TY - JOUR
AU - Steinbrener, Stefan V
AB - The author Stefan V. Steinbrener, a senior consultant at Bardehle Pagenberg (Munich), is the former Chairman of EPO Board of Appeal 3.5.01 and member of the Enlarged Board of Appeal of the European Patent Office. The article reflects the author's personal views. This article In Part 1 of this article, we have set out the basic principles and methodology governing the approach of the EPO to patent eligibility under Article 52(2) and (3) EPC, analysing its links to patentability, especially in relation to inventive step. Reviewing the case law of the EPO Boards of Appeal, we have compiled a whitelist of positive cases that illustrate the conditions at which subject matter potentially falling under the provisions mentioned above can be patented. We resume our analysis from the last ‘non-invention’ mentioned in Article 52(2)(c) EPC: computer programs. 2.3 [continued] Non-inventions under Article 52(2)(c) EPC: programs for computers Programs for computers The digital revolution has affected all fields of technology, with the consequence that technical solutions increasingly rely on software involvement, either to control technical products or processes or to control the computer itself. In Part 1 of the article, we have already encountered several examples of technologies involving computer programs. Further, we have observed that the patentability of computer programs depends on their nature or purpose, that is, whether they contribute to the technical solution of a technical problem. The mere fact that they are conceived to run on a computer will not suffice. They must provide a ‘further’ technical effect. Although the EPC does not define what a computer program is, more recent jurisprudence of the Boards has shed some light on the issue. In particular, pursuant to T 424/03, computer programs must be distinguished from computer-implemented methods: The claim category of a computer-implemented method is distinguished from that of a computer program. Even though a method, in particular a method of operating a computer, may be put into practice with the help of a computer program, a claim relating to such a method does not claim a computer program in the category of a computer program (point 5.1 of the reasons).1 This finding has been confirmed by Board 3.4.03 in decision T 494/07: Claim 20 relates to a method of programming a currency tester. The claimed method therefore involves technical means, namely a currency tester, and is therefore regarded to have technical character (see the decision T 258/03 of the Boards of Appeal, reasons 4). In particular, the claimed method involves the step of storing data in a currency tester, with the effect that the data are in fact stored in the currency tester once the step has been carried out. This is to be contrasted to a sequence of computer-executable instructions, i.e. a computer program, which merely have the potential of achieving an effect when loaded into and executed by a computer. Thus, the claim category of the claimed method is distinguished from that of a computer program.2 In the following sections, we discuss various examples of patentable inventions that relied on a software contribution. Controlling the internal functioning of a computer In case T 424/03, the application sought, in addition to the conventional text clipboard format, to increase the number of data formats usable to transfer data from a source (eg a first window, document or the like) to a destination (eg a second window, document or the like) via the clipboard of a data processing system or via a drag-and-drop operation which uses clipboard formats as part of an object linking and embedding (OLE) protocol. The solution consisted generally in providing expanded clipboard formats. A specific embodiment was a file contents clipboard format (CF_FILECONTENTS) that allowed ‘data that is not a file’ to be transferred in such a way that the data was finally encapsulated into a file. The Board held: Claim 1 relates to a method implemented in a computer system. T 258/03 - Auction method/Hitachi (OJ EPO 2004, 575) states that a method using technical means is an invention within the meaning of Article 52(1) EPC. A computer system including a memory (clipboard) is a technical means, and consequently the claimed method has technical character in accordance with established case law.3 The Board also considered the claimed method steps to contribute to the technical character of the invention: These steps solve a technical problem by technical means in that functional data structures (clipboard formats) are used independently of any cognitive content (see T 1194/97 - Data structure product/Philips; OJ EPO 2000, 525) in order to enhance the internal operation of a computer system with a view to facilitating the exchange of data among various application programs. The claimed steps thus provide a general purpose computer with a further functionality: the computer assists the user in transferring non-file data into files. 5.3 Claim 5 is directed to a computer-readable medium having computer-executable instructions (i.e. a computer program) on it to cause the computer system to perform the claimed method. The subject-matter of claim 5 has technical character since it relates to a computer-readable medium, i.e. a technical product involving a carrier (see decision T 258/03 - Auction method/Hitachi cited above). Moreover, the computer-executable instructions have the potential of achieving the above-mentioned further technical effect of enhancing the internal operation of the computer, which goes beyond the elementary interaction of any hardware and software of data processing (see T 1173/97—Computer program product/IBM; OJ EPO 1999, 609). The computer program recorded on the medium is therefore not considered to be a computer program as such, and thus also contributes to the technical character of the claimed subject-matter.4 Case T 121/06 related to a ‘garbage collector’, that is, a computer program used to release memory allocations which are not required by the current application program. It could be part of a computer’s operating system. The program checked the pointers in use and identified the objects to which they were pointing: these objects are needed and should not be released, whereas all other objects can be released. Some pointers were ‘interior’, meaning that they did not point to the start of an object but to a location within it. For interior pointers, it was necessary to identify the memory block containing the location pointed at. This was done by building and searching a dynamic tree whose nodes represented the size and the location of every memory allocation. The tree provided the data necessary to link the interior pointer to the associated memory block without requiring a particular memory layout or an additional pointer referring to the start of the memory block. With respect to the patentability of the different categories claimed, the Board held: Claim 9 is to a garbage collector, which is a computer program. According to decision T 1173/97, point 13 (OJ EPO 1999, 609), a computer program is not a program as such (cf. Article 52(2),(3) EPC) if it is capable of achieving a ‘further’ technical effect. The Board holds that the garbage collector of claim 9 achieves a ‘further’ technical effect since it serves to free memory space which would otherwise be unnecessarily blocked and hence modifies the internal functioning of the computer itself. This goes beyond the ‘normal’ technical effects, i.e. the physical interactions between computer program and computer memory which any program involves. The same applies to the operating system of (dependent) claim 17 and the Java virtual machine of (dependent) claim 25. 10. The data carrier of claim 21 is an invention within the meaning of Article 52(1) EPC for the double reason of being a technical object and comprising a computer program capable of achieving a ‘further’ technical effect (cf. the preceding paragraph). 11. The data stream representative of an operating system of claim 22 is also an invention within the meaning of Article 52(1). A computer program stored on a disc is a data file, and when the file is read out and transmitted it becomes a data stream in the form of an (electrical) signal. A signal, albeit transient, can be patentable if claimed in terms which inherently comprise the technical features of the system in which it occurs (see, in respect of a TV signal, decision T 163/85, OJ EPO 1990, 379). It is therefore logical also to allow a claim to a data stream representative of a patentable computer program.5 Case T 2217/08 concerned a computer-implemented method of detecting code-free files. Detection of code-free files is advantageous, as such files pose a greatly reduced security risk for users of email, instant messaging, Internet browsing and other applications. Where a file is known to be code-free, there is a higher likelihood that malicious ‘virus’ software is not present. The claimed method concerned parsing an input file with a compound parser configured to include a plurality of component parsers, wherein each component parser was configured to recognize a specific file format; the compound parser was configured to allow its extension through the addition of new component parsers. The claimed subject matter inter alia differed from the closest prior art in that parsing comprised the step of parsing said input file with all the component parsers, with the parsing continuing even if a component parser had already recognized said file format (feature ‘a’). In respect of this feature, the Board held: An issue debated in these appeal proceedings has been whether difference feature ‘a’ has technical character and can thus contribute to inventive step; see, for example, T 0154/04 (‘DUNS’, OJ EPO 2008, 046), reasons, point 5(F). In the annex to the summons to oral proceedings the Board took the view that parsing per se did not necessarily rely on technical considerations or have technical effects and thus expressed doubts as to whether feature ‘a’ had technical character. In response the appellant has now restricted claim 1 by adding the feature ‘c’ that the input file is only stored if no executable code has been found in the input file. The storage of the input file is a technical step which has a further technical effect and thus lends technical character to the parsing steps leading to it. Hence feature ‘a’ can contribute to inventive step.6 Distributed systems A method of load distribution to assign a server from amongst a plurality of servers connected through a network to a plurality of clients for the execution of a processing request from one of said clients was considered in case T 318/10, already discussed in the context of mathematical