Stefan Steinbrener At Patinnova 2009

The following is a partial transcript of a presentation by Stefan Steinbrener - Member of the Technical Board of Appeal of the European Patent Office.

Stefan Steinbrener's disclaimer: "This presentation gives the author's personal views"[1]

The transcript

…EPC 2000, there are also travaux préparatoires, and if you look into these travaux préparatoires, you'll find a very very clear statement …. the point must be made that the patent protection should have a technical field.. this is now clearly stated in the new wording of Article 52.1. In order to be patentable, the subject matter claimed …. technical character, or to be more precise, a technical teaching

how to solve the particular technical problem using the particular technical means

misunderstanding of the


The same configuration applies to the existence of computer programs, but it will remain incumbent on office practice

subject matter claims

has the technical character

an appropriate manner

in light of technical developments and the state of knowledge at the time

a very clear statement …. to be

the invention. If you don't like it

In the light of the conclusion, inventions within the meaning of

technical character.


Now we hit a new problem. If we use this criterion for distinguishing inventions from non-inventions, and this

any of the subject matter

Art 52.2


technical problem solved

technical interactions occur or technical applications are required.

If we use this criterion, then we have to ask ourselves …. technical

no … has been given to the [European Patent Office?]



But, this is a situation which is quite normal in legal systems. There's no reason to succumb to


The meaning of these terms is, in its core area, undisputed. The semantics are important only on the fringes.

You may realise that the new meaning of patent … employ a general definition of difficult, it will have no limiting effects

I remember a discussion of the German Ministry of Justice at the time of this computer directive was still, ah, living [].

[]different participants coming from different fields and having different interests …. fulfilled the

definition of "technical" from Encyclopedia Britanica, or somewhere, and some general dictionary, and it got such broad[sic] that it included everything, and there was a lot of opposition against that, in certain circles. So, ah, if unintentionally, or unjustifiably restrictive, we would have to


The now retired presiding judge of the federal supreme court, [] German [] definition [].



for cautious … and, on the other hand, the constructions of

once and for all by any defintion, but necessarily

There's a nice anecdote from the British attorney … at the time when this computer directive was discussed, the UK IPO arranged workshops and, ah, on one of these workshops the German definition was

this might be helpful, and in this definition the reference to natural forces. And at the end of the workshop, somebody asked, when will be the workshop on "natural forces"?



later, a general approach, and a very nice defintion was given by Lord CROSBIN???. He's a high court judge in the court of (criminology?)

he said, the vaste majority of patent applications are perfectly clear about, …. of the monopoly they claim … never come to court. The borderline cases, however,


would strike another

for unreasonable for third parties. That degree of uncertainty (is?) inherent in any rule

the construction of any document

In principal


although I shall consider

uncertainty can be


structured approach to construction



the structure approach to construction, as we tried to stake out the grey areas with a series of decisions dealing with the (usual?) aspects. These are the guidelines.

So in fact, some aspects

clarifying the

Definition of the methodology. I would argue that there are five definitions

I don't want to

computer program



summarised all of that, estimating


What can be concluded from this decision? What, how the methodology defines … if you look at the first

the examination of, for, the existence of an innovation

novelty, inventive step, and industrial applicability [8:51]

different … don't believe … systematically correct

the requirements: novelty, inventive step,

state of the art, the first requirement

ten thousand years, … not novel

necessary in order to

we have to analyse the features of the claims if they have technical character, and if this is the case, which features specifically

is not necessarily of higher priority

pragmatic approach

either [10:10]

make the analysis

for continuing

inventive step

mixtures of technical and non-technical features are not excluded from patentability. If there's one non-technical aspect, it would not destroy the

Nor is it appropriate to weight the relevance of technical and non-technical features

assessing the invention as a whole, in light of all technical and non-technical features. This means in practice, an apparatus is a concrete technical product

providing that there is

technical character

and methods can have technical characters by virtue of their technical nature


we have

a low standard for the first hurdle

take on board as much as possible, as much as we believe … will allow

my view is also in line with the TRIPS requirement

But, the


by this classification

subject matter

or subject matter that doesn't necessarily involve technical innovation, methods that do not necessarily use technical means, they are excluded because they lack technical character.

hear the arguments that most of the cases

technical means

overcome the first hurdle

there are many regulations in the EPC which are very well observed by the


so this is not my particular area of knowledge.

if we look at what has been denied … as technical

you'll find a couple of decisions

technical considerations that do not confer technical character


necessarily involved, even if they're not

again, no technical means are necessarily involved, even if they might be involved, or similar untechnical





Now we come to the second hurdle: the technical quality of invention. And here at least, you must analyse the features … technical character .. features which made no contribution are not part of the technical ..


