject-matter had been duly purchased. To be allowed to make a patented product, by contrast, medical staff would need to purchase a licence for the process of making it; where that process involved a surgical or therapeutic method step, that would interfere precisely with the freedom of medical staff that the exclusion from patentability under Art. 53(c) EPC intended to protect.

There had never been any divergence from the case law established in T 775/97. Decisions citing T 775/97 in this regard (T 1695/07, T 1798/08) had concluded that the devices claimed in those cases were not excluded from patentability under Art. 53(c) EPC precisely because they were not arrived at by surgical steps.

A device defined by a feature that could be arrived at only by a surgical or therapeutic step was excluded from patentability under Art. 53(c) EPC (in line with T 775/97).

B. Novelty

1. Common general knowledge

1.1 Specialist journals as common general knowledge

(CLB, I.C.2.8.3)

In T 1727/14 the appellant (patent proprietor) had submitted documents D16 and D17 as evidence of the common general knowledge. D16 was a published European patent application and D17 an article published in a specialist journal. The board cited the boards' case law establishing that such documents were generally unsuitable as proof of the skilled person's common general knowledge, rejecting the appellant's argument that specialist journals were especially suitable as evidence of the relevant common general knowledge. For the purposes of patent law, common general knowledge was the knowledge the skilled person acquired from their training and professional experience, whereas specialist journals generally aimed to convey to the skilled person new information relevant for their job, i.e. things which normally had not yet – and indeed might never – become part of the common general knowledge. That did not mean that the content of a specialist journal could never serve as evidence of the common general knowledge. But it could not be inferred from the mere fact that something had been published in such a journal that it was part of that knowledge.

2. Availability to the public

2.1 Public prior use – internal structure or composition of a product

(CLB, I.C.3.2.4 d))

  dealt with the condition of reproducibility laid down in G 1/92 (OJ EPO 1993, 277). It could not be concluded that the skilled person was able to reproduce the product Rigidex®P450xHP60 without undue burden. In order to be part of the prior art pursuant to Art. 54(2) EPC, a public prior use must amount to an enabling disclosure (T 977/93, OJ EPO 2001, 84; T 370/02, T 2045/09, T 23/11 and T 301/94). It is generally known in the field of polymers that the nature of the catalyst system, the type of reacting system and the process conditions significantly affect the properties of the produced polymer. In the polymer field, in which products and compositions are often defined by means of parameters, the requirement of sufficiency of disclosure is analysed with particular care and the same criteria must apply to the reproducibility without undue burden of a product on the market. In order for the product to be state of the art, the question was whether or not the skilled person would have been in a position to prepare the product as such, i.e. a sample identical to Rigidex®P450xHP60 in all its properties (not only those specified in claim 1). This was however not shown by the appellant (opponent). On the contrary, the appellant stated that "what may be more difficult (if the catalyst used for the original product is not known) is obtaining the same mechanical properties as the Rigidex product".

In T 1409/16 the invention was a laundry composition. The appellant (opponent) alleged that the claimed composition lacked novelty inter alia because of the commercially available CMC product "Finnfix® BDA" used in the examples of documents D1 to D3. By fractionation of said Finnfix® BDA, the appellant had obtained a fraction F1 and it went on to argue that since claim 1 was formulated in an open manner ("comprising"), all the compositions of D1 to D3 containing Finnfix® BDA also comprised said fraction F1 and were, thus, novelty-destroying for the subject-matter of claim 1. The respondent (patent proprietor) alleged that the fact that Finnfix® BDA could be fractionated to obtain an artificially distributed sample of CMC falling within the ambit of claim 1 did not mean that such information had been made available to the public. The board regarded the fractionation of Finnfix® BDA as carried out by the appellant as a kind of reverse engineering based on hindsight and revealing a particular ("extrinsic" within the meaning of G 1/92, OJ EPO 1993, 277) property of the Finnfix® BDA. However, information revealed by following this procedure did not correspond to what could be considered to have been made available to the public by an analysis of the chemical composition of Finnfix® BDA within the meaning of G 1/92. Hence, the board concluded that none of D1 to D3 made available to the public a composition according to claim 1 as granted. See also chapter II.A.1. "Interpretation of ambiguous terms or confirmation of the text of a claim".

