Currently viewing the tag: "problem-solution-approach"

(parts of the) cover page of a related EPO brochure

During the past 15 years the Boards of Appeal of the EPO have developed a consistent case law as to the pragmatic problem/solution approach for assessing patentability pursuent Art 52 -57 EPC. In our earlier overview on

EPO case law regarding patentability of software inventions,

to which this posting is meant as a more practical continuation, we briefly characterised the EPO’s main examination approach:

[M]odern case law [of the EPO Boards of Appeal on software inventions], especially the suggestion in T 1173/97 that the “technical contribution” is an inventive step consideration and the observation in some early cases (e.g. T 38/86 and T 65/86) that the “inventive contribution” must lie in a “field of technology”, almost naturally lead to the problem-solution approach as developed in T 641/00 (COMVIK) and T 258/03 (Hitachi) and theoretically justified in T 154/04 (Duns).

This approach nowadays is the crucial test to differentiate between a technical contribution implementing a non-technical concept (e.g. a business method) and an inventive contribution in a technical field (e.g. an embedded control software). Its general idea is that only the technical features of a claim may be taken into account for assessing inventive step, while the non-technical features form a basis for formulating the underlying problem, with the effect that the non-technical features may render the technical solution obvious.

This approach is widely accepted among practitioners as enhancing legal security for applicants since it represents a comprehensible benchmark against which EPO decisions are subject to verifiction.

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Amazon’s so called “One-Click Patent” is one of the most controversially discussed software inventions ever. The term, which nowadays is used as a cipher for a prototypical business method patent, was originally coined for US 5,960,411 titled “method and system for placing a purchase order via a communications network” (filed 12 Sep 2007, granted 28 Sep 1999; pdf), which has been enforced against competitor Barnes & Noble and licensed to Apple.

The respective teaching enables easy Internet shopping in that a customer visits a website, enters address and payment information and is associated with an identifier stored in a “cookie” in his client computer. A server is then able to recognize the client by the cookie and to retrieve purchasing information related to the customer, who thus can buy an item with a “single click”.

EP Parent Application: The first “1-click” application in Europe, EP 0 909 381 A2, related to an Internet-based customer data system and claimed a “method for ordering an item using a client system“. The application has been withdrawn on 08 June 2001 in view of approaching oral proceedings that had been summoned by the Examining Division with a negative preliminary opinion saying that the claimed teaching was not inventive over prior art document D3 (Baron C: “Implementing a Web shopping cart”, Dr. Dobbs Journal, Redwood City, CA, 01.09.1997). During the proceedings, Dutch Internet bookseller BOL.COM supported the Examining Division by a number of third party observations according to Art. 115 EPC, all of which pointing the Examining Division to the relevance of D3 (see e.g. here or here).

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In the past two years we have seen a number of quite interesting decisions of the German Federal Court of Justice (Bundesgerichtshof; BGH) dealing with patent-eligibility of software-related inventions.

The first decision in the row was X ZB 22/07 („Steuerung für Untersuchungsmodalitäten“, “Control of Examination Modalities”) of 20 January 2009, in which the BGH analysed the circumstances under which an embedded software represents statutory subject-matter (see comments). In this decision the BGH sketched a two-step approach to examine whether or not an invention is sufficiently “technical” to qualify for patent eligibility:

  1. Is the subject-matter a “technical invention” as required by § 1 I PatG ?
  2. Does the invention fall under the exclusion of a “computer programs as such” as requited by § 1 III No. 3, IV PatG ?

An additional third step completes the examination scheme:

  1. Do the technical features render the invention novel and inventive over prior art?

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