In the field of computer-implemented inventions it can be frustrating for Applicants when the EPO refuses to conduct a meaningful search for prior art documents. Unfortunately, the Search Division does not have an obligation to cite prior art documents in the search report. Instead, a statement may be included in the search report indicating that the claimed features are so conventional that they are widely available and no documentary evidence is deemed necessary because of their notoriety. The following is an example of a typical statement that can be included in the search report of a computer-implemented invention:
“The claimed subject-matter with due regard to the description and drawings in accordance with Art. 92 EPC relates to processes comprised in the list of subject-matter and activities excluded from patentability under Art. 52(2) and (3) EPC. The information technology employed as an enabler for carrying out said processes is conventional. Its use for carrying out non-technical processes forms part of common general knowledge and it was widely available to everyone at the date of filing of the present application. No documentary evidence is therefore considered necessary. (See Official Journal EPO 11/2007. pages 592ff and 594ff)”
Undoubtedly, it is more expeditious for the Search Division to include such a statement in a search report rather than conducting a meaningful search and cite prior art documents. Not surprisingly, in this case, the EPO will not refund the search fee despite failing to cite documentary evidence. If the Search Division fails to conduct a meaningful search in the search phase and fails to cite any documentary evidence of relevant prior art in the search report, it is the responsibility of the Examining Division to consider whether a search should be carried out in the Examination phase. In the scenario as described above, the Examining Division will typically refuse the claims for lacking an inventive step in view of a general purpose computer or the like. This practice of relying on a general purpose computer as being the closest prior art is often as a result of the EPO mischaracterising the technical aspects of the claimed subject-matter as being non-technical. In computer-implemented inventions a claim will typically include technical and non-technical aspects. A claim which includes both technical and non-technical aspects is commonly referred to as a mixed-type claim. Under Article 52(2)(c) EPC programs for computers are not considered inventions for which European patents may be granted. However, the exclusion from patentability applies only to the extent to which an invention relates to a computer program as such. Article 52 EPC states:
- European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
- The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
- (a) discoveries, scientific theories and mathematical methods;
- (b) aesthetic creations;
- (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
- (d) presentations of information.
- Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.
The task of prosecuting a European application is burdensome for the Applicant when the search report fails to cite documentary evidence of relevant prior art. Applicants often accept the Search Division’s findings as being conclusive. However, I strongly advise Applicants to contest the Search Division’s findings during the Examination phase. In general the Examining Division should not refuse the application on the grounds of lacking an inventive step without performing a search (see T 690/06). A claim comprising a mix of both technical and non-technical features requires an examination of the technical character of the claim in order to determine those features that are relevant for assessment of inventive step. Non-technical features may be considered as features that do not contribute to the technical character of a claim. Such non-technical features should satisfy the following two requirements:
- i) A feature or group of features that, considered independently from the group of remaining features of the claim, define subject-matter excluded from patentability under Article 52(2) and (3) EPC.
- ii) A feature or group of features that does not combine with the group of remaining features of the claim in a way such that the new combination of features has a different technical character to that of the group of remaining features of the claim when considered on its own.
Features which cannot be seen to make any contribution, either independently or in combination with other features, to the solution of a technical problem are not relevant for assessing inventive step. However, if the claim includes at least one technical feature which contributes to the technical character of the claim even though the remaining features of the claim are non-technical, the Examining Division should conduct a search during the Examination phase to establish the closest prior art in order to correctly assess the inventive step of the claimed invention. Otherwise, it is not possible to correctly apply the problem-and-solution approach without first identifying the closest prior art. In the problem-and-solution approach, there are three main stages as outlined in the Guidelines for Examination Part G – Chapter VII 5:
- (i) determining the “closest prior art”,
- (ii) establishing the “objective technical problem” to be solved, and
- (iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.
The first stage of the problem-and-solution requires the determination of the closest prior art. In the technical boards of appeal decision T 690/06, the EPO was the International Search Authority and declined to carry out a search but instead issued a Declaration indicating that the claims related to subject-matter for which no search was required. The Examining Division of the EPO refused the application in the European regional phase for lacking an inventive step without conducting a search. The Board in this case was “of the opinion that the examining division should have performed a search” since certain claimed features were technical. The Board stated that: “as long as no search has been performed an examining division should normally not refuse an application for lack of inventive step if the invention as claimed contains at least one technical feature.
Accordingly, Applicants should contest the Search Division’s findings during the Examination phase if a search report fails to cite documentary evidence. The task of prosecuting an application is significantly reduced if the closest prior art relied on by the Examining Division is not a notorious general purpose computer.