2.2 The concept of "the public" – public library

(CLB, I.C.3.3.4)

In T 1050/12 the question of availability to the public of meeting abstracts of presentations for a future conference published in a supplement to a regular volume of a scientific journal was disputed. There was corroborating evidence in the form of date-stamped copies for the dates of receipt and/or cataloguing, and the board had no reason to doubt the usual routines described by librarians in their declarations. On the contrary there was no evidence on file supporting the allegations of the respondent (patent proprietor) that the journal supplement was not to be disseminated freely. The board did not agree that the conclusions of T 834/09 contradicted the earlier jurisprudence and refused the respondent's request for referral to the Enlarged Board. The board considered that, regardless of whether or not the librarian is considered a member of the public (as was the issue in decision T 834/09), there was persuasive evidence that documents at issue were made available to the public before the priority date of the present patent.

2.3 Public availability of documents submitted for standardisation

(CLB, I.C.3.4.9)

Case T 2239/15 concerned the public availability of documents (D1/D2) produced during the drafting of standards documents in the framework of the MPEG standardisation processes. The examining division concluded that D1 and D2 formed part of the prior art. The board concurred with the view of the examining division that the subject-matter of claims 1, 18 and 19 was disclosed in both documents. The relevance of contents of D1 and D2 was not questioned but the applicant objected that both were confidential working documents which had been submitted to the MPEG working group by those MPEG members involved in the elaboration of a particular new standard. Various documents regarding the structure of the MPEG group, its working procedures and the conditions of accessibility to the documents it produced were submitted. The board stated that the question of the public availability of documents D1 and D2 was directly linked to the procedures of MPEG when elaborating new standards. The large amount of evidence available in the case in hand allowed for a deeper understanding of the structure and working procedures within MPEG, a Subcommittee of the joint ISO/IEC Technical Committee. The decision also described the kind of documents involved: draft documents ("input documents", also referred to as "m" documents), "output documents" (also referred to as "w" documents), as well as how MPEG committee members should treat documents. In the absence of an explicit confidentiality agreement, a bar of confidentiality could not be seen to have been in place in the case in hand. The working group was small enough to make the explicit signing of confidentiality agreements possible, if "absolute" confidentiality (to keep it strictly limited to this group of members present in the meetings) had been intended. MPEG did not take this route. In view of the collaborative nature of the development process and the consensus-building procedure inherent to MPEG, confidentiality could not be guaranteed. The appellant was not able to demonstrate that the MPEG system could guarantee, or even expect, confidentiality. On the contrary, all evidence pointed to a system designed to guarantee a certain "privacy" of its data while at the same time being sufficiently pragmatic and flexible to allow consultation with other parties in order for it satisfactorily to fulfil its mission (the general idea behind a standardisation body of trying to build a consensus around a standard by wide consultation with interested parties). As a result, D1 and D2 were publicly available at the filing date of the application and the subject-matter of claim 1 lacked novelty.

3. Determining the content of the relevant prior art

3.1 Taking implicit features into account

(CLB, I.C.4.3.)

The patent at issue in T 1456/14 was for a vacuum cleaner with a filter and its claim 1 was directed to the proportion of total length to area. That no total length was disclosed in the cited prior-art document D14 was, the board held, irrelevant for the purposes of assessing novelty if it could be demonstrated that it undoubtedly covered the claimed proportion nonetheless. To do so, it sufficed to show that even a smaller numerical value necessarily exceeded by the prior-art device would be in keeping with the claimed proportion, as this meant the prior-art document definitely had to encompass that proportion too. Whether a known device had an implicit (or even explicit) feature did not depend on whether or not the skilled person's attention was likely to be drawn to precisely that feature but on whether, from a purely objective perspective, it had to have that feature. For the criterion of "direct and unambiguous disclosure" to be met, it was not essential that the skilled person would realise the feature was included even without knowing about the patent. EPO departments were to examine disclosure with the eyes and understanding of the skilled person, but that did not mean they did not do so purposively, in full knowledge of the feature they were looking for. Such an approach did not amount to an impermissible consideration of equivalents.