One could .. in a simple picture .. we have the same subject matter with a whole???. We have contributions by technical features. We may have contributions by non-technical features, if they interact with the technical features .. interaction .. if they contribute to the solution of the technical problem. .. here today was a question


on the other hand, one could consider

to circumvent a technical problem

used quite often


are very slow, so there's a difference.

So, ah

and we wait for him to

A technical solution might be to change the elevator controls

or the electrical system might be changed



people … fourth floor are not allowed to use the elevator. These people

circumventing the technical problem

Now, what we have is, you can, you can in fact .. technical features which do not make things .. contributions



do not make a technical contribution


technical field, if the invention is based on a non-technical invention with a technical realisation that is novel

and a technical realisation .. non-technical .. as such

once it has been put to him by a

some kind of


Then we come to the statistical



For the other two requirements, we


found that, if no search was made … may well be justified in the subject matter



carried out


necessary to judge the inventive step is either not

cannot be really

or that there is some .. knowledge which is not accepted


this is on one hand making the

more difficult, but on the other hand, we decided

does not belong to the state of the art

and he would not study documents



With respect to novelty, we have a problem.

is a conflict of photographic

so the existence of any difference would


come back to the hammer. If the hammer had a different colour

different feature


blue hammer

On the other hand, if you say the invention is

by the technical features, there might be a technical concept of novelty.

take account of features that do not contribute to the solution of the technical problem. … at least they're non-trivial

in my view, one could solve these problems by .. differences which are physically … physical differences

why should we not

there is no clear, line on that at the moment. We will have, you know

jump to the inventive step because for inventive step, the difference is not sufficient


and you look at these

different colour would certainly not qualify as a non-trivial technical

but, and that's the reason, also, why we avoided, until now, to decide

on novelty

the only prior-art, the only relevant prior-art


then, ah

inventive step, we would like to use the [typical] idea of … not, to remain as much as possible in

and therefore we would tend to use the

and in order to do that, we have to say that objectives to be achieved in non-technical fields .. framework

they are

constraints to be met by the technical


I would like to, really underline that we do not consider these non-technical .. as belonging to the prior art. But, ah, we consider them as belonging to the conception, motivation phase



technical problem without contributing to

such constraints are often not known. They are not described in the patent application. They are necessarily … technical


why should I be


never been taken into account for inventive step, irrespective of whether


and there are a lot of old

and we have also pointed out


where we have pointed out .. investigated .. and investigated it

technical problem.

So, the technical problem must be solved by technical means






If I want to try to make a definition of the technical contribution used in the

in the directive, you would say today

as a whole

in particular .. technical products or using technical means, and the combination of those features .. technical character

they must be novel and inventive


some specific aspects of computer programs

computer program product


and there they found that … programs have technical character insofar as

in the hardware

so we have difference patents. We have electrical currents. We have transformation of

electrical charges

we must


character, within


make all the computer programs patentable.

With the first statement, we are in a dilema. We would on one hand have to patent, or consider all computer programs patentable, so the


On the other hand, one could also say, despite the fact that they are technical, they have be been excluded, so no programs will be patentable

