The applicant sought a European patent for a method of calculating and controlling pensions benefits. The claim was ‘1. A method of controlling a pension benefits program by administering at least one subscriber employer account on behalf of each subscriber employer’s enrolled employees each of whom is to receive periodic benefits payments, said method comprising:
providing to a data processing means information from each said subscriber employer defining the number, earnings and ages of all enrolled employees of the said subscriber employer;
determining the average age of all enrolled employees by average age computing means;
determining the periodic cost of life insurance for all enrolled employees of said subscriber employer by life insurance cost computing means; and
estimating all administrative, legal, trustee, and government premium yearly expenses for said subscriber employer by administrative cost computing means; the method producing, in use, information defining each subscriber employer’s periodic monetary contribution to a master trust, the face amount of a life insurance policy on each enrolled employee’s life to be purchased from a life insurer and assigned to the master trust and to be maintained in full force and effect until the death of the said employee, and periodic benefits to be received by each enrolled employee upon death, disability or retirement.’
Held: A computer programmed to carry out the unpatentable method was not within the categories of Art.52(2) – the fact that it was a physical thing (‘concrete’) was enough to take the case out of Art.52(2). It was really a method of doing business. It also rejected the apparatus claim. It acknowledged the ‘technical effect’ test: ‘According to the case law of the boards of appeal the use of the term ‘invention’ in Article 52(1) EPC in conjunction with the so-called ‘exclusion provisions’ of Article 52(2) and (3) EPC, which mention subject-matter that ‘in particular shall not be regarded as inventions within the meaning of paragraph 1’, is understood as implying a ‘requirement of technical character’ or ‘technicality’ which is to be fulfilled by an invention as claimed in order to be patentable. Thus an invention may be an invention within the meaning of Article 52(1) if for example a technical effect is achieved by the invention or if technical considerations are required to carry out the invention . . Claim 1 of the main request is, apart from various computing means mentioned in that claim, directed to a ‘method for controlling a pension benefits program by administering at least one subscriber employer account’. All the features of this claim are steps of processing and producing information having purely administrative, actuarial and/or financial character. Processing and producing such information are typical steps of business and economic methods.
Thus the invention as claimed does not go beyond a method of doing business as such and, therefore, is excluded from patentability under Article 52(2)(c) in combination with Article 52(3) EPC; the claim does not define an invention within the meaning of Article 52(1) EPC.’ and ‘The feature of using technical means for a purely non-technical purpose and/or for processing purely non-technical information does not necessarily confer technical character to any such individual steps of use or to the method as a whole: in fact, any activity in the non-technical branches of human culture involves physical entities and uses, to a greater or lesser extent, technical means. . . Methods only involving economic concepts and practices of doing business are not inventions within the meaning of Article 52(1) EPC.
A feature of a method which concerns the use of technical means for a purely non-technical purpose and/or for processing purely non-technical information does not necessarily confer a technical character to such a method.’
Citations:
T0931/95
Cited by:
Cited – Aerotel Ltd v Telco Holdings Ltd and others, In re Patent Application GB 0314464.9 in the name of Neal Macrossan Rev 1 CA 27-Oct-2006
In each case it was said that the requested patent concerned an invention consisting of a computer program, and was not therefore an invention and was unpatentable. In one case a patent had been revoked on being challenged, and in the other, the . .
Reasoning disapproved – Cappellini and Bloomberg, Re PatC 13-Mar-2007
The applicants appealed rejection of their applications for patents. The comptroller-general had said that patents were in respect of computer programs excluded from registration.
Held: The appeals failed. There was no relevant technical . .
Lists of cited by and citing cases may be incomplete.
European, Intellectual Property
Updated: 10 May 2022; Ref: scu.245714
