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In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Of Technicalities and Fallacies

The recent Decision T 1670/07 will be of interest to anyone wishing to obtain patent protection for software run on a conventional computing platform, especially a mobile platform. In particular, this Decision concerns protecting software inventions where the contribution lies primarily in the provision of novel data, with routine programming techniques being used for the implementation of the invention.

The Applicant wished to protect software allowing a user to input a list of desired shopping items into a cellular phone, which then sends the list to a remote server where shops selling the desired shopping items are identified. The remote server then sends possible routes between the shops back to the cellular phone, which selects one of the desired routes based on a user profile. The Appeal Board ruled the contribution of the claimed invention over the state of the art related only to non-technical aspects, and accordingly could not contribute to inventive step.

This Decision is of interest for two reasons. The first reason is that it provides clear guidance on what may provide  relevant technical effect when the contribution of the invention is primarily in the provision of novel data. In the Board's opinion, there are two instances when such provision of novel data may involve an inventive step:

  • if the data is "about a technical process, regardless of the presence of a user or its subsequent use"; or

  • if the data is "applied directly to a technical process".

The second reason is the introduction of three new terms into the lexicon of EPO examination practice, each term debunking a common argument for technicality of a claimed invention. These terms can be summarised as follows:

  • the "technical leakage fallacy" - arguing that the inherent technicality of the implementation confers technical nature on the problem and solution;

  • the "broken technical chain fallacy" - arguing that a technical effect arises from the action of a user in response to the provision of the data; and

  • the "non-technical prejudice fallacy" - arguing that a technical effect arises because without knowledge of nontechnical aspects, a skilled person would not modify the prior art to arrive at the claimed invention.

We would not be surprised to see these terms used (and misused) in many examination reports over the coming years.

It is worthwhile emphasising that this Decision does not address a situation where it can be argued that the implementation involves a technical contribution beyond the nature of the data provided. In other words, a particularly good way of providing such data could still involve a technical solution to a technical problem, and accordingly be patentable.

Central to this Decision, as with most EPO Decisions in the field of computerimplemented inventions, is the concept of technicality. Through the case law of the Technical Boards of Appeal, the EPO has developed an approach to examining computer-implemented inventions in which the exclusion from patentability for a "computer program, as such" is almost meaningless, but to achieve an inventive step there must be a technical solution to a technical problem. The difficulty with this approach is that the judgment of what is and what is not "technical" is, at least to some extent, subjective. Perhaps this could be termed the "technical effect fallacy".