T 258/03

T 258/03
Board of Appeal of the European Patent Office Issued April 21, 2004 Board composition Chairman: S. V. Steinbrener Members: R. S. Wibergh, B. J. Schachenmann Headwords Auction method/HITACHI

T 258/03, also known as Auction Method/Hitachi, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on April 21, 2004. It is a landmark decision for interpreting Article 52(1) and (2) of the European Patent Convention (EPC) which built on the principles suggested by the same Board in T 641/00 (Comvik, Two identities). This decision, amongst others, but notably this one and T 641/00, significantly affected the assessment of an invention’s technical character and inventive step. It mainly stated that "a method involving technical means [was] an invention within the meaning of Article 52(1) EPC" and in stating so contrasts with T 931/95 (Pension Benefit Systems Partnership), which held that "the mere fact that data processing and computing means, i. e. technical means, [were] recited in a method claim [did] not necessarily confer a technical character to the claimed method". T 258/03 put apparatus and method claims on an equal footing for the patentability examination of Article 52(2) EPC. In other words, the Board of Appeal in this decision "pointed the way to the new test and argued that the term ‘invention’ in the definition of patentable inventions set out in Article 52(1) of the EPC was merely to be construed as ‘subject matter having technical character’. Thus, the presence of computer hardware in a claim to a business method, providing a technical character, would now be sufficient to overcome the business method objection, regardless of technical contribution."

This "comparatively broad interpretation of the term "invention" in Article 52(1) EPC will include activities which are so familiar that their technical character tends to be overlooked, such as the act of writing using pen and paper." However, as the Board put it, "this does not imply that all methods involving the use of technical means are patentable. They still have to be new, represent a non obvious technical solution to a technical problem, and be susceptible of industrial application."

Although the claims were held to be inventions within the meaning of Article 52(1), (2) and (3) EPC, they were found to lack inventive step. The application was refused. More precisely, the invention was viewed as a mixture of technical and non technical features, and was assessed with respect to the requirement of inventive step by taking account only the features which contributing to a technical character (in accordance with the principles of T 641/00). No step of the claimed method was found to be designed "in such a way as to be particularly suitable for being performed on a computer" so that it may have contribute in a technical manner to inventive step. A particular method step which may have been a candidate involving technical contribution was found by the Board to result from "a routine programming measure well within the reach of the skilled person".