4. Ascertaining differences

4.1 Functional features

(CLB, I.C.5.2.5)

The board in T 1931/14 decided that in the context of a method it is important to differentiate between different types of stated purpose, namely those that define the application or use of a method, and those that define an effect arising from the steps of the method. Where the stated purpose defines the specific application of the method, in fact it requires certain additional steps which are not implicit in the remaining features, and without which the claimed process would not achieve the stated purpose. On the other hand, where the purpose merely states a technical effect which inevitably arises when carrying out the other remaining steps of the claimed method and is thus inherent in those steps, such a technical effect has no limiting effect because it is not suitable for distinguishing the claimed method from a known one.

5. Chemical inventions and selection inventions

5.1 Achieving a higher degree of purity

(CLB, I.C.6.2.4)

In T 1085/13 the board decided that a claim defining a compound as having a certain purity lacks novelty over a prior-art disclosure describing the same compound only if the prior art discloses the claimed purity at least implicitly, for example by way of a method for preparing said compound, the method inevitably resulting in the purity as claimed. Such a claim, however, does not lack novelty if the disclosure of the prior art needs to be supplemented, for example by suitable (further) purification methods allowing the skilled person to arrive at the claimed purity. The question of whether such (further) purification methods for the prior-art compound are within the common general knowledge of those skilled in the art and, if applied, would result in the claimed purity, is not relevant to novelty, but is rather a matter to be considered in the assessment of inventive step. Further, the board was convinced that the rationale of T 990/96 (OJ EPO 1998, 489) and T 728/98 (OJ EPO 2001, 319) was not in line with G 2/88 (OJ EPO 1990, 93) and G 2/10 (OJ EPO 2012, 376).

6. First and second medical use – new therapeutic application based on the group of subjects to be treated

(CLB, I.C.7.2.4 b))

In T 694/16 the claim was directed to a food composition for prodromal dementia patients. The board held that for the therapeutic method to be carried out and the effect to be achieved, the skilled person must, in the first place, be able to identify patients that are in need of treatment and will benefit from the administration of the claimed composition. "Prodromal (dementia) patients" are subjects who, although not yet suffering from dementia, are bound to develop it. The patent defined "prodromal patients" as persons that display at least one, preferably at least two, of a specific list of criteria, which included in particular the presence of specific markers. Claim 1, however, did not mention those criteria; rather, it referred to unspecified "characteristics of a prodromal patient". The difficulty in identifying further characteristics was highlighted by the fact that the patent acknowledged that other manifestations, such as mild cognitive impairment, which could be observed before the onset of Alzheimer's disease, were not sufficient to consider a person to be a "prodromal patient". The board thus held that the patient group was insufficiently disclosed. It held that if a claim is directed to a known compound or composition for use in a therapeutic method of treatment or prevention of a disease, and the claim specifies that the subject to be treated displays a clearly defined and detectable marker, which is not displayed by all subjects affected by or likely to develop that disease, then the purposive selection of the patients displaying the marker for the specified treatment is a functional feature characterising the claim.

7. Second (or further) non-medical method – novelty criteria for product claims with purpose characteristics

(CLB, I.C.8.1.5)

In T 116/14 the board held it to be settled case law that an indication of a purpose in a device claim – a claim beginning, for instance, "device for" or "apparatus for" – had to be interpreted as meaning that the claimed device had indeed to be suitable for that purpose (see T 287/86, point 2.1 of the Reasons).

Thus a device's suitability for the purpose indicated had to arise from the interaction of its claimed features alone. It could not depend on features not claimed, even if they were not excluded because the claim's wording was open-ended - for example because it used expressions such as "comprising" and "containing". Otherwise, the claim would lack clarity.

This meant a citation could be considered to disclose a feature worded using an indication of purpose ("purpose feature") only if solely the interaction of the attributes of the device it described, as identified from the claimed features other than the purpose feature, gave rise to suitability for the indicated purpose.

C. Inventive step

1. Problem and solution approach

(CLB, I.D.2.)

