A.Highest body of the EPO on Computer Implemented Inventions (CII):
The President of the EPO referred in 2008 four questions related to CIIs to the Enlarged Board of Appeal of the EPO based on an alleged divergence in the case law for clarification. The decision was delivered on May 12, 2010.
The Enlarged Board of Appeal found that the referral by the President is inadmissible as there were no divergent decisions.
Thus, the Enlarged Board did not take a decision with respect to the questions posed but rather showed that the existing case law already provided a consistent approach. This approach developed by the Boards of Appeal was and will for sure be subject to development.
In summary, the decision of the Enlarged Board of Appeal does NOT change the way CIIs are handled by the EPO.
B. For those who want to look at an example how CIIs are handled by the EPO (cited and not criticized by the Enlarged Board of Appeal):
The decision of the Boards of Appeals T 154/04 (Duns Licensing) states in headnote II:
“Gathering and evaluating data as part of a business research method do not convey technical character to the business research method if such steps do not contribute to the technical solution of a technical problem.”
It is made clear that a “technical problem” needs to be solved by technical means. Non-technical features cannot support the finding of inventive step. In order to assure that an aim to be achieved in a non-technical field does not support the finding of inventive step, such an aim can be incorporated in the formulation of the “objective problem” to be solved using the problem-solution-approach.
How this assessment is done can be quickly grasped from items 18 to 28 on pages 15 and 16 of the attached decision. More generally, the approach how to assess inventive step is discussed in items 14 to 16, especially in item 16, on pages 13 and 14 of T 154/04.