Em, the borderline, or the intermediate position taken by the .. was, to be patentable, they must produce a further technical effect, going beyond the trivial … and giving rise to the

so we would have to distinguish, to draw the borderline within the computer program


technical effect. It may consist of controlling technical properties of devices. Yesterday we mentioned already the washing machine. If you remember the old mechanical control mechanism for washing machines is (making noises) nobody doubted that they might be patentable. These mechanical controlling devices already include knowhow of the user of the washing machine. Now with the arrival of the microprocessor, you use a system solution. Buying a microprocessor off the shelf and including the knowhow within the software controlling the microcomputer. Now, if

normal, graphic understand of the invention, why people come to the conclusion


should also be patentable

and if we allow that, there is another aspect


if somebody copies the software and sells is independently, normally he could only be sued for indirect infringement because the software

kind of software can only be protected when


So, em, what is also accepted, and this is maybe the more difficult aspect, .. that the computer itself needs

software, so, modifying the internal functionality of the computer

the internal functionality

what keeps the computer

running, and keeps it

operating system


computer program or computer data structure program

an extension of this position

computer-implemented method needs to be distinguished from the computer program

actual performance

sequence of computer .. instructions?


run on a computer. So a computer program is not necessarily


further technical effect, whereas a method running on a computer is, according to [hitachi??]


computer, and would therefore




medium, a CD-ROM

the contents of the CD-ROM

we don't have many decisions, apart from those two

dealing with computer programs. We've only a handful, really, dealing with computer programs


a precursor, a precursor, a, uh, phase

intellectual activity


so it would in fact be an infringement of his

you quite often find

computer-implemented invention is a mixture of several, so called, non-technical aspects, and it's sometimes difficult to define which one

which one is the core or the most importan


computer implemented methods

an electrical circuit

deny the technical effect merely on the grounds???

the most imporant part of the whole production process

to allow a protection for an intermediary

more and more important technology


one of the marks

300,000 miles

test it virtually one year, and it works

and another crowd have a product

another decision by another board

method of confining optical

first one

now, business methods, financial transactions, abstract economic

do not have technical character and therefore do not overcome this hurdle

technical concepts, which have never been considered


situation UK in 1623 where monopolies were forbidden because they were used as some kind of priveleges which were favourable to the king

but in general, non-technical concepts

enter the technical domain only with the arrival of the computer, so that they may be computer implemented.

concept, with the aid of standard hardware does not overcome the second.

and would allow … would allow to overcome the first hurdle, an abstract process


overcome the

aspects .. incurring .. excluded aspects of computer related business

hardware, and or software,

which contributes to the technical character of the solution to a technical problem

information, functional data structures .. distinguished from .. content and information that may have technical character


technical system in which it is

graphic user interfaces. And graphic user interfaces, I would say


that graphic

implications of internal

of a technical system

OK, I do not want to say more about that

I believe the .. is still under

if any rules are excluded

Now I come, I finally come to the referral

in order to ensure uniform application of the rule


of the European Patent Office

have given different positions on their

the questions, and I want to read them, and you may know them

all of these decisions

how, how it was

in the press communication

on how come the

are to be applied

are mainly have to do with the first hurdle

you may understand that I have not



what I can


this is all, all of this is controlled by the rules of procedure of the Enlarged Board of Appeal


Take all of their decisions

excluded from the Enlarged Board of Appeal

and two technical members

competition is normally

the Chairman, from Italy, he made after

having informed the other members and heard the other members he may replace

members of the Enlarged Board of Appeal. This has been done

five legal members. There are also five legal members, two have been replaced by external legal members. This is Mr. Sharon??? now presiding judge of the federal court of justice and Mr. Dorin?? a high court judge


These are the two external members. We have

we have Mr. ???? rapporteur

we have Mr. Sythe???? former French judge


the technical members, the permanent technical members have also been replaced

they have been replaced by

from the other computer board, acting as

acting as Chairman, to bring you something

So, what are we doing? We are saying

is internally

on the outcome



now, what are the options for the Enlarged Board of Appeal? The options are quite straightforward

because there is no divergence or the divergence is due to

because there is only one board involved or it is not a fundamental question

a legal question

other options would be to look at, ah, very strictly

questions of

have finally


to look at the whole system.

time frame is going to be

we might get a decision by the end of this year.

may take longer.

What will be the impact of the opinion? Of course, the board is, will be obliged to follow the opinion


last board of appeal, which may turn out to be

in this field

of further recall

but, more or less, the

to wait

one may be reminded of an old fairy tale

[quote from Gulliver's travels]