According to the board in T 1761/12, the position that the problem and solution approach developed through the boards' case law did not allow for considering whether or not it was necessary to retain features not differing from the closest prior art was too formalistic. Over and above the lack of imagination widely attributed to the skilled person, this position also seemed to deny them the capacity to draw conclusions from information obtained directly from the prior art. The board held that the problem and solution approach involved analysing the steps the skilled person would have taken to solve the predefined objective technical problem, and nothing else. Any further reflection on whether the associated changes to the closest prior art identified in this analysis made sense had the effect, in practice, of adding the related aspects of other problems to the objective technical problem initially defined.

2. Determination of closest prior art in general

(CLB, I.D.3.1.)

In T 172/03 the board had held that the term "state of the art" in Art. 54 EPC 1973 should be understood as "state of technology", and that "everything" in Art. 54(2) EPC 1973 is to be understood as concerning the information which is relevant to a field of technology. It could hardly be assumed that the EPC envisaged the notional person skilled in the (technological) art would take notice of everything, in all fields of human culture and regardless of its informational character. However, the board in T 2101/12 considered that the interpretation of Art. 54(2) EPC given in T 172/03 was incorrect. According to the board in T 2101/12, the legislator would have used a different term if such meaning had indeed been intended. The wording of Art. 54(2) EPC is clear and requires no interpretation. Art. 54(2) EPC itself contains no limitation according to which a non-technical process, such as the signing of a contract at the notary's office, may not be considered state of the art.

3. Assessment of inventive step

3.1 Treatment of technical and non-technical features

(CLB, I.D.9.1.)

In T 2079/10 the application was concerned with an electronic control apparatus and method for controlling alarm systems of a cellular structure. The board held that a purely non-technical interpretation of the claim's subject-matter was not possible because both the input and output grids had to be considered. While the activation signals generated on the output side could also be used to control alarm systems based on monetary values, the physical sensor signals on the input side always produced technical parameters that had to be borne in mind when interpreting the claim's subject-matter.

In T 1082/13 the claims were directed to a computer-implemented method for applying tax legislation to a transaction. A calculation request was sent to an available server, while unavailable servers were skipped based on a "timeout". The board held that the assessment of technical character of a claim does not require a reference to the prior art following the established "whole contents approach".

A "timeout" condition claimed in general and broad terms that cover non-technical interpretations is in the domain of the non-technical person and part of the requirements specification given to the technical expert for implementation on a computer system. The "notional business person", as introduced in T 1463/11, is to be interpreted within the framework of the well-established COMVIK approach according to T 641/00 (OJ EPO 2003, 352). Consequently, the notional business person knows all about the business-related requirements specification and knows about the fact that such business-related concepts can be implemented on a computer system. The choice of where to do a calculation in a distributed system is not necessarily technical, but can also be driven by administrative considerations. What the notional business person does not know, however, is how exactly it can be implemented on a computer system. This is in the sphere of the technical expert and subject to the assessment of inventive step. When referring to prejudices, it has to be carefully analysed whether it is actually a technical prejudice or, in fact, a business prejudice (e.g. just a new way of organising a business transaction that goes against traditional ways of organising it).

In T 817/16 the application related to search engines. Its background section explained that, ideally, a search engine provided the user with the results most relevant to the user's query. Relevant documents were typically identified on the basis of a comparison of the search-query terms to the words contained in the documents and other factors such as the existence of links to or from the documents. The detailed description disclosed a number of techniques for scoring documents, which could be used to improve the search results returned in response to a search query. The claimed invention proposed scoring a document on the basis of "history data" that reflected the frequency at and the amount by which the content of the document changed over time. This history data was obtained by "monitoring signatures of the document".

