Classification method/COMPTEL – T 1784/06 – 21 September 2012

In this decision, the appellant criticises the COMVIK approach on several points. The Board disagrees. With regard to inventive step, according to the Board, there is a lack of “technical purpose” according to T1227/05.

Information from the author: “technical purpose” is no longer sufficient according to decision G1/19 for non-technical features to make a technical contribution. According to current case law (as of August 2024), in such a case a further or intended or implied technical use is required.

Object of the Invention:

  • data records, e. g. the duration and data volume of a telecommunication connection, that are sorted into service classes, in particular for rating and billing purposes
  • identifying the class of a service from a data record forms a performance bottleneck once the number of services is increased to the thousands
  • the application seeks to provide a method which can handle large numbers of service classes more efficiently than the conventional use of conditional statements does
  • the solution is based on reducing, as a first step, a large number of service classes into specific sets
  • these sets are then intersected in a final step
  • this algorithm classifies data records more efficiently

Board (COMVIK approach):

  • it would appear paradoxical to the Board to recognise an inventive step on the basis of a non-technical innovation (such as an organisational, administrative, commercial or mathematical algorithm) having no technical implication other than the (obvious) desire for its implementation on a general-purpose computer

Appellant I (COMVIK approach):

  • 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
  • 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

Board I (COMVIK approach):

  • 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
  • another example is the validity of a priority claim which has to be checked independently of novelty and inventive step requirements, whereas novelty and inventive step cannot be established independently of the validity of a priority right.

Appellant II (COMVIK approach):

  • regarding the Board’s insistence on 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) to point out that “a non-technical problem can have a technical solution

Board II (COMVIK approach):

  • 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 on which the present case hinges

Appellant III (COMVIK approach):

  • another argument of the appellant refers to the legislative history of the EPC (travaux préparatoires) which is said not to provide any explicit support for a cumulative application of Article 52(2) EPC and Article 56 EPC 1973

Board III (COMVIK approach):

  • the restriction of substantive patent law to technical subject-matter is so self-evident that the founding fathers of the EPC did not even mention that requirement in the original (1973) version of Article 52(1)
  • the explicit clause “in all fields of technology” was not added to Article 52(1) until the Diplomatic Conference in the year 2000 harmonised the Article with the TRIPs treaty
  • nevertheless, Article 52(1) EPC has always been understood as referring to technical inventions

Board IV (inventive step):

  • as the algorithm is a mathematical (inter alia Boolean) method and mathematical methods as such are deemed to be non-inventions (Article 52(2)(3) EPC), a technical character of the algorithm could be recognised only if it served a technical purpose (T1227/05)
  • however, the automatic classification of data records according to claim 1 serves only the purpose of classifying the data records, without implying any technical use of the classification
  • the claim covers any non-technical (e.g. administrative or commercial) use of the classified data records
  • in the light of the description, the classification method prepares rating and billing procedures
  • the Board does not consider the result of the algorithm — a set of classified data records — as technical

Board V (inventive step):

  • enhanced speed of an algorithm, as compared to other algorithms, is not sufficient to establish a technical character of the algorithm (T 1227/05)
  • if a computer-implemented algorithm runs more quickly, the resulting saving in energy is a technical effect inherent to the normal interaction of software and hardware, i.e. it is not a “further” technical effect of the algorithmic program controlling the computer (T 1173/97)
  • the claimed algorithm may allow a data record to be processed in a parallel computer architecture as the various fields of a data record can be judged separately in a first level of processing
  • however, claim 1 is not limited to an implementation on a parallel hardware structure
  • in fact, the application as a whole is silent on parallel data processing (Parallel processing has been mentioned by the decision under appeal and addressed by the statement setting out the grounds of appeal)
  • –> no inventive step

Classification/BDGB ENTERPRISE SOFTWARE – T 1358/09 – 21 November 2014

This decision concerns the patentability of the classification of text documents. In this context, the Board clarifies whether the determination of claim features contributing to the technical character is made without reference to the prior art.

Object of the Invention:

  • the invention is concerned with the computerized classification of text documents
  • this is done by first building aclassification model” and then classifying documents using this classification model

Board I (sufficiency of disclosure):

  • the application does not explain several techniques in detail, and claim 1 does not specify any measure being taken to ensure linear separability
  • it may therefore be questioned whether the application is sufficiently disclosed over the whole scope claimed
  • however, the Board considers that this issue does not prevent it from examining for the presence of an inventive step
  • given the outcome of this examination the question of sufficiency of disclosure need not be answered

Board II (inventive step):

  • claim 1 defines a method for classifying text documents essentially in terms of an abstract mathematical algorithm
  • a mathematical algorithm contributes to the technical character of a computer-implemented method only in so far as it serves a technical purpose (T 1784/06)
  • in the present case, the algorithm serves the general purpose of classifying text documents
  • classification of text documents is certainly useful, as it may help to locate text documents with a relevant cognitive content, but does not qualify as a technical purpose
  • whether two text documents in respect of their textual content belong to the same “class” of documents is not a technical issue
  • the same position was taken in T 1316/09 which held that methods of text classification per se did not produce a relevant technical effect or provide a technical solution to any technical problem

Appellant I (inventive step):

  • the claimed invention could not be seen as the straightforward implementation of something which had been done manually before
  • when manually classifying a text document, a human being would read it through and assign a particular class to it on the basis of his understanding of the document
  • as was known from the domain of cognitive psychology, he would not consider all of the words in the document; words near its beginning would often already provide a clear indication of its semantic topic
  • the claimed automatic classification method on the other hand involved precise computation steps which no human being would ever perform when classifying documents
  • the claimed computerised method was highly efficient, in particular in comparison to classification methods disclosed in documents cited in the international search report

Board III (inventive step):

  • the Board agrees that a human being would not apply the claimed classification method to perform the task of classifying text documents
  • the Board accepts that the proposed computerised method may be faster than classification methods known from the prior art
  • however, the determination of the claim features which contribute to the technical character of the invention is made, at least in principle, without reference to the prior art (T 154/04)
  • it follows that a comparison with what a human being would do or with what is known from the prior art is not a suitable basis for distinguishing between technical and non-technical steps (T 1954/08)

Board IV (inventive step):

  • nevertheless, not all efficiency aspects of an algorithm are by definition without relevance for the question of whether the algorithm provides a technical contribution
  • if an algorithm is particularly suitable for being performed on a computer in that its design was motivated by technical considerations of the internal functioning of the computer, it may arguably be considered to provide a technical contribution to the invention (T 258/03)
  • however, such technical considerations must go beyond merely finding a computer algorithm to carry out some procedure (G 3/08)
  • in the present case no such technical considerations are present
  • the algorithm underlying the method of claim 1 does not go beyond a particular mathematical formulation of the task of classifying documents
  • the aim of this formulation is clearly to enable a computer to carry out this task, but no further consideration of the internal functioning of a computer can be recognised

Appellant II (inventive step):

  • the claimed method provided more reliable and objective results than manual classification, since it was independent of the human subjective understanding of the content of the documents

Board V (inventive step):

  • the Board does not contest that the claimed classification method may provide reliable and objective results, but this is an inherent property of deterministic algorithms
  • the mere fact that an algorithm leads to reproducible results does not imply that it makes a technical contribution
  • since the mathematical algorithm does not contribute to the technical character of the claimed method, an inventive step can be present only in its technical implementation
  • the technical implementation of the mathematical algorithm being obvious
  • –> no inventive step

Information from the author: “technical purpose” is no longer sufficient according to decision G1/19 for non-technical features to make a technical contribution. According to current case law (as of August 2024), in such a case a further or intended or implied technical use is required.