methods. The Board held that the mathematical formulation of the optimization function used in a load distribution method in a computer network resulted in a change in the resource consumption of the server system, which was a technical effect.7 Case T 435/11 dealt with a method for copying data elements from a source database of a source system to a target database of a target system to update information stored in the target database with data from the source database. The background section of the application explained that mobile computing devices generally store information in a local database and that it might be necessary to update this information by copying subsets of data held in a central database on a different system to the local database. However, a user might have made modifications to the information stored in the local database and might not want to lose those modifications. The application therefore proposed a system that allowed users of computing devices to control the copying of information between computing systems. As the main request was not considered inventive by the Board, the appellant included limitations in an auxiliary request, corresponding to a manual selection of data items at the source system. The Board decided to remit the case to the Examining Division for further examination of inventive step, however did not raise any objections on its technical character.8 In case T 1568/05, it was well known in the field of distributed file systems that files should be stored safely by preventing access by non-authorized users, and that encryption is a way to achieve that goal. At the same time, file duplication (ie redundant files) should be minimized to reduce the amount of wasted storage space. Hence, there was a need for a method which allowed files to be encrypted in such a way that files having identical contents could be recognized as such without revealing their encryption keys. To solve this problem, the application basically taught a rule for choosing a key with which to encrypt a user’s file. The rule was simple and the same for every user but did not allow any user to know other users’ keys, namely: generate a hash value of the file and use the hash value as a key to encrypt the file. Since identical plain text files produced identical hash values (ie identical keys) and, thus, identical cipher texts, their plain text contents were most likely to be identical. The Board acknowledged the technical character of the method because the method uses technical means (a computing device) for a technical purpose in a distributed file system, see decision T 258/03-Auction method/HITACHI (OJ EPO 2004, 575). A technical effect consists not only in the encryption of files but also in an efficient verification and identification of encrypted files in the distributed file system. 4.2 The computer-executable instructions according to claim 38 have the potential for achieving the aforementioned technical effect which goes beyond the elementary general interaction between software and hardware. Already for that reason, the computer readable medium according to claim 38 constitutes an invention within the meaning of Article 52(1) EPC, see decision T 1173/97-Computer program product/IBM (OJ EPO 1999, 609). In addition, a computer readable data carrier is a technical object irrespective of the data stored on it, see decision T 424/03-Clipboard formats I/MICROSOFT (point 5.3 of the reasons).9 Data retrieval/database technology A claim directed to a computer-executable file search method comprising computer-executed steps was at issue in case T 1351/04. The method required that the file to be searched be structured as records containing fields forming different hierarchical levels. First, an index file was created. This file contained nodes in a tree structure which were used for searching for key character strings. At each node, there was so-called management information, which included information about the starting position and the number of corresponding records in the file to be searched. This information permitted the desired records to be retrieved directly when the node having the desired key character string had been found. When only keys of high-level nodes were used, it was not necessary to follow the tree structure all the way down to the leaf nodes in order to retrieve the desired record information. The claimed method required the use of a computer. It had therefore technical character and constituted an invention within the meaning of Article 52(1) EPC. To assess inventive step, the first step was to consider how the features of the claim contributed to the solution of a technical problem. The data searched could be of any kind, for example, of a commercial nature as in the described embodiment, thus with no technical relevance per se. They were stored as records having specific ‘start positions’, that is, memory addresses in the file to be searched. The computer read these addresses in the form of ‘management information’ in the index file and retrieved the associated data from the file to be searched. The management information thus controlled the computer by directing it to a certain memory location. Functional data, intended for controlling a technical device, were normally regarded as having technical character. The Board therefore concluded that the management information contained in the present claims should be regarded as contributing to the technical character of the search method. The technical effect was the control of the computer along the path leading to the desired data. The path itself, which was determined by the search strategy as reflected by the management information, had technical character for the same reason. Obviously, the choice of path would determine the searching characteristics, such as speed, which could constitute an additional indication of technicality. Claim 1 was directed to a computer-executable index file creation method. It contained no searching steps. The question was whether the features of claim 1 contributed to technical character in the same way as the file search method. The Board held that ‘[a]n index file containing management information to be used for searching a file is a technical means since it determines the way the computer searches information, which is a technical task. A computer-executable method of creating such an index file can therefore be regarded as a method of manufacturing a technical means, also having technical character.’10 In case T 779/11, Board 3.5.07 had to evaluate a system facilitating the retrieval of related non-opinion legal documents in response to queries for legal opinions. The system comprised a server coupled to the following databases: a ‘subscriber’ database containing authentication credentials for a plurality of subscribers to an online legal research service; a ‘caselaw’ database containing a plurality of judicial decision documents; and a database containing a plurality of litigation documents associated with at least one judicial decision. Although the Board agreed with the Examining Division that the features defining the cognitive meaning of the documents in the second and third databases (‘judicial decision documents’ and ‘litigation documents’) were non-technical, this was less evident for the feature specifying that the first ‘subscriber’ database contained ‘authentication credentials for a plurality of subscribers’. It was, however, notorious that access control to online services might be implemented using ‘authentication credentials’ such as usernames and passwords and that such information was stored in a suitable database. The Board did, however, not agree with the Examining Division that the claimed enumeration of first, second and third databases, each database containing a different collection of data, implied no technical features but was merely of a conceptual nature. Although the term ‘database’ is broad and in certain contexts might even denote non-technical collections of data (see, eg, decision T 154/04, OJ EPO 2008, 46, reasons 21), in the context of a computer system it is a technical entity—in its broadest form, a particular data storage area—and three distinct databases were, consequently, found to be three distinct technical entities. The case was remitted by the Board as an auxiliary request (adding to claim 1, inter alia, a ‘relationship database’ that ‘related’ judicial decision documents to litigation documents) needed additional search.11 A data retrieval system and a corresponding method were claimed in case T 2328/10, the system comprising a server, a database storing physiological data (faces, voices, etc), means for presenting the data to a user and means for measuring a physiological parameter (heartbeat, muscle contraction, etc) of the user. In order to facilitate the recognition of an individual (eg an aggressor) by the user (eg a victim), related data were presented to the user if a variation of the physiological parameter above a certain threshold was detected. The Examining Division refused the application for lack of technical character. The Board, however, found that the claimed search method was carried out on a computer database, thus excluding a search in a paper encyclopedia, the technical character of which might be objected to. Furthermore, measuring a physiological parameter of the user and comparing the measured value to a threshold value also added to the technical character of the claimed method. In fact, the measurement of a physiological parameter and its comparison with a threshold implied the use of technical means attributing to the parameter a numerical value on a scale of possible parameter values, which would not be obtained by eye observation of a human operator. Hence, the Board confirmed the patentability of the claimed subject matter under Article 52(1) EPC.12 In case T 209/08, protection was sought for an apparatus which permitted the input and storage of data defining pathological conditions identified in a medical image in the form of simple formulae. In the given context of a computer implementation, the data structures based on the disclosed coding and reporting method could be regarded as involving technical considerations achieving a technical effect inasmuch as they provided a more compact form of data storage and obviated the need to interact with a digitized medical image when inputting a diagnostic report. The diagnostic finding data of the prior art could only be interpreted in a meaningful manner by reference to the associated digital image and this required the digital image data to be stored and presented in association with the diagnostic finding data. The claimed apparatus relied on the input and storage of diagnostic findings in the format disclosed in the examples