European Patent Office (EPO) - Patent Protection for Business Methods

Newsletters and Bulletins / February 2002 / European Patent Office

A decision of an EPO Appeal Board in the case of Controlling pension benefits system/PBS Partnership has been causing some comment. The application contained claims both to a method of controlling a pension benefits program by use of data processing means and apparatus for controlling a pension benefits system which comprised data processing means including a processor. Both types of claims were rejected. The method claims were rejected on the ground that all of the features of the claim were steps of processing and producing information having purely administrative, actuarial and/or financial character. The Board noted that "processing and producing such information are typical steps of business and economic methods". The European Patent Convention contains a specific prohibition on the patenting of business methods as such. The question, therefore, was whether the use of the data processing means meant that what was claimed was not a business method "as such" but something where there was an intrusion by technology. The Board stated:

The feature of using technical means for a purely non-technical purpose does not necessarily confer technical character to the individual steps of use or the method as a whole: in fact, any activity in the non-technical branches of human culture involves and uses, to a greater or lesser extent, technical means.

In the present case, the method did not go beyond a method of doing business and so was not patentable.

So far as the apparatus claims were concerned, these could be considered as being simply a scheme since the term "apparatus could be construed as meaning simply an organizational scheme". In the present context, however, it was clear that as a matter of construction, the apparatus involved suitably programmed computers. These had to be regarded as being outside the prohibition on patenting business methods. The board stated that:

An apparatus constituting a physical entity or concrete product suitable for performing or supporting an economic activity is an invention within the meaning of ... (the European Patent Convention).

However, the board maintained the view that for patentability an "invention must be of a technical nature". This requirement is relevant when considering the question of inventive step. According to the board:

The improvement envisaged by the invention ... is an essentially economic one, i.e. lies in the field of economy, which cannot contribute to inventive step. The regime of patentable subject matter is only entered with programming of a computer system for carrying out the invention. The assessment of inventive step has thus to be carried out from the point of view of a software developer or application programmer ...

In the present case the steps were defined functionally without defining any particular programming requirements and since application of computer systems in the economic sector was already a general phenomenon, it had to be concluded that the apparatus claimed lacked an inventive step.

February 2002 Index

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