OMX Technology AB, who i.a. owns and runs the Stockholm Stock Exchange, filed Swedish patent application 0201756-4 on 10 June 2002 which subsequently was refused 12 March 2004 on the basis of lacking technical character and thereby being considered not to be regarded as an invention in accordance with 1 § PL, i.e. the Swedish Patent Act (cf. Article 52(2) and (3) EPC). The Swedish Patent Office (PRV) considered that the subject-matter defined in the patent application basically comprised an administrative method implemented on plurality of computers.
The invention defined in the application relates to a computer architecture for real time order matching in an automated stock exchange system. The gist of the architecture is that one computer handles the order matching, thereby controlling the processing of incoming orders, while a further computer executes computations considered more complex and stores the result in a memory accessible by the order matching computer. Allegedly, use of a second computer for computing data to be used in the order matching process, and a memory where the order matching computer can fetch data computed by the second computer, is novel and inventive in that the computational load resulting from real time operation is reduced.
EasyContact AB filed Swedish patent application 0203167-2 on 25 October 2002 which subsequently was refused 30 January 2004, also on the basis of lacking technical character and thereby being considered not to be regarded as an invention in accordance with 1 § PL. The Swedish Patent Office (PRV) considered that the subject-matter defined in the patent application basically comprised a computer implemented business method.
The invention defined in the application relates to a telephone network comprising mobile telephones communicating via the network with a server. The mobile phones comprises various means for inputting data and transferring data, while the server comprises memory means, means for receiving and comparing data, means for selecting an object up for sale, and means for establishing a connection between a mobile phone used for buying an object and a mobile phone used for selling said object. Allegedly, the network facilitates trading of goods and services. Prior art systems in the field of electronic trading of goods and services require powerful, and thus costly, mobile phones.
In both the OMX case (04-059) and the EasyContact case (04-075), the PBR unsurprisingly concluded that the respective invention presented a technical character and thus should be regarded as an invention in accordance with 1 § PL. Hence, it is up to the PRV to continue prosecution of the applications.
An office action objecting to lack of inventive step has been issued for the respective application. It remains to be seen whether the applications will be refused on the ground of lacking inventive step or not.
The PRV refused both applications on the grounds that the respective independent claims defined subject-matter not being regarded as inventions under 1 § PL. However, as can be seen in the above, the PBR considered said subject-matter to indeed exhibit technical character and remitted the respective application to the PRV for continued prosecution.
In both the OMX and the EasyContact case, the PBR asserts that the respective invention defined by the independent claims obviously requires technical considerations, thereby also having technical character. Although no particular piece of case law is referred to in direct connection to the conclusion of the PBR in the respective case, the reasoning partly appears to rely on – as well as partly lending its wording from – the EPO Board of Appeal case T769/92 (Sohei), which holds that an invention comprising functional features implemented by computer programs is not excluded from patentability if technical considerations concerning the solution of the problem solved by the invention are required to carry out the invention. In the OMX case, T769/92 is generally summarized along with a plurality of other EPO Board of Appeal cases.
In any case, the reasoning of the PBR is more in line with EPO case T1173/97 than it is with case T258/03.
T1173/97 (IBM) states in its headnote that a computer program product is not excluded from patentability under Article 52(2) and (3) EPC if, when it is run on a computer, it produces a further technical effect which goes beyond the “normal” physical interactions between program (software) and computer (hardware).
T258/03 (Hitachi), on the other hand, states in headnote I that a method involving technical means is an invention within the meaning of Article 52(1) EPC.
Question 2a of pending referral G3/08 to the EPO Enlarged Board of Appeal touches upon this discrepancy.
Should the PBR have reasoned along the lines of T258/03 for remittance to the PRV, it would have sufficed to establish the fact that all independent claims – apparatus claims as well as method claims – actually do comprise technical means (such as e.g. a computer in the OMX case and mobile telephones in the EasyContact case), whereas now they had to motivate that technical considerations had to be made, which must be said to be a somewhat more subjective standard of determining technical character.
In the light of these two Swedish second instance decisions, the future G3/08 decision of the EPO Enlarged board of Appeal is awaited.
Magnus Nordin, European Patent Attorney and member of the Awapatent software team