The importance of pointers to technical effects - lessons from T 0698/19
As ever more fields of technology benefit from computerisation, more and more applicants are finding themselves caught by the EPO’s rules on “mixed-type” inventions. These include a mixture of features which the EPO considers to be “technical”, and features which the EPO considers to be “non-technical”. A recent decision by the Boards of Appeal in T 0698/19 provides an example which neatly illustrates a number of key considerations when dealing with such inventions.
The invention in T 0698/19 concerned the automation of the assessment of insured loss claims. Techniques have been known since the 1960s to partially automate the assessment through parametrisation of the insurance claims. These techniques, while increasing efficiency, came at the loss of accuracy. The claimed approach seeks to overcome this problem by using a two-part system, which uses the known parameterisation approach for the aspects of the insurance claims that are readily parameterisable, and uses pattern matching on historical data for the aspects of the insurance claims which are less readily parameterisable. In this way the entire insured loss claim can be automated in an accurate and efficient manner.
Under the EPO’s assessment of mixed-type inventions, known as the “COMVIK” approach, the ultimate business aim of automatically handling insured loss claims would be considered as being non-technical, and hence unable to contribute to inventive step. However, having a non-technical aim does not disqualify an invention from patentability, and the computerised implementation (for example, the two-part system) can, in principle, be considered to involve technical aspects capable of supporting an inventive step.
In the appeal, the Board of Appeal summarised the appellant’s position as follows: “(a) Splitting an insurance case into a parameterizable and a non-parameterizable part and treating the non-parameterizable part by pattern matching with historical data and seamless integration was technical and had a technical effect that could only be achieved by the technically skilled person through inventive activity.
(b) When dividing a claim into technical and non-technical features, the notional business person could not be assumed to have these technical skills.”
In reaching its decision, the Board of Appeal emphasised a number of important aspects that serve to guide applicants in arriving at patentable claims. A helpful aspect was that the Board of Appeal fully endorsed the concept of a notional “business person”, who acts as the non-technical counterpart to the (technically) “skilled person”. The Board of Appeal confirmed that the “business person”, in contrast to, for example, a real world manager, is completely devoid of technical understanding: “In the case of a separation of technical and non-technical features, a feature with a technical effect could not be attributed without justification to the notional business person who, in contrast to the real business person, had no technical understanding at all.”
This is important, as it requires that all technical aspects, even those which would be known by a real-world manager, must be taken into account by an EPO examiner when considering inventive step.
However, when considering the “seamless integration” of the technical implementation, the Board of Appeal noted that while such a feature could be regarded as a technical feature with a technical effect, the accompanying description did not sufficiently point to the technical effect of the feature now relied upon by the appellant such that this feature could not be relied upon. Additionally, the Board of Appeal noted that the description did not provide technical detail of how the pattern matching of historical data can be implemented, such that a technical effect of this aspect could not be implied from the specification.
The overall decision is succinctly summarised in the headnote of the case which reads: “If non-technical features have both a technical and a non-technical effect, the technical effect must be taken into account when assessing inventive step, but the technical effect must be clearly derivable from the application as a whole (Reasons 3.6.4 (1)).”
So, the decision highlights a number of important practice points when prosecuting such mixed-type inventions at the EPO. In particular, this decision highlights the importance of making sure that your description as originally filed explicitly includes sufficient detail both on how technical aspects of your invention are implemented and, at least, pointers towards technical effects of the claims. While there is certainly scope to argue that technical effects are implicit from the description during prosecution, the applicant is on the back foot and is ultimately reliant on the examiner agreeing that these features are indeed implicit from the description. If you have any questions or concerns regarding this area your D Young & Co representative is here to help.