Art. 52(2)(a) EPC excludes "scientific theories" from the patentable inventions. For example, the physical theory of semiconductivity is not patentable. However, a new semiconductor device based on that theory may be patentable (EPO Guidelines, G-II, 3.2).
In T 1798/13 the Board regarded methods of forecasting the weather to be a mere "scientific theory" rather than a technical invention.
The appeal in this case is against the decision of the examination division to refuse EP 05796344.9.
Claim 1 of the Main Request reads:
"1. A method for forecasting a value of a weather-based structured financial product for steering of an optimal weather derivative portfolio based on specified weather measures comprising temperature and/or precipitation and/or hours of sunshine and/or heating degree days and/or cooling degree days and/or wind speed retrieved from a weather data measuring and monitoring system comprising: [...]"
According to the Examining Division
(and the Board agrees) the invention includes two aspects. One is the improvement of weather forecast data, the other aspect is to translate this improved data into the value of "structured financial product".
Not surprisingly, the Board found that the second aspect, i.e., determining a value of a structured financial product, is purely financial and not technical.
More interesting is in my view the fact that the Board considered the other aspect, i.e., improving the quality of weather forecast data non-technical. They considered this to be a scientific theory in the sense of Art. 52(1) EPC. Regarding the technical or non-technical character of a modeling the weather, they stated:
"2.10 The Board judges that it is not [technical]. The "weather" is not a technical system that the skilled person can improve, or even simulate with the purpose of trying to improve it. It is a physical system that can be modelled in the sense of showing how it works. In the Board's view, this kind of modelling is rather a discovery or a scientific theory, which are excluded under Article 52(2)(a) EPC."
I find this is remarkable. The Board stresses the point that the weather, which is here modeled, is not an entity which the skilled person "can improve". The Board thus seems to suggest that modeling systems, which the skilled person cannot improve, are merely intellectual exercises with no technical consequence. Therefore, the Board regards such modeling a "discovery or scientific theory".
They quote from a German EPC commentary ("Benkard"):
"2.11 As Mellulis puts it (see Benkard, EPC, 3rd ed. (2019) on Art. 52, paragraph 232, translation from German by the Board): like the discovery, scientific theories also contain instructions for (technical) action. They are an attempt at a rational explanation of observed or expected processes based on natural laws or logical considerations. They are frequently based on a knowledge, expectation or presumption of laws, which can also be based on empirically gained knowledge. In terms of content, they resemble discoveries; there is some overlap here. They are not patentable even if they provide an explanation for activities that are in use."
Adopting this notion, the Board found that none of the two aspects of the invention (weather forecast and estimating the value of a financial product) were technical and could thus not contribute to inventive step. As a result, claim 1 lacked inventive step in view of a notoriously known standard computer. All details of the method's implementation (claim 1) were given to the technically skilled person in terms of a requirement specification.
Reading between the lines, it seems that the Board had a hard time deciding this case. I take this from the fact that the Board did not decide at the end
of the oral proceedings. Instead, they announced that the decision will be given
in writing (see point VII. of Facts and Submission). Apparently, they could not decide on the spot.
The full text of the decision can be found here.
No comments:
Post a Comment
All comments will be moderated.