This is the second decision (read the first one here) cited by the EPO in the artificial intelligence-related section G-II, 3.3.1 of the revised Guidelines for Examination of the EPO, in force since November 2018. Here are the practical takeaways from the decision T 1784/06 (Classification method/COMPTEL) of Technical Board of Appeal 3.5.01:
Key takeaways
The COMVIK approach also has to be applied when the subject-matter has to be assessed under Art. 56 EPC 1973.
Where an intrinsically non-technical solution sought to derive a technical character from the problem solved, the problem had to be technical.
The automatic classification of data records serves only the purpose of classifying the data records, without implying any technical use of the classification.
The invention
The invention relates to a method for classifying and selecting records, e.g. for selecting rating for telephone network or other telecommunications network event data.
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Claim 1 (main request)
Is it patentable?
The Board ruled that the features of claim 1 that refer to the algorithmic details would not contribute to the technical character. The main reason is, according to the Board, that the claim is not limited to any technical application. Moreover, the description would only refer to the purpose of billing, which is not considered technical:
3.1.4 The application may disclose a robust algorithm which is immune to variations in the number of classes to be recognized. This may be a valuable mathematical property of the algorithm and would imply technical benefits when used for a technical purpose. However, claim 1 is not limited to any technical application of its classification method. According to the description, the data records are classified for the non-technical purpose of billing.
3.1.5 As the algorithm of claim 1 does not contribute to the technical character of the classification method, it does not enter into the examination for inventive step.
To argue patentability, the appellant outlined that the requirement of a technical problem when applying the problem-and-solution approach cannot be deduced from the regulations under the EPC. Moreover, the appellant pointed to several decisions where it was ruled that a non technical problem may have a technical solution:
2.3 Regarding the Board’s insistence an a technical problem when applying the problem-and-solution approach, the appellant disputes that such a requirement can be deduced from the EPC or introduced from its Implementing Regulations. The appellant refers inter alia to decision T 473/08 (by a different Board of Appeal) to point out that “a non-technical problem can have a technical solution“. However, there is no divergence, the Board agrees to the statement that a non-technical problem can have a technical solution. On the other hand, where an intrinsically non-technical solution (mathematical algorithm) seeks to derive a technical character from the problem solved, the problem must be technical. This is the point an which the present case hinges.
By the way, if you are interested in a deeper look into how the European Patent Office examines software-related inventions, this 30-minute video gives a concise overview of the “two hurdle” approach with lots of examples.
Furthermore, the appellant questioned whether the COMVIK approach could be applied to applications which have to be assessed under Art. 56 EPC 1973. Moreover, the appellant held the opinion that the claimed subject-matter has to be assessed as a whole when it comes to assessing inventive step. However, the Board argued that even before the COMVIK approach was established, non-technical features were considered as irrelevant for the assessment of inventive step:
2.1 […] Already before the Comvik decision, technically non-functional modifications were considered as irrelevant to inventive step (see e.g. T 72/95 dated 18 March 1998, point 5.4).
2.2 According to the appellant, claimed subject-matter as a whole should be examined for the presence of an inventive step once the subject-matter as a whole has been found to meet the technology criterion of Article 52(1)(2)(3) EPC. The appellant argues that Article 56
EPC 1973 should be applied independently of Article 52(1)(2)(3) EPC because Article 52(2) EPC has to be applied independently of Article 56 EPC 1973 […].The Board does not accept such formal reasoning and points out that it is normal and often necessary for legal provisions to be in an asymmetric relationship or hierarchical dependency. For example, the novelty of a claim has to be examined independently of inventive
step considerations, whereas a finding of inventiveness presupposes a novelty examination. […]
In view of the above, the Board dismissed the appeal.
More information
You can read the whole decision here: T 1784/06 (Classification method/COMPTEL) of September 21, 2012