of the application. The data entered and stored in this format were not explicitly linked to the coordinate system of the medical image (angiogram) under review and did not even require that this medical image be available in digital format. Although the encoding of the diagnostic findings could, in principle, be carried out using conventional database structures, the Board was persuaded by the appellant’s submissions that, in the given context, coding the diagnostic findings in the manner specified in claim 1 involved more than merely a difference in cognitive information content over the prior art. A technical aspect came into play because the claimed apparatus permitted a diagnostic report to be recorded, stored and processed independently of the medical image data to which it was related. In contrast to the prior art, a person entering a diagnostic report using the claimed apparatus was not required to interact with a digital image in order to select an image coordinate associated with each diagnostic finding. Moreover, in the context of a computer-based implementation, insofar as the data format used for recording the report was independent of the medical image data, the apparatus provided a more compact and flexible way of storing diagnostic reports such that they could be entered, stored, transmitted, presented and analysed separately from medical image data. The Board noted that: whereas the format of the ‘formulae’ of the diagnostic reporting method disclosed on p.7, l.25–30 of the application represents a logical syntax for data structures and, as such, has an abstract and intellectual character, the appellant’s request does not seek protection for the disclosed ‘formulae’ as such. Claim 1 is directed towards an apparatus which employs data structures based on said ‘formulae’. The Board judges that, in the given context, the purposive use of such data structures in the claimed apparatus has technical implications with respect to the entry, storage and processing of the diagnostic.13 The application underlying case T 2055/08 addressed the problem of providing a versioned and referenced collection of digital objects (the ‘learning objects’) free from version conflicts, that is, free from inconsistencies. This was achieved by providing the referencing objects with metadata defining references to the referenced objects and using the metadata to solve version conflicts by propagating them from the referencing to the referenced objects. The Examining Division considered that the method of claim 1 was composed of technical and non-technical features. In particular, it found that the method was an ‘administrative method’, which did not go beyond an abstract concept of managing objects and references between them, that was implemented on a general purpose networked computer system and a database used for data processing and data exchange. As the technical and non-technical features did not interact with each other to alter the technical character of the claimed subject matter, the ‘administrative method’ could be used in the formulation of the problem to be solved as a requirements specification which required the skilled person to implement the ‘administrative method’, that is, to write the corresponding program code, for the general purpose networked computer system. This activity was considered not to involve an inventive step. Once again, the Board did not share the Examining Division’s assessment, for the following reasons. The application addressed a technical problem, the internal consistency of a data structure for the purposes of a specific application (in this case an electronic learning system), and solved it by technical means, that is, by using metadata for detecting references to a learning object in more than one version. Metadata were ‘data over data’. However, this did not deprive them from having technical character when used for purposes involving technical considerations. Thus, the use of metadata for resolving version conflicts in a collection of digital objects involved technical considerations. Hence the objective technical problem was seen by the Board to lie in the improvement of the flexibility for developing new learning courses by reusing existing learning objects while avoiding version conflicts arising by referencing the same learning object in more than one version. This was achieved by providing a local repository in which a course developer could use existing versions of learning objects and combine them at will, thereby improving the flexibility of course development. In particular, several local repositories could be used in parallel. Compliance with two conflict rules when creating or deleting versions of existing learning objects kept the local repository free from version conflicts. Checking-in each learning object with all recursively referenced learning objects assured that the learning objects in the master repository did not reference any other learning object in more than one version, keeping the master repository free from version conflicts. For these reasons, the Board was satisfied that the method of claim 1 involved an inventive step within the meaning of Article 56 EPC 1973. Since the computer program product of claim 3 and the electronic learning system of claim 4 implemented the method of claim 1, they involved an inventive step for the same reasons.14 Controlling various fields of technology In case T 979/06, a computer program was claimed, comprising computer program code means adapted to perform when run on a computer, all the steps of a method of reducing luminance flicker in a video image sequence comprising a plurality of video images produced by a camera. The Board examined whether the subject matter of claims 11 and 12 had a technical character, finding that the reduction of luminance flicker was a ‘further technical effect’ (see T 1173/97, point 9.4).15 Similarly, a claim directed to a computer-readable medium having a computer-readable program embodied therein was not considered to be excluded from patentability by Board 3.4.03 in case T 874/02. The program contained a set of computer instructions that, when run on a substrate processing apparatus as specified, directed the apparatus to carry out a process for depositing a halogen-doped silicon oxide layer on a substrate in a substrate processing chamber. Thus, following T 1173/97, the computer program produced a further technical effect going beyond the normal physical interactions between program and computer, and was therefore not excluded from patentability.16 An analogous finding was given by Board 3.5.03 in case T 9/03. The invention related to the wireless transmission of data using TDMA (Time Division Multiple Access). The transmitter could use different modulation schemes in different slots, depending on reception quality, and could assign multiple slots to a single user, in order to accommodate higher data transmission rates than could be achieved using only one slot. The new and inventive feature provided that the modulation scheme was determined independently for each time slot assigned to a user. The effect was that plural time slots assigned to a user might use different modulation schemes. With respect to program claim 12, the Board found that it showed the required further technical effect.17 Case T 197/11 concerned a method and apparatus for determining the road toll payable by a vehicle. The claimed apparatus of the appellant’s main request was distinguished from the closest prior art in that: it determined the distance travelled by the vehicle; the distances between predetermined vehicle positions were determined from a mileage database; and the information transmitted to a remote location included the determined distance. The Board was of the opinion that all three of the distinguishing features identified above involved both technical and non-technical considerations. The first concerned the basis of the toll charge, the selection of which was purely administrative or commercial in nature. The second non-technical aspect related to the information transmitted to the remote location, which might be a legal or administrative requirement. In the light of these conclusions, the technical problem addressed by the claimed invention was limited to the implementation of the prior art system in such a manner as to provide a toll charge based on distance travelled and to provide the required information on distance travelled to the remote location. In the Board’s opinion, the absence of any further technical effect arising from the transmission of the distance travelled to the remote location was emphasized by the fact that the claim did not define what was to be done with that data at the remote location. The Board therefore held that the subject matter of claim 1 of the appellant’s main request did not involve an inventive step in accordance with Article 56 EPC. The situation was, however, judged differently for an amended claim 1 of an auxiliary request, inter alia defining that a vehicle position grid was contained in the memory, that each cell of that grid was associated with a predetermined vehicle position, and that the step of automatically determining the distance travelled made use of a table. The method carried out by the apparatus now operated by initially associating each cell in the stored position grid with one of the predetermined vehicle positions, so that, while the vehicle was in motion and position fixes were being taken, the processor merely had to determine which cell of the position grid the latest position fix fell within, and the information stored in the memory then directly linked that cell to a predetermined vehicle position by means of the stored association information. Thus, by avoiding the need to compare the position fix to each of the predetermined vehicle positions, the claimed apparatus significantly simplified the calculations which had to be carried out in real-time during the journey. The apparatus of the claim could thus be seen as addressing the technical problem of reducing the complexity of the processor required in the apparatus. Moreover, the Board considered that the available prior art would not render the claimed solution obvious to the skilled person, so that the subject matter of the claim involved an inventive step. In light of these arguments, the point raised by one of the respondents that the problem addressed by the claimed invention reduced to an obvious software problem, was not considered convincing by the Board, since the claimed invention clearly involved technical considerations leading to a technical effect.18 In case T 1339/11, a surgical console useable in both actual surgical procedures and simulated surgical procedures was claimed. The invention differed from the prior art in allowing