The recent EPO Board of Appeal decision T 2049/12 is concerned with the technical character of data structures, and thus their patentability. The Board establishes in the decision that a data structure has itself a technical character, if it maps to technical features in a technical system:

(https://www.epo.org/law-practice/case-law-appeals/recent/t122049eu1.html).

Computer-implemented inventions have recently moved into focus at the European Patent Office (EPO). For instance, the 2018 edition of the Guidelines of Examination has been substantially revised, with computer-implemented inventions a major focus. One important revision concerned data retrieval, data formats and data structures (Part G, Chapter II, 3.6.3 of the guidelines).

To patent a data structure – like for software inventions – the claimed subject matter has to clear two crucial hurdles: patent eligibility (Art. 52(1) EPC) and inventive step (Art. 56 EPC). To overcome the eligibility hurdle, the claimed subject matter needs to have a technical character, i.e., it has to include at least one technical feature. To overcome the inventive step hurdle, the claimed subject matter has to include at least one non-obvious technical feature (only technical features are taken into account for assessing inventive step, e.g., T 0641/00).

The guidelines provide that a claim directed to a data structure or data format, which is embodied on a (computer-readable) medium or as an electromagnetic carrier wave, has a technical character as a whole, and is thus patent-eligible. This is also highlighted in the decision at hand, which explains that:

A computer readable medium is a technical feature, which lends technical character to the claimed subject-matter as a whole (see T 258/03 - Auction method/HITACHI, and T 424/03 - Clipboard formats I/MICROSOFT)

However, while claiming a computer-readable medium embodying the data structure is enough to overcome the eligibility hurdle, it is not enough to overcome the inventive step hurdle. The apparent reason is that the computer-readable medium is not a non-obvious technical feature. An inventive step for the claimed subject matter can only be acknowledged, if also the data structure itself is considered a technical feature, i.e., has itself a technical character.

The guidelines, as well as previous EP case law, already provide that also a data structure itself can have technical character, and can thus lead to an inventive step (if also non-obvious). In particular, the guidelines state in this respect that (emphasis added):

When assessing data structures and data formats, a distinction is made between functional data and cognitive data (T 1194/97). Functional data serve to control the operation of a device processing the data. They inherently comprise, or reflect, corresponding technical features of the device. Cognitive data, on the other hand, are those data whose content and meaning are only relevant to human users. Functional data contribute to producing a technical effect whereas cognitive data do not

Examples for such “functional” data structures are, for instance: (a) an index structure used for searching a record in a database; (b) an electronic message with a header including instructions that are automatically processed by a receiver; or (c), as in the “PHILIPS decision” T 1194/97 cited in the guidelines – a data structure comprising information specifying where a relevant coded picture line had been recorded on a record carrier.

In the case at hand, the appellant cited said “PHILIPS decision”, and argued that the data structure in the claim was clearly of the type “functional” data. Consequently, the data structure must be considered a technical feature, which contributes to producing a technical effect.

Notably, the data structure in the case at hand had the purpose of transforming data between different types of services. To this end, the data structure in the claims specified: (a) different services; (b) transformations for transforming data between these different services; and (c) parameters required for these transformations.

The data structure arguably provided a different, more flexible way, of structuring a computer program for transforming data between the services, since the prior art relied on dedicated code for each of the transformations.

However, the Board reasons in the decision at hand, that the distinction between “functional” data and “cognitive” data – as it is established in the “PHILIPS decision” and as it is repeated in the guidelines – cannot be equated with a distinction between data structures “with technical character” and data structures “without technical character”. In particular, the Board reasons that (emphasis added):

common misconception regarding the PHILPS decision is that there are only two kinds of data - cognitive and functional - and that functional (i.e. non-cognitive) data is always technicalThe relevant question for assessing whether a data structure has technical character is rather whether it produces a technical effect. In the present case, the Board considers that there is no technical effect. Therefore, the claimed data structure does not provide an inventive step (Article 56 EPC)

The Board argues further that in the “PHILIPS decision”, there were special circumstances that provided the technical character to the data structure. Namely, the data structure fulfilled a technical function (i.e., it facilitated access of a reader to picture content) in a technical system (i.e., in the reader plus record carrier). Accordingly, the data structure mapped to technical features in a technical system.

In the case at hand, the data structure, however, did not map to a technical system, but mapped to a computer program. As is well known, a computer program as such is excluded under Article 52(2)(c) and (3) EPC. Further, also the activity of programming is excluded under Article 52(2)(c) and (3) EPC, because it is a mental act (see: G3/08, Reasons, point 13; and T 1539/09, Reasons, point 4.2). The structuring of a computer program, including the choice of data structures, belongs to the activity of programming.

Thus, the data structure mapped to a non-technical feature.

The Board accordingly concluded in the case at hand, that the data structure itself had no technical character, and consequently judged that the claimed computer-readable medium, embodying said non-technical data structure, lacks an inventive step.

Practical impact:

When claiming a data structure, e.g., embodied on a computer-readable medium or an electromagnetic carrier wave, it is necessary to keep in mind that inventive step can only be achieved, if the embodied data structure itself has a technical character. For this, it is not enough that the data structure is “functional” instead of “cognitive”. In the end, the data structure needs to produce a technical effect, or at least has to contribute to producing a technical effect. Claim features describing the data structure should be chosen accordingly. One test that can be applied according to the Board, is whether the data structure maps to a technical system, particularly whether it maps to technical features in the technical system.