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Patent World • November 2001

Ifyou wish to contribute anynews or diary items contaet

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the Vicom decision (T208/84). The Vicomcase related to digital image processing im­

plemented using a computer program andin this decision the requirement for a tech­

nical effect to avoid the computer programexclusion was established. Over the yearsmany decisions have followed this lead andthe test for identifying patentable subjeetmatter by identifying a technical effect hasbecome well established.

An important decision on business meth­ods in 1994 was the Sohei decision

(1769/92). The Sohei application was for acomputer system for a plurality of indepen­dent types of management, such as financia!management and inventory management,which used a single displayed transfer slip forme input of data to be managed.The features

of the invention were carefulJy considered to

identify that the use of the transfer slip re­

quired technical considerations thus resultingin a technical contribution. It was decided that

the invention was not a method of doingbusiness as such even though the end resultwas an improved business method. This ap-­proach to treating business methods imple­mented by a computer program the same asany other method is confirmed in a reportpublished by me EPO in June 2000 (report

on Comparative Study carried out underTrilateral Projeet B3d,Appendix 6 available atwww.european-patent-office.orgltws/appen­dix6.pdf) which stated "insofar as the schemefor examination is concemed no distinctions

are made on the basis of the overall purposeof the invention i.e. whether it is intended to

filla business niche, to provide some new en­tertainment, ete ... ".

The most recent decision of the EPO in

this field is the Pension Benefit SystemsParmership decision (T931/95). ThePension Benefit Systems Partnership appli­cation c1aimed both a method and appara­tus for controlling a pension benefit

program for processing and producing in­

formation comprising administrative, actu­arial and/or financial information. The

method claims were rejeeted as being di­reeted to a method of doing business assuch even though technical means wereused. The mere use of technical means does

not bring about a technical contribution. Butin this ground-breaking decision, the appa­ratus c1aims were not rejeeted as excludedsubjeet matter since the business methodexclusion was considered to be limited

only to method c1aims. The apparatus

The Divergenee ofApproaeh to BusinessMethod Patents byth~ UK and EuropeanPatent Offices

TheLaw

.EUJ:Qpe.

The EuropeanPatent Office approachThe approach of the EPO has its roots in

The European Patent Convention (EPC)and the 1977 UK Patents Aet were drafted

to be substantially me same in the interestof harmonisation of patent law acrossEurope.Article 52 of the EPC and SectíonI of the UK Patents Aet include almost

identical wording in which a method of

doing business as such is defined, amongother things, as an invention that is not

patentable. The words as such have led tothis exclusion being given a fairly narrow in­terpretation. In practice, the law is being ap­plied differently by me UK Patent Officeand the EPO and the test for determining ifthe invention is for excluded subjeet mat­ter is different in the two offices.

A recent decision by the European Patent

Office (EPO) and a recent decision by theUK Patent Office show a dear divergenceof approach between the two offices. Oncethe EPO is satisfied that the technical effect

requirement is meto it does not give anyconsiderarion to the end result produced

by the invention.ln contrast, the decision ofthe UK Patent Office followed the

authority of the UK Court of Appeal ín theMerrill Lynch case in which theidentification of a technical effect is notdeterminative. The end result of the

invention is the deciding faetor and thesubstance of the invention is studied to

determine jf the end result is simply amethod of doing business. These twodifferent approaches lead to differing scopeof allowable subject matter and these latest

decisions confirm that patent protectionfor business methods and software relatedinventions is more difficult to obtain before

the I)K Patent Office than the EPO..

Debbie SpraggTel:44 (0)2074532145,

emaif

debbie.spragg@informa.com

Brazil is now discussing some changes to its

legislation related to Transfer Pricing. Thenew BiII No. 4695 of May 16, 200 I pro­posed by Deputy Nelson Proença was sentro the Foreign Relation and NationalDefence Commission on May 30th for itsappreciation.

Transfer Pricing in Brazil is presendyruled by Law 9,430 of December 27, 1996.Under this law, intellectual property rights

are expressly excluded trom the applicabil­

ity of transfer pricing rules.The proposed BiII however is induding

intelleetual property rights as subjeet mat­ter of transfer pricing rules. However; underSection 35 of the BiII,the total payment ofroyalties related to intelleetual propertyrights must be less than 5% or less than 10%of the net sales. For companies that are re­ceiving incentives under the technology de­velopment program provided by the Law

8,661 of 1993 are excluded from the applic­ability of transfer pricing.

If this BiII is passed and enaeted by thePresident, ali companies that are presentlyengaged in Trademark, Patent, CopyrightLicenses and Technology Transfer andTechnical Assistance Agreements must re­view their agreements to be in compliancewith the new rules.

This BiII however is not revoking ali theprevious laws that regulate the payment andremittances of royalties related to intellec­tual property rights and must be one of thetopics to be addressed to the Congresso

Intelleetual PropertyRights Transfer PricingRules in Brazil _..

Erica Aoki, Partner, Moreira Uma, Royster& Ohno with Steel Hector E Davis

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