the console to be used in a simulated surgical procedure and to provide feedback on the user performance. The objective problem to be solved was accordingly formulated as providing a surgical console that could be used to generate realistic surgical situations to enable training of inexperienced surgeons and surgical room personnel. Absent any suggestion in the prior art to use a surgical console provided for actual surgical procedures and adapt it to also be useable in simulated surgical procedures, there was nothing prompting the skilled person to arrive at the claimed invention. Moreover, in the Board’s judgement the prior art did not disclose that the processing module (computer module) was adapted to evaluate the operator’s performance of the simulated training surgical procedure by providing feedback via the user interface informing the user of differences between his or her actual performance of the training surgical procedure and a desired performance. Accordingly, having regard to the available state of the art, the subject matter of claim 1 was not obvious to a person skilled in the art and, thus, involved an inventive step (Article 56 EPC 1973). Finally, the Board noted that the computer program claimed was technical as it served to control a technical piece of equipment (surgical console). The fact that the computer program was stored on technical means (computer-readable medium) rendered it all the more technical. Accordingly, the subject matter of claims 15 and 16 was not excluded from patentability under Article 52(2)(c) and (3) EPC.19 Case T 398/10 dealt with a method, a corresponding device and a computer-readable medium for digital rights management (DRM). Such systems limit what users can do with digital content or, depending on perspective, enable users to use content (only) in certain ways. This is primarily in the interest of the digital content providers and could be a nuisance for users, for example, when it hinders free exchange of purchased content on and between devices of the user’s home network. The application was concerned with the balance between the interests of the content providers and the users. The invention basically proposed that a user of a given device should be allowed to use content acquired by another user provided that and as long as the latter had enabled this sharing by an explicit action such as logging on to the device. The Board tended to consider the choice of a DRM policy as a non-technical issue which ipso facto could, according to established case law of the Boards of Appeal, appear in the formulation of the technical problem to be solved. However, as amended in accordance with an auxiliary request, the claimed subject matter did not merely implement the policy that all registered users at the device could share content amongst themselves. Rather, any holder of a right retained some control over whether and when it wanted to share its content with other users. The claimed subject matter thus provided a simple and secure manner in which users of a device could share digital content—that is, without the need to transfer rights between users and without affecting the separation between user accounts—while, at the same time, retaining some control about the use of their content. The provision of such a control mechanism by which users could actively enter or leave a sharing ‘state’ went beyond a mere policy issue and solved the problem with technical means.20 A device for determining the franking value to be used for the setting of a franking machine was considered in case T 113/02. After finding that the claimed menu structure for switching between the menus for the different input modes was not obvious from the prior art, the Board noted in respect of Article 52(2) and (3) EPC that the menu structure did not depend on the cognitive contents of the menus and thus was not a presentation of information. Since it was also overriding the programming of the menus, it wasn’t a computer program ‘as such’. Rather, the underlying menu structure relied on superordinate technical considerations in the sense of T 769/92, because it aimed at a versatile and efficient input of information in the device for improving its operability. It thus made a contribution in a technical field that was not excluded from patentability by Article 52(2) and (3) EPC, namely controlling the technical function of a device at the proprietor’s option by virtue of his inputs.21 2.4 Non-inventions under Article 52(2)(d) EPC: presentations of information The EPC does not give a definition of ‘presentations of information’ and the meaning of the term has not been explained in the travaux préparatoires to the Convention.22 Is the term limited to its cognitive information content or does it also embrace the way the content is presented? For the time being, this type of non-inventions seems to be exposed to pronounced differences in the interpretation of technicality among the Boards. It is therefore useful to familiarize with the approach of the competent Board in each individual case. It should be kept in mind that any of the non-inventions excluded ‘as such’ may contribute to the technical solution of a technical problem and thus cannot be ignored in the assessment of patentability. This also holds true for presentations of information, which, in modern implementations such as graphical user interfaces, make use of software-controlled displays and visualizations regularly involving human perception phenomena. If any human interaction with visualizations in a technical environment were to be excluded, ‘presentations of information’ would fall out of the general treatment of non-inventions pursuant to Article 52(2) and (3) EPC, in that technical applications of this type of non-invention would simply not be possible, contrary to the ‘as such’ restriction: ‘[i]nformation-related features of a patent claim should be examined as to whether the information to be reproduced concurrently presents itself as an embodiment of technical means of the solution which have not been specified in the claim otherwise. In this case, such technical means of the solution have to be taken into account in the examination of patentability.’23 Despite the existing divergences, positive decisions have been given by the Boards in various fields of technology. Managing images, objects, icons In case T 643/00, an image processing apparatus for searching an image for output, and a corresponding method, had been claimed. The Board considered the claimed invention to be the result of the idea to make the searching process easier to the (human) user, who conventionally had to comb the images one by one on the display at a high resolution in order to select a particular image for output. This goal was achieved by arranging a plurality of images in a side-by-side manner at a low resolution and providing for hierarchical display at higher resolutions so that a comprehensive survey, as well as a fast check for details, were possible. Starting from the closest prior art, the objective technical problem solved was seen in providing a technical tool for efficient search, retrieval and evaluation of images stored in an image processing apparatus. The Board held: Although in the present case human activities are involved in solving this problem, which activities may relate to the information contents of images looked for and may be motivated by personal interests and/or other non-technical preferences, the Board considers the claimed features relating to the format of images displayed, not to be presentation of information as such. 16. It is true that non-technical aspects may be found in the design and the use of an interface through which the user interacts with a system (see decision T 244/00-Remote-control/MATSUSHITA, not published in OJ EPO). Indeed, presenting information through a user interface, if the only relevant effect of the presentation relates to the visually attractive nature of the graphic design or artwork, does not have technical character. However, in its decision the Board has not excluded that an arrangement of menu items (or images) on a screen may be determined by technical considerations. Such considerations may aim at enabling the user to manage a technical task, such as searching and retrieving images stored in an image processing apparatus, in a more efficient or faster manner, even if an evaluation by the user on a mental level is involved. Although such evaluation per se does not fall within the meaning of ‘invention’ pursuant to Article 52 EPC, the mere fact that mental activities are involved does not necessarily qualify subject matter as non-technical since any technical solutions in the end aim at providing tools which serve, assist or replace human activities of different kinds, including mental ones.24 The Board concluded that the claimed invention did not relate to mere aspects of art design, like a pleasant look or feeling, nor to the mere information content of images presented, but to the organization of an overall image structure in view of a technical problem. In case T 862/10, Board 3.5.06 distinguished its approach from that taken in T 643/00. The invention related to a notification system comprising an information display object that presented summarized notifications. The system differed from the prior art in that: the information display object was dynamically moved closer to the user’s focus of visual attention if a notification was determined to be urgent, and the user’s focus of visual attention was determined by at least one of determining the current cursor position, determining the place of an active cursor, using at least one head or gaze tracking component, using an attention model and determining the user’s activity or other input about focus of visual attention including gaze and pose information. In the Board’s view, feature (1) needed to be analysed in more detail: The display of an object near the center of visual attention of a user (within the ‘foveal vision’), so that it is more-or-less guaranteed to be seen immediately, or its display simply within the visual field of the user, so that it can be seen, may well be seen as technical effects as compared to arbitrary placement on the screen or on one of a plurality of screens. Thus measures to assess where the user is looking and to place a display object in the light of that assessment do qualify as contributing to a technical effect. However, the Board notes that in the case of one screen it is a matter of experience that the whole screen is normally within the field of vision of the user. Further, displaying a value assigned to an object by means of its relative positioning, or by moving it on the screen, is clearly a presentation of information. … The particular effects of the claimed