Some exclusions are more equal than others
The IPKat's friend Edward Tomlinson of Frohwitter has pointed out a thought-provoking recent decision from the EPO Technical Board of Appeal (T 0471/05).
The decision relates to whether a method of designing an optical system could be entitled to patent protection. The claimed method in application EP98932446.2 included designing the optical system according to particular mathematical conditions specified by an equation in an independent claim. The claim did not, however, specify that the optical system needed to be made, nor how the design was carried out.
The application was refused by the examining division, because the subject matter for which protection was sought was the mere design of an optical system and encompassed "purely abstract and conceptual implementations excluded from patent protection pursuant to Articles 52(1), (2) and (3) EPC" (reasons for the decision 2.1).
The applicant argued that the method involved "technical considerations" and, according to T 619/02, had technical character.
The Board disagreed with this, because there was a presupposition in T 619/02 that the subject matter for which protection is sought should relate, at least implicitly, to "a physical entity or a physical activity" (reasons, 2.2). Although the claimed invention could be carried out using some physical means or resulting in some physical manufacture of the design, the claimed method did not include any of this and was therefore not restricted to a non-excluded activity.
The applicant tried to get round this by submitting an amended claimed that specifically disclaimed excluded subject matter. Even if such a disclaimer were to be allowed without introducing subject matter not present in the application as-filed, the Board considered that the main objection still held, i.e. that the claim was not confined to physical technical implementations.
A second request, which added the step of "using an optics design program" in the Board's view,
"defines an activity involving inherently and necessarily the use of such hardware fed with the optics design program and the claimed design conditions, i.e. defines a physical, technical activity" (reasons 4.1).
This request therefore overcame the Board's objections under Articles 52(1), (2) and (3) EPC, and such a claim would be entitled to patent protection.
The Board then considered the novelty and inventive step of the claim, finding both to be satisfied, and therefore decided that a patent should be granted on the request with the computer program step.
The IPKat thinks that this decision illustrates very well the odd-seeming logic that occassionally prevails at the EPO Board level. Although the decision is on the face of it in line with previous similar decisions (notably T 0453/91, enthusiastically followed by Pumfrey J in Halliburton and Cappellini/Bloomberg), it does seem to take the reasoning to its extreme. A computer program is excluded from patentability as such, as we all know. However, running a computer program inevitably involves "technical" means, i.e. a computer (following at least the Hitachi decision, T 0258/03). This can therefore, according to the Board's decision in this case, 'ground' an otherwise excluded invention in a technical area and make it patentable.
Presumably this same reasoning would not apply to the other named exclusions under Article 52. Or would it? Could it also be argued that the presentation of information, for example, necessarily involves technical means, given that pen and paper is sufficient (according to the Hitachi decision) to provide "technicality"? How about doing business? Is it possible to do business without any technical means?
Merpel says she is worried about the EPO Board being in danger of getting run over on zebra crossings.