IP Cases & Articles

Assessing technical or non-technical inventiveness

Anyone who has experienced prosecuting inventions that include a combination of technical and non-technical subject matter at the European Patent Office (EPO) will likely agree that the entire process can be challenging and somewhat confused.

Applicants can sometimes find themselves in a situation where the examining division refuses to acknowledge the technical character of some of the claimed features and where previous decisions of the Boards of Appeal are fairly case-specific such that they are difficult to transpose to other fields of technology.

This recent case from the Board of Appeal, namely T 1463/11, stands out from the others because it also provides helpful guidance on how to separate technical aspects from non-technical aspects.

The application related to a system for conducting transactions and differed from the cited documents with regard to the location of authentication plug-ins. Specifically the plug-ins had been relocated from merchants' servers to a centralised system. The Examining Division had identified the problem solved by the invention as how to outsource the authentication of a commercial transaction to a third-party and had objected that the invention solved an administrative or business problem, not a technical problem.

The Board of Appeal disagreed with the Examining Division's finding and, beyond addressing the facts of this case (and deciding that the claims were inventive), also provided guidance to help differentiate technical aspects from non-technical aspects of a problem solved. The Board of Appeal noted in particular that to differentiate the technical problem from the non-technical requirements provided to the skilled person, a notional business person could be contemplated. What this notional business person would ask the (notional technical) skilled person to address would define the non-technical aspects of the problem.

The Board of Appeal made it very clear that this notional business person could not have any technical knowledge and would only be interested in the business and administrative features provided or problems solved. For example, in the case at hand, it did not matter to the (notional) business person where the plug-ins were provided, so long as the business and administrative functionalities were provided as expected.

The Board of Appeal illustrated the type of instructions the notional business person would give, such as: "Move the money from the payer's account to the payee's account". However the notional business person would not provide any technical guidance such as: "We should do this on the Internet"; "Let's do this by wireless"; or "We have a lot of processors, please use them to implement my business idea". Because such additional guidance is at least in part technical, these considerations are in the realm of the skilled person, not the business person. Accordingly these considerations cannot, and should not, be discarded when considering whether the claims provides a technical solution to a technical problem.

In many of these cases, the boundaries between technical and non-technical can be somewhat blurred and any guidance we can receive from the Boards of Appeal on how to make that boundary clearer is always welcome. In view of this new decision, one approach when looking at this type of invention can be to consider the problem solved by the invention (based on both the technical and the non-technical differentiating features) and to consider the following steps:

  1. What part of this problem is what the notional business/administrative person would try to address? This would help identifying the requirements defined by this notional person (sometimes called the 'requirements specification')
  2. The technical problem (if any) addressed by skilled person on the basis of the non-technical requirements provided by the notional business person would then defined the technical problem.

The problem-solution approach of the EPO can then be applied as usual.

Hopefully this approach would assist all parties and divisions of the EPO dealing with such mixed technical and business/administrative cases and would also assist applicants in cases where Examining Divisions discard mixed features without acknowledging their technical dimension.

Useful link

Jurisdiction: European Union
Decision level: Board of Appeal
Parties: CardinalCommerce Corporation
Date: 29 November 2016
Citation: T-1463/11
Decision: http://dycip.com/t146311

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