invention put forward by the appellant, ‘minimising information overload and distraction’, can not be considered technical in nature according to the case law, being determined by psychological factors and typical to the question of how to present information in a particular context. Overall the Board judges that determining (or attempting to determine) a user’s visual focus of attention as a point on a screen and displaying objects in positions relative to that point can be considered to have a technical effect, but that the particular choice of where to display an object dependent on a value assigned to that object (its ‘urgency’) cannot be.25 The Board also found that the only effect that could possibly be caused by a continuous movement of the display object was to attract the attention of the person looking at the display and let him know that a certain message is urgent. It might also imply a time limit for reacting (before the object reaches the focus of attention). However, this was only a presentation of information; the application did not disclose any technical consequences for reacting or not within this implied time limit. It therefore produced no further technical effect and did not contribute to the presence of an inventive step. The case was, however, remitted to the Examining Division on the basis of an auxiliary request replacing feature (2) with: (3) the information display object was configured to employ sound localization methods to localize an audio signal associated with the display object in a position at or near the location of the physical rendering of the display object. The patentability of a graphical user interface on a portable device had to be reviewed by Board 3.5.05 in case T 781/10. The device displayed menu icons and a focus located on a menu icon. A background screen comprised an image in front of which the menu icons were displayed. The claimed invention differed from the prior art in that the background screen management unit was configured to change a view point of the background screen, when the focus was moved, in accordance with a direction in which the focus was moved. The Board considered the underlying objective technical problem to be to increase the user’s awareness of the currently selected menu hierarchy, and thereby to achieve a more effective man–machine interface. It agreed with the appellant that the management screen background unit specified in claim 1 constituted a technical feature. The solution according to claim 1 was considered to provide a technical contribution over the teaching of the prior art, because an emphasizing effect enhancing the precision of the input device was achieved by displaying background screen changes in accordance with the direction in which the focus was moved. This effect involved technical considerations. It was therefore achieved by a different incentive, provided by technical means, in addition to a size change of the icon as defined in the preamble of claim 1. In the Board’s judgment, and contrary to the decision under appeal, this went beyond a mere presentation of information according to Article 52(2)(d) EPC.26 A specific icon design for the display of a mobile phone, which provided the icon with a three-dimensional appearance, was claimed in case T 1749/06. The Examining Division had refused the application because the claim described the cognitive information of the icon which did not have an effect on the normal function of the computer-readable medium, since the image data was stored in a standard format and did not include functional data. The arrangement of light and dark stripes as specified in the claim provided a three-dimensional effect using a two-dimensional display. These images would indeed be perceived by the viewer as causing a three-dimensional impression. The effect, however, depended only on the perception of the viewer (‘happens in the brain of the viewer’) and thus related to presentation of information. In the Board’s opinion, presentation of information arose only when ‘what was displayed’ was claimed without specifying ‘how it was displayed’. Claim 1 comprised the feature of an icon formed of dark and white stripes having a three-dimensional effect, but did not comprise the icon’s cognitive content, that is, its specific shape. The latter feature—the icon representing, for example, a butterfly—was a presentation of information, but not the former. Hence, the Board found that the claimed features did not fall under the category of presentation of information. The Board was further of the view that the test ‘happens in the brain of the viewer’, invoked by the Examining Division, was not useful for deciding whether a feature contributed to the technical character of a claim. Inventions such as the cinematograph were based on an effect which only ‘happened in the brain of the viewer’, namely that the projection of a rapid succession of still images on a screen created the illusion of fluent motion. Although the illusion of perceiving a real action was only created in the viewer’s brain, nobody would seriously dispute that the cinematograph was an invention based on technical features. It could be argued that the apparatus of the cinematograph comprised technical elements with the ultimate purpose to create the illusion of motion in the viewer’s brain. However, in the present case the dark and light stripes were also technical elements which contributed to creating the three-dimensional illusion.27 Touch-screen gestures Case T 543/11 concerned a portable electronic device with a touch-sensitive display on which application icons could be reconfigured in accordance with the movement of finger contacts. The underlying program contained instructions for displaying the icons in a normal mode, for detecting the user’s finger contact operation, for initiating a predefined user interface reconfiguration mode—distinct from the normal mode of operation—and for repositioning and fixing the displayed icons at their new positions. The Board agreed with the appellant that the technical effects provided by the ‘instructions’ features of the portable electronic device defined in claim 1 went beyond the normal physical interactions between programs and computers. Therefore, these features, and their technical effects, should be taken into account for the assessment of inventive step, in accordance with the case law of the Boards of Appeal (see G 3/08 and T 1173/97). With respect to the further claimed instructions for generating, when the reconfiguration mode had been initiated, an indication to the user that the reconfiguration mode had been initiated and that the positions of one or more application icons in the first plurality of application icons could be reconfigured by the user, the Board held that this feature was not related to the presentation of information as such but rather to providing an indication of the technical state of the device, namely if the device was in the normal or reconfiguration mode. Since providing a visual indication of technical conditions of a machine was a technical feature, according to the case law of the Boards of Appeal (see T 528/07, T 781/10 and T 887/12), this feature also had technical character.28 A touch-screen device supporting gesture-based scrolling operations was claimed in case T 77/14. According to the application, the problem to be solved by the claimed invention was to enable a user/viewer to access a desired portion of a long list of data by scrolling to the location of that portion rapidly and in a more natural manner. Independent claims 1 and 8 were directed to an electronic touch-screen display device with scrolling capability configured to detect different gestures for data display and selection. The input gestures were made up of various ordered, sequence-sensitive touch events (like long/short touch, motion, separation, etc) and were mapped to the corresponding output functions, generating a ‘gesture matrix’ of the underlying human–machine interaction scheme. The Board found that the closest prior art failed to directly and unambiguously disclose that the sensed duration of a touch contact within predetermined time limits was utilized to detect the gestures and perform the gesture-to-function mappings as claimed. As regards the alleged non-technical aspects of the objective problem formulated in the decision under appeal by applying the approach adopted in T 641/00, the Board noted that the application itself was silent as to whether the selection of specific gesture-to-function mappings—out of a virtually infinite variety of devisable gesture-based functions—was predominantly based on human perception phenomena, as the Examining Division seemed to suggest, or whether it depended on purely technical considerations relating to performance-related improvements of the touch-screen device in terms of, for example, its gesture recognition speed, accuracy and the like. Therefore, the Board held that only through speculation could one derive from the application that the claimed gesture-to-function mappings were generally the mere result of non-technical considerations. The Board accepted that the distinguishing features not only related to the definition of gesture-to-function mappings as such, but more importantly to actually enabling, at the implementation level, a proper recognition of, and differentiation between, three scroll-related functions on a touch-screen device. This was achieved by adding a physical parameter involving the touch-contact durations in terms of different time intervals. This parameter represented a further degree of freedom in the design of a gestural human–machine interface, in addition to the already utilized parameters relating to the occurrence of a touch, its motion and the motion’s speed and direction. The Board concurred with the appellant that the number of distinct ordered (sequence-sensitive) touch events and feasible gesture-based functions could be significantly extended. Moreover, although the operation of data-item selection was not directly interlinked with the actual data-scrolling procedure itself, the Board believed that it was well suited to readily selecting a particular data item after scrolling through a long data list, thus seamlessly supplementing the scrolling operation for the purpose of an efficient data search and selection on the touch screen.29 Medical technology A user interface for an extracorporeal blood treatment machine comprising a touch screen, a memory and a controller was claimed in case T 336/14. The interface differed from the closest prior art in that the controller was programmed to display a plurality of data comprising operating instructions for readying the machine for use and two pictographs which represented configurations of the machine correlated