On the question of a mixture of technical and non-technical subject-matter, the board held that assigning a score to a document based on the frequency and the amount of changes to the document was not a technical task, even if performed by a computer. The appellant had argued that providing good scores improved the search results returned by the search engine and that improved search results resulted in a reduction in the number of search queries, which amounted to a saving of resources. According to the board, a similar argument had been dealt with in decision T 306/10 in the context of recommendation engines. The board there had considered that a reduction in the number of search queries and the corresponding saving of resources did not qualify as a technical effect of the (improved) recommendations, as they depended on subjective choices made by the user. The board also referred to decision T 1741/08, where the argument was made that a chain of effects could not be used as evidence of a technical effect if one of the links between the effects was not of a technical nature. The board in the case in hand held that merely assigning a score to a document was not a technical effect even if the score is somehow based on the frequency and the amount of changes made to the document.

It held that the jurisprudence of the boards of appeal acknowledged the possibility that the design of particular non-technical method steps to be implemented on a computer had been motivated by technical considerations, in particular concerning the internal functioning of the computer, resulting in a specific technical effect being achieved when the method was run on the computer (T 258/03, OJ EPO 2004, 575, T 1358/09, T 2330/13). According to opinion G 3/08 (OJ EPO 2011, 10), such considerations would have to go beyond "merely" finding a computer algorithm to carry out some procedure. Mere algorithmic efficiency was generally not considered to be a technical effect (T 784/06, T 42/10, T 1370/11 and T 2418/12).

3.2 Problem and solution approach when applied to "mixed" inventions

(CLB, I.D.9.1.3)

In T 144/11 the board stated that what the board had held in T 1463/11 demonstrated that a careful analysis of which parts of a claimed feature involve a business requirement could help to resolve the grey area between technical and non-technical features. A corollary of this approach, and what is seen in practice, is that a problem of the type "implement the business requirement" will normally never lead to an allowable claim. Either the implementation will be obvious or have no technical effect, or if not, the implementation will have a technical effect that can be used to reformulate the problem essentially to "achieve the effect of the implementation". However, the implementation-type problem is just a starting point that might have to be modified when the implementation is considered. It helps when a technical problem is not apparent at the outset. Examining the business requirements like that and correctly establishing what is to be implemented ensures that all technical matter arising from the idea of the invention and its implementation is taken into account for inventive step. In the board's view, another constraint is that the technical skilled person must receive a complete description of the business requirement, or else he would not be able to implement it and should not be providing any input in the non-technical domain.

3.3 Mental activities based on data visualisation

(CLB, I.D.9.1.6 a))

In T 489/14 (OJ EPO 2019, A86) the invention related to a computer-implemented method, computer program and apparatus for simulating the movement of a pedestrian crowd through an environment. The modelling of pedestrian movement could be used to help design or modify a venue. The applicant argued that the claimed steps provided a technical effect beyond the implementation of the method on the computer. It invoked decision T 1227/05 (OJ EPO 2007, 574) and argued that modelling pedestrian crowd movement in an environment constituted an adequately defined technical purpose for a computer-implemented method. However, the board held that a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity. The board could not detect such a direct link in the process of calculating the trajectories of hypothetical pedestrians as they move through a modelled environment, as was claimed here. As to T 1227/05, the board saw an evident analogy with a method of testing – by simulation – a modelled circuit with respect to noise influences. Just as the simulation method claimed in T 1227/05 could be used to predict the performance of a designed circuit in the presence of noise before it is built, so too could the simulation method claimed here be used to predict the performance of a designed environment in the presence of pedestrians before it is constructed. However, the board was not fully convinced by the reasoning in T 1227/05. Since the board intended to deviate from decision T 1227/05 and since the case at hand required a decision to be taken on the patentability of simulation methods it decided to refer the following questions to the Enlarged Board of Appeal for decision:

1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation's implementation on a computer, if the computer-implemented simulation is claimed as such?

2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

The referral is pending as G 1/19.

3.4 Examples of lack of inventive step – selection from obvious alternatives

(CLB, I.D.9.19.10)

In T 1045/12 the appellant (applicant) argued that the solution to the objective technical problem taught by D3 was one of several, equally likely options and that the board had to provide a reason why the skilled person would have selected the claimed option. The board disagreed. The fact that there were other options had no bearing on the obviousness of one specific option. Furthermore, if all options were equally likely, then the invention merely resulted in an obvious and consequently non-inventive selection among a number of known possibilities.

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