## Facts

- Hitachi, Ltd. sought patent protection for an automated Dutch auction method conducted over a computer network.
- The claimed method used technical components such as a server, client terminals, and electronic transmission and processing of bids.
- The claim steps largely reflected auction rules and pricing logic, with implementation performed by conventional computer/network means.
- The EPO Examining Division refused the application as a “method for doing business as such” under Article 52(2)–(3) EPC.
- Hitachi appealed to the EPO Technical Board of Appeal 3.5.1.

## Issues

1. Whether a method claim directed to an auction scheme implemented using a computer network is excluded from patentability as a business method “as such” under Article 52(2)–(3) EPC.
2. How to assess technical character when claims contain both technical features (computer/network implementation) and non-technical features (auction and pricing rules).
3. Whether, for inventive step under Article 56 EPC, non-technical features may contribute to the inventive step analysis when the technical implementation is conventional.

## Decision

- The Board held that a claimed method involving technical means (e.g., a computer or network) has technical character and is not excluded from being an “invention” under Article 52(2)–(3) EPC.
- The Board nevertheless dismissed the appeal because the claimed subject matter lacked inventive step under Article 56 EPC.
- In the inventive step analysis, the Board treated the auction rules and economic logic as non-technical and therefore incapable of supporting an inventive step.
- The remaining technical aspects were considered conventional implementation using standard computer/network technology, rendering the claim obvious.

## Legal Principles

- A claim is not excluded “as such” under the EPC’s business-method exclusion if it includes at least one technical feature (technical means), such as computer or network implementation.
- For inventive step, only features that contribute to the technical character of the claim—by solving a technical problem with a technical effect—can support non-obviousness.
- Purely economic, administrative, or business rules do not count toward inventive step, even if expressed as method steps executed on a computer.
- Implementing a non-technical scheme on conventional computer/network technology, without a further technical contribution, is generally insufficient to establish inventive step.

## Conclusion

The Board treated computer implementation as sufficient to clear the “business method as such” exclusion but denied the application because the alleged advance lay in non-technical auction rules and the technical implementation was routine, resulting in no inventive step.


Hitachi, Ltd. v. Eur. Patent Off., T 0258/03 (Tech. Bd. App. 3.5.1 2004)