to the operating instructions. The Board had to determine whether or not the distinguishing features of claim 1 brought about a credible technical effect and hence solved a technical problem. It was immediately apparent to the Board that the information presented according to the different features–that is, the operating instructions and the corresponding pictographs—were cognitive rather than functional data in the sense of T 1194/97, since they addressed directly the user of the blood treatment machine and were consequently meaningful only to a human mind. The next question to be answered was whether the underlying user interface and the content presented credibly assisted the user in performing a technical task by means of a continued and guided human–machine interaction process. So, this question was basically related to ‘why’ (ie ‘for what purpose’) the content was presented. To this end, it was relevant to determine whether the cognitive information presented constituted an operation state, a condition or an event internal to the underlying technical system, prompting the system user to interact with it in a continued and/or guided way for enabling its proper functioning, or whether it represented a state of a non-technical application run on that technical system. In the present case, the operating instructions (and the corresponding pictographs) could admittedly support the user in operating the underlying technical device. Hence, in a very broad sense, those data could at least linguistically be construed as ‘technical information’, as the respondent suggested. However, not everything that supports a technical task has itself a technical character. Rather, the information of said features was evidently not related at all to any internal system state concerning the proper functioning of the underlying machine, let alone to a desirable or valid state. Thus, an action (possibly) performed by a user in response to a message concerning the technical functioning of an apparatus did not necessarily render technical the information conveyed. The Board also agreed with the opponent that the mere use of an electronic screen, instead of a piece of paper, for conveying information to the user did not make the information displayed more technical, so that the claimed display of operating instructions could well be replaced, without changing the resulting overall effect, with a technical manual on paper. Although the Board fully agreed that the mere fact that mental activities on the part of the user were involved did not necessarily qualify subject matter as non-technical, the information provided according to the above-mentioned features could not credibly support a continued and guided human–machine interaction process and thus constituted presentations of information as such, which could not be taken into account in the assessment of inventiveness. The Board, however, understood a feature added to claim 1 of an auxiliary request as providing a visual feedback indication in the event that the user of the blood treatment machine followed at least one of the operating instructions presented. The Board accepted that this kind of visual feedback, unlike the operating instructions and pictographs indeed conveyed information about the operating state of the machine and thus represented ‘technical information’.30 The same line of argumentation was followed by Board 3.2.02 in its decision T 690/11 relating to a dialysis system, more specifically an automated peritoneal dialysis (APD) comprising a display, a web browser and a web server. The browser and the server operated to display a plurality of dialysis therapy set-up procedure screens that required an operator input, and a plurality of dialysis treatment screens that graphically illustrated the progress in the dialysis therapy in substantially real time. The Board noted that the exclusion set out in Article 52(2)(d) EPC aimed to protect freedom of expression and information. Consequently, according to settled case law, a feature was to be regarded as a mere presentation of information without technical character if it was defined solely by its information content, in other words if it was exclusively directed to the human mind. In the Board’s opinion, the claimed features relating to the display of a plurality of dialysis therapy set-up procedure screens and a plurality of dialysis therapy treatment screens, however, possessed more than a mere information content directed exclusively to the human mind. The displayed information was not solely defined by its information content, but was inextricably linked to the operation of the claimed system. As the respondent patentee submitted, the operation of the system would not be possible without the operator input required by the claimed dialysis therapy set-up procedure screens. In fact, the requirement of an operator input implied the presence of input means in the system and the requirement of a display of a plurality of screens implied a sequence of successive images, each being displayed after a respective operator input via the input means. Moreover, the display of the dialysis treatment screens in real time amounted to technical information pertaining to the state of the dialysis system during the treatment, and assisted the operator in monitoring the correct operation of the claimed system, a technical task per se. For these reasons, it was concluded that the claimed features possessed a technical character and were to be duly considered in the assessment of novelty and inventive step.31 Case T 108/09 related to the use of fulvestrant in the preparation of a medicament for the treatment of a patient with breast cancer who previously had been unsuccessfully treated with an aromatase inhibitor and tamoxifen. Since the prior art disclosed the use of fulvestrant for the second-line treatment of breast cancer after tamoxifen failure, it had to be determined whether the change from second-line treatment to third-line treatment, expressed in claim 1 by the feature ‘who previously has been treated with an aromatase inhibitor and tamoxifen and has failed with such previous treatment’, could establish novelty. In this context, it was noted that, as was correctly pointed out in the decision under appeal, this feature did not relate to the presentation of information (Article 52(2)(d) EPC) by merely describing the medical history of the patient but constituted a technical feature. This could be deduced from the prior art, according to which tamoxifen could not cure breast cancer, as drug resistance would develop, which meant that physiological changes in the tumour occurred in the course of tamoxifen administration. As a consequence, this feature had to be taken into consideration for the evaluation of novelty and inventive step.32 Messaging/telecommunications Case T 2261/10 concerned a method for searching the Internet in an instant messaging environment. The invention disclosed techniques for performing a web search inline in an instant messaging environment and displaying search results inline in the instant messaging environment. A user could perform a web search inline in an instant messaging window by entering a search query in the same way as typing and sending an instant message, or by typing a predefined search trigger to identify the text as a search query. The search request was sent to an Internet search server, which processed the request and generated search results. The search results were sent to both the sender and the recipient for display inline in the instant messaging window. In the contested decision, the Examining Division found that document D2 disclosed all the technical features of the claimed invention required for manual browsing and only differed in the non-technical features and the degree of automation. In other words, document D2 disclosed an instant messaging system with all the technical features for parsing user input, recognizing predetermined character strings as triggers and manually causing said triggers to be processed and displayed accordingly. However, the choice as to what kind of strings, triggers and processing or display had to be used was not dictated by technical problems, but rather by specific requirements of the user. Hence, the corresponding features were to be regarded as non-technical. The appellant argued that the choice to have the search results displayed in the instant messaging window of the instant messaging clients (as opposed to using a separate browser application and displaying search results in a window of the browser) made viewing and using the search results much easier, particularly on devices with small screens and/or limited processing capabilities. By having the search results already available within the instant messaging client, the user could view those results at the same time as participating in an instant messaging session and could easily make use of those results without having to undergo the time-consuming process of swapping between applications. This was particularly important for devices that could not run separate applications concurrently. In the appellant’s view, the claimed inline display did not relate to merely displaying particular data or merely displaying data at a particular location on the screen, but concerned the accessibility of search results in the same environment used for instant messaging. Hence, this aspect of claim 1 did not relate to mere presentation of information. In summary, the skilled person starting from document D2, when faced with the above mentioned technical problems, would not arrive at subject matter falling in the scope of claim 1. The Board essentially agreed with the appellant’s assessment of document D2 and considered that the reasons given by the Examining Division did not justify the refusal of the application. In its approach, the Examining Division had failed to acknowledge that the present invention and document D2 concerned completely different problems and that sending a hyperlink embedded in a chat message and associating it to a web browser was very different from sending a search query in an instant message, fetching the search result and displaying it in an instant message window. Furthermore, in its analysis, the Examining Division had neglected the combined effect that the distinguishing features of the claimed method were supposed to achieve. Hence, the Board came to the conclusion that it would not have been obvious to a skilled person starting from the teaching of document D2 to arrive at the subject matter of claim 1.33 The issue of whether an electronic message comprising content-related elements, instructions that defined the structure of the message and a recipient address was patentable had to be decided in case T 858/02. The Examining Division had considered that a ‘message’ related to the communication between two entities, and that such a communication could not be considered as a physical entity but rather exclusively an information content, which was non-physical information of an essentially abstract character. However, the Board pointed out that, when considering the nature or category of a claimed invention, attention had to be paid to the substance of what was claimed, rather than only to the way in which the claimed subject matter was designated, which could be deceptive. In the Board’s view the content of the information in the message was not claimed. It was commonplace that the same word could be used both for the physical realization of some information and its content, in the sense of what was understood by its recipient. Thus, while the term ‘message’ could in some contexts refer merely to the information it was intended to convey, when qualified by the term ‘electronic’ the natural meaning referred to its physical realization. An electronic message was an electrical, magnetic or electromagnetic signal or collection of signals and moreover clearly the product of an electronic process. The Examining Division had also argued that the message was exclusively defined by its ‘format (i.e. data structure)’ and not by functional data, since the claim specified that ‘the instructions … define a structure of the message’. The Board did not share this view. In order to handle the claimed electronic message properly the messaging system had to be able firstly to distinguish those elements of the message which constituted instructions from those which represented content, and secondly to assemble content elements according to the instructions. In the language of computer technology, it had to have an appropriate interpreter and automatically applied it to the received message to produce a processed message. These were technical restrictions on the nature of the messaging system, not satisfied by an everyday answering machine (in the case of a voice system), or by a simple text (as opposed to HTML) email system, for example. The messaging system could have a very wide range of possible implementations, but it was nonetheless restricted to specific technical features, and the claimed electronic message did inherently comprise those technical features relevant to the invention. Moreover, since the parts of the message which constituted ‘instructions’ had to be automatically recognized and processed by the receiving message system, which determined how the message was presented to its final recipient, the Board considered that the instructions did constitute ‘functional’ rather than ‘cognitive’ data. While the Guidelines for Examination do not bind the Boards of Appeal, it was noted that, even according to the section of the Guidelines cited by the Examining Division, a computer data structure was not under all circumstances excluded from patentability. The fact that the instructions ‘define a structure of the message’ does not automatically lead to the conclusion that a ‘format (i.e. data structure)’ is not patentable. The Board thus concluded that the Examining Division’s reasons for rejecting the application under Article 52(2)(d) EPC were incorrect.34 However, Board 3.3.06 in its decision T 553/02 did not consider instructions included in a chemical product claim 7 for the use of the product to be functional data. The Board could not find any similarities between claim 7, directed to a composition comprising a bleach and to instructions for its use, and the claim in T 1194/97, directed to a record carrier and a picture recorded thereon. The instructions of claim 7, even when describing the technical method of claim 1, had no technical effect themselves on the bleach or on the product containing the bleach since they needed the external action of, for example, a human being receiving and understanding the information before applying it and related solely to the use of the bleaching composition in a specific process. It followed that these instructions as such could not be considered as technical features, let alone as distinguishing features of the claimed product. However, while the instructions for use in claim 7 were by themselves just a presentation of information without a technical effect on the bleaching composition or the product comprising the bleaching composition, the physical component of claim 7, that is, the bleaching composition or the product comprising it, were not excluded from patentability under Article 52(2) EPC, since they had a technical meaning and defined the technical features necessary for the definition of the claimed subject matter. The Board thus held that claim 7 did not relate simply to a presentation of information as found by the first instance, but related to an invention defined by technical features, that is, a product comprising a bleaching composition.35 A claim relating to a method of encoding an audio signal to generate an encoded signal was allowed by Board 3.5.02 in case T 198/04. Starting from the closest prior art and having regard to the effects provided by the claimed invention, the objective technical problem addressed by the invention was defined as providing signal quality when coding transient signals such as, for example, castanet or glockenspiel sounds. This problem was solved by performing a prediction encoding across the frequency domain of one of the spectral component signals of the audio signal, as recited in claim 1. No disclosure, or suggestion, of such a solution could be found in the cited prior art documents, taken alone or in combination, because none of them disclosed the generation of a prediction signal, which was performed across the frequency domain. As for claim 17 directed to a storage medium having the recorded encoded audio signal thereon, the audio signal had a data structure defined in terms which inherently comprised the technical features of the method according to claim 1 or the encoder according to claim 11, and was thus not a presentation of information as such, as explained in the decision T 1194/97.36 In case T 679/04, the Examining Division had refused an application concerning a transmission system comprising a teletext function and employing a specific data structure for television programme table information. The Examining Division had found that the data structure set out in claim 1 was only characterized by the content of its information, and thus not allowable under Article 52(2)(d) EPC, since the claim was silent about potential new technical features. The Board noted that this was not necessarily true for the amended claims. Moreover, the Board doubted that this objection was at all justified. An isolated claim feature could not be contrary to Article 52(2)(d) EPC, since the whole subject matter of the claim had to be considered (cf Article 52(3) EPC). Claim 1 was directed to a transmission system using teletext, that is, a technical system, which would not normally be regarded as a (method of) presentation of information as such. Whether or not an isolated claim feature within such a system contributed to a technical effect had to be considered when the invention was examined with respect to inventive step.37 Design/printing Case T 2434/10 related to an electronic design system for printed materials, such as business cards, incorporating a location map. The motivation for the invention was ‘a need for an improved electronic product customization system that allows a user of a Web-based product design system to easily incorporate a high resolution customized map into a product design intended for subsequent printing’. The design tool of the invention ran in a browser of a user computer system connected to a server, where the product information was stored. The server stored template or layout information from a service provider, multiple versions of maps, image and other product information. The application described the functionality of the design tool essentially in terms of its user interface. At the beginning, the design tool provided the user with a selection of different types or categories of products. When a desired category was selected, thumbnails of predesigned product templates provided by the service provider were shown and could be selected by the user. The system responded to the selection of a template by downloading layout and content information from the server to the user computer system. The user was then presented with a customizable template image of the product design. In the example shown in the application, the user was able to customize both sides of a business card, where the back of the card could include a map. The user could choose whether to create a new map, change the cropping of the current map, or use a saved map. In the Board’s view, the subject matter of claim 1 differed from the closest prior art essentially in that the product was to be printed in a two-sided way, with text on the first side and a map on the second side (a); the information received from the client computer system included zoom-level information as well as height and width information of the map area (b); a relatively high-resolution user map was obtained in accordance with user specifications (c); the display map was generated from the obtained user map (d); the higher-resolution map for printing was the user map having the properties listed under (c) (e); and only the low-resolution display map was transmitted to the client computer system (f). The Board acknowledged, in line with arguments by the appellant, that: the distinguishing features of the claimed invention allow for a representation of the map at the client which more closely reflects the final print result. In particular, by obtaining in advance a user map with the specific height to width ratio and zoom level required for printing (features (b) and (c)), generating the display map to be sent to the client from that user map (features (d) and (f)), and using exactly that user map for printing (feature (e)), the display map more closely resembles the printed map and more accurately reflects the final print quality. In the Board’s opinion, displaying an image of the print product which more closely reflects the final print quality of the product in the present case goes beyond mere presentation of information since it provides information regarding measurable properties of the final print product, e.g. height to width ratio and level of detail, and assists the user in the technical task of preparing and printing the product, e.g. a map, having specific characteristics with regard to those properties (see e.g. T 643/00 of 16 October 2003, reasons 16 and 17). Such an effect has therefore a technical character. Features (b) to (e) therefore solve the problem over the method of document D1 of providing a display image which more closely reflects the final print quality of the product.38 Since none of the available prior-art documents disclosed or suggested a solution to this problem, the Board concluded that features (b) to (f) were inventive. In case T 1284/13, a method for displaying a print preview image performed in a print control apparatus was claimed. The method inter alia included a step of rendering images of the pages of application data when the bookbinding print was designated, and a step of displaying a preview image of two pages of a physical book with a pair of logical pages belonging to the view of the opened book, based on the images of the pages rendered in the rendering step as preview images. The Board found that ‘[d]espite involving the presentation of information, this is not directed to the information content as such and, hence, does not fall under Article 52(2)(d) and (3) EPC.’39 Navigation Case T 651/12, concerning an apparatus and a method for displaying a bird’s eye view map, has already been discussed in the context of mathematical methods (see section 2.1). The decision is also interesting with regard to the interpretation of ‘presentation of information’. The Board held: It is noted in this respect that in the board’s judgement, displaying the three-dimensional bird’s eye view map, e.g. in a car navigation system, provides a more realistic view of the road to the user and supports the user in better orienting himself, ultimately assisting the user in taking the right turn, and thus adds to the ergonomics of the map display. In the board’s opinion, ergonomics, understood as the applied science of refining the design of products to optimize them for human use, in the context of the map display of the present case, is a technical field. Displaying the three-dimensional bird’s eye view map is, thus, considered to provide a technical solution to a technical problem. Moreover, it is noted that in the context of e.g. a car navigation system, the immediate apprehension of the presented information results in the driver being less distracted from the road and traffic and, thus, also adds to safety. Accordingly, also in this respect, displaying the three-dimensional bird’s eye view map provides a technical solution to a technical problem.40 Games In case T 717/05 (already mentioned in the context of game rules), the Board had to decide whether the design of an auxiliary game infrastructure and mechanism providing a varied or progressive reward in the auxiliary game depending on the outcomes of the primary game was patentable. According to an auxiliary request, the claimed subject matter differed from the prior art in that a representation of the monitored credit events and no-credit events over at least a predetermined number of consecutive past events was displayed. The player was thus kept informed about the development of the auxiliary game and the problem of maintaining the player’s interest was addressed by this method. The Board was not convinced that the different features constituted ‘presentation of Information’. Referring to decision T 1194/97, the Board underlined that a record carrier having functional data recorded thereon was not a presentation of information as such and was not excluded from patentability by Article 52(2)(d) and (3) EPC. Functional data included, in this context, a data structure defined in terms which inherently comprised the technical features of the system in which the record carrier was operative. A distinction had to be made between data which encoded cognitive content in a standard manner and functional data defined in terms which inherently comprised the technical features of the system. The Board then held: 5.4 This distinction, however, does not imply a contrario that data encoding a cognitive content have necessarily to be regarded as the presentation of information as such and be therefore excluded from patent protection. In the present case, the display of the outcomes of the past games has a cognitive content which is conveyed to the player. However, any display of information of the internal state of an apparatus conveys a cognitive content to the user, as this is the fundamental reason for its existence. To exclude all such systems from patent protection cannot be seriously envisaged. 5.5 Putting it another way, the gaming machine here is not a mere passive substrate, like a paper or magnetic medium, for the displayed information. Rather it actively determines the information to be displayed in response to a combination of player decisions and stochastic outcomes. The case would, of course, be different if the information displayed were merely an arbitrary text such as an advertising slogan. The above view of displaying a machine’s state follows that taken in decision T 115/85 (OJ 1990, 30; see point 7 of the reasons). 5.6 The Board considers, for the above reasons, that the step of monitoring the outcomes of the previous games and the step of displaying them are technical features which are not excluded from patentability as they relate neither to the rules of playing a game nor to the presentation of information as such (Article 52(2)(c) and (d) EPC).41 3. Conclusions The considerable number of positive cases cited in the foregoing suggests that the EPO Boards of Appeal take the Article 52(3) limitation for the exclusions seriously. Subject matter relating to a technical product or a process using technical means is not considered to be a non-invention ‘as such’. However, only technical aspects of its implementation can form a basis for the assessment of inventive step. The reason why a considerable number of mixed inventions actually fail is that the technical aspects claimed are limited to straightforward computer-implementations of possibly innovative non-technical concepts. Such ‘one-to–one’ automations based on conventional hardware means and normal programming skills may regularly overcome the first hurdle of patent-eligibility but hardly result in patentability due to lack of inventiveness. It is thus crucial to include more specific technical aspects in the claims to satisfy the inventive step test. The case law discussed in this article shows that a variety of specific technical aspects have been accepted by the Boards within the limits of technicality. These positive indications should be used as directions for drafting applications and/or evidence of patentability. Footnotes 1 See T 424/03-3.5.01 ‘Clipboard formats I/MICROSOFT’ of 23.02.2006; Catchword 1. 2 See T 494/07-3.4.03 of 13.05.2011; No. 2 of the Reasons. 3 T 424/03, op cit; No. 5.1 of the Reasons. 4 Ibid; Nos. 5.2f of the Reasons. 5 See T 121/06-3.5.01 ‘Garbage collection/TAO GROUP’ of 25.01.2007; Nos. 9ff of the Reasons. 6 See T 2217/08-3.5.06 ‘Executable code/MICROSOFT)’ of 10.04.2013; No. 4.4 of the Reasons. 7 See T 318/10, op cit.; No. 5.9 of the Reasons. 8 See T 435/11-3.5.07 ‘Data export and import/SAP’ of 13.05.2016; Nos. 2ff and 7ff of the Reasons. 9 See T 1568/05-3.5.01 ‘Convergent encryption/MICROSOFT’ of 08.04.2010; Nos. 1.1ff and 4ff of the Reasons. 10 See T 1351/04-3.5.01 ‘File search method/FUTJITSU’ of 18.04.2007; Catchwords. 11 See T 779/11-3.5.07 ‘Case law database/THOMSON REUTERS GLOBAL RESOURCES’ of 23.06.2016; Nos. 5ff and 6ff of the Reasons. 12 See T 2328/10-3.5.05 ‘Présentation de donnés à un observateur … /MORPHO’ of 22.06.2011; No. 3 of the Reasons (in French). 13 See T 209/08-3.5.05 ‘Segmental coding method and apparatus/KONURALP’ of 08.07.2011; Nos. 3.3ff of the Reasons. 14 See T 2055/08-3.4.03 of 13.02.2014; Nos. 3.2ff of the Reasons. 15 See T 979/06-3.5.04 of 21.09.2010; No. 4.2 of the Reasons. 16 See T 874/02-3.4.03 ‘Fluorine-doped silicon oxide layer/APPLIED MATERIALS’ of 30.09.2004; No. 5.1 of the Reasons. 17 See T 9/03-3.5.03 ‘Time slot allocation/LUCENT’ of 30.11.2005; No. 6 of the Reasons. 18 See T 197/11-3.5.02 of 06.02.2014; Nos. 7ff of the Reasons. 19 See T 1339/11-3.4.03 of 11.11.2014; Nos. 2.3ff of the Reasons. 20 See T 398/10-3.5.06 ‘Sharing digital rights/PHILIPS’ of 09.10.2013; Nos. 9.4ff of the Reasons. 21 See T 113/02-3.5.02 of 17.03.2004; No. 8 of the Reasons (in German). 22 In this context, we only have a statement by a representative of the UK delegation in the preparatory work to the PCT (cited in decision T 651/12 below), which, unfortunately, does not provide the needed clarity. 23 As has been appropriately stated by the German Federal Court of Justice (Bundesgerichtshof) in its judgment X ZR 110/13 ‘Entsperrbild’ of 25.08.2015; Headnote b) (in German, translated by the author). 24 See T 643/00-3.5.01 ‘Searching image data/CANON’ of 16.10.2003; Nos. 15ff of the Reasons. 25 See T 862/10-3.5.06 ‘Notification system/MICROSOFT’ of 15.05.2013; Nos. 3.3.1ff of the Reasons. 26 See T 781/10-3.5.05 ‘Portable device and method of providing menu icons/SAMSUNG’ of 19.09.2013; Nos. 3.3f of the Reasons. 27 See T 1749/06-3.4.03 of 24.02.2010; Nos. 4ff of the Reasons. 28 See T 543/14-3.5.05 ‘Touch interface reconfiguration/APPLE’ of 10.10.2016; No. 2.1 of the Reasons. 29 See T 77/14-3.5.05 ‘Detection of scrolling gestures/PHILIPS’ of 30.06.2015; Nos. 1.1.4ff of the Reasons. 30 See T 336/14-3.5.05 ‘Presentation of operating instructions/GAMBRO’ of 02.09.2015; Nos. 1.2ff of the Reasons. 31 See T 690/11-3.2.02 of 01.03.2016; No. 3 of the Reasons. 32 See T 108/09-3.3.02 ‘Fulvestrant for treating resistant breast cancer/ASTRA ZENECA’ of 14.02.2013; No. 2.3.1 of the Reasons. 33 See T 2261/10-3.5.07 ‘Search request via instant messaging/YAHOO’ of 21.10.2016; Nos. 4ff of the Reasons. 34 See T 858/02-3.5.03 ‘Structured voicemail messages/LUCENT’ of 12.08.2005; Nos. 1.2ff of the Reasons. 35 See T 553/02-3.3.06 ‘Stain removal method/PROCTER & GAMBLE’ of 14.07.2004; Nos. 1.2.2f of the Reasons. 36 See T 198/04-3.5.02 of 28.03.2006; Nos. 5ff of the Reasons. 37 See T 679/04-3.5.01 ‘Transmission system/MATSUSHITA’ of 05.10.2006; Nos. 4.1f of the Reasons. 38 See T 2434/10-3.5.07 ‘Custom product design/CIMPRESS SCHWEIZ’ of 02.08.2016; Nos. 7ff of the Reasons. 39 See T 1284/13-3.5.05 ‘Displaying preview of spread of a book/CANON)’ of 08.12.2016; No. 3 of the Reasons. 40 See T 651/12, op cit.; No. 3.2 of the Reasons. 41 See T 717/05, op cit.; Nos. 5.3ff of the Reasons. © The Author(s) 2017. Published by Oxford University Press. All rights reserved.
TI - Patentable subject matter under Article 52(2) and (3) EPC: a whitelist of positive cases from the EPO Boards of Appeal—Part 2
JF - Journal of Intellectual Property Law & Practice
DO - 10.1093/jiplp/jpx145
DA - 2018-02-01
UR - https://www.deepdyve.com/lp/oxford-university-press/patentable-subject-matter-under-article-52-2-and-3-epc-a-whitelist-of-etpKgY92UL
SP - 103
EP - 119
VL - 13
IS - 2
DP - DeepDyve
ER -