Immediate Refusal – When can the European Examining Division refuse an application?

Friday afternoon: office debate on the European Patent Convention (EPC).

The question that arose was: when should you request Oral Proceedings in a written response to the European Patent Office?

With the European Patent Office providing a form of “examination” at the search stage (the “Written Opinion”), it is now mandatory to respond to any objections raised therein before “examination” officially begins (via Rule 70a EPC). In this response should you request Oral Proceedings?

The question then becomes: can the Examining Division refuse a European patent application in the “first” examination communication under Article 94 EPC?

For

The case law that was laid down under the old rules (i.e. with no “Written Opinion”) held that a decision to refuse could legitimately be issued by the Examining Division as a second communication, i.e. no “further” communication under Article 94(3) EPC (nee Article 96(2) EPC 1973) was necessary. See the link for more details. This generally applied to cases where the applicant made no effort to address any objections raised in a first communication.

If these cases are applied to the present set of circumstances, where the “Written Opinion” is practically a first “examination” communication, it could be argued that the Examining Division can legitimately refuse the application without issuing an official examination communication (e.g. with a second communication relating to substantive issues). It could be argued that the right to be heard, set out in Art. 113 EPC is met, as the applicant had the chance (moreover had) to respond to the Rule 70a EPC communication.

However, if this is the case, and a request for Oral Proceedings is made in the response to the R.70a EPC communication, is the request made to the Examining Division or the Search Division? A request to the Search Division may not be valid as the Search Division cannot refuse the application. As the Examining Division “take account” of the response (see here), does this pass on the request in a valid manner?

Against

Article 94(3) EPC states that:

 “the Examining Division shall invite the applicant, as often as necessary, to file his observations and…to amend the application”.

Now the “shall” in this provision seems to suggest that at examination the applicant should have one opportunity to file observations and/or amend the application. This would rule out a decision to refuse as the first examination communication.

However, the “as often as necessary” complicates matters – if the applicant has not responded to substantive issues in a Written Opinion at the Rule 70a EPC stage, is it necessary to give them another chance? Does “as often as necessary” mean one or more times (consistent with “shall“) or does it make the “shall” conditional (zero or more times)?

If anyone is aware of any case law or guidance that clears this up please let me know.

Case Law Review – T 972/07

Case:

T 0972/07

Claimed Subject Matter:

System and method of assisting goods collection (e.g.  to salvage the lens in disposable cameras).

Comments:

The appellant argued that the invention related to the recycling of goods, which they believed was technical.

The Board of Appeal disagreed. They argued that the invention was essentially concerned with logistical matters of collecting and distributing goods prior to the recycling process. It is those logistics that had to be examined for technical effect, not the recycling process, which is not claimed. In the present case, those logistics were found to be administrative in nature and lacking in technical character. The remaining technical features were simply well-known computers and databases. Any dependent claims related to improvements to the administrative method rather than the technical features.

This case can be distinguished from T 1411/08 wherein the case was remitted to the department of first instance to perform an additional search on the basis that the Examining Division did not convincingly demonstrate that certain technical features were “notorious”

Case Law Review – T 907/09

Case:

T 907/09

Claimed Subject Matter:

Valuation of a futures contract.

The application relates to data processing systems and methods for assessing the failure risk of a bundle of constructs that may individually fail. A resource amount is determined so as to counterbalance the failure risk when it is transferred. The risk assuming entity receives the resource amount.

Comments:

The claimed system is defined functionally in terms of means for storing and processing spread values and for continuously calculating a resource amount which reflects a value of a futures contract (which is based on a basket of credit default swaps). The claim is not limited to a technical field of application; on the contrary, its final paragraph emphasises a commercial goal.

The Board does not see any technical effect in knowing the resource amount or failure risk of a bundle of credit default swaps. The overall effect of the claimed system is that a mental, mathematical, commercial or administrative result is provided: What premium does the owner of the bundle have to offer so that another market participant is willing to take over the failure risk of the bundle?

Case Law Review – T 1261/08

Case:

T 1261/08

Claimed Subject Matter:

Electronic trading – system for settling over the counter trades.

Whether a trade will be settled bilaterally or through clearing depends on the preferences of the party to accept the offer. If the party making the offer has bilateral trading closed with a particular counterparty and the counterparty does not permit cleared trading of the product, the product will show up as red on the trading screen. If trading is possible, the product offer will show up as white. The colour coding acts as a means for indicating whether trading is possible while preserving the parties’ anonymity.

Comments:

The Board confirmed that business aspects of an electronic exchange, such as parties’ trading preferences, do not constitute a technical contribution and, thus, do not enter into the examination for an inventive step.

However, displaying data indicative of the availability or unavailability of a computer-implemented function may be considered as a technical feature independent of any cognitive or aesthetic aspect of its presentation and independent of any business aspect of the underlying computer-implemented function. The technical character of the implementation of such an indication is not wiped out by its commercial goal.

Despite this, a feature of binary colour coding, as found in the claim in question was, in the technical context of user terminals, a notorious way of indicating the availability or unavailability of a computer-implemented function. In addition, there could be an argument that it related to a presentation of information as such.

The appellant also made reference to a granted case in the field of transaction data processing. The Board dismissed this – a granted patent is not a case law precedent and so should not be commented on or compared with the case in question.

Case Law Review – T 2217/08

Case:

T 2217/08

Claimed Subject Matter:

Detection of files that do not contain executable code (Microsoft).

The claim was found to differ from the prior art by the fact that:

a. parsing comprises the step of parsing said input file with all the component parsers, said parsing continuing even if a component parser has already recognized said file format;

b. the compound parser is configured to allow extension by addition of a new component parser to the compound parser, the new component parser recognizing a further file format and recognizing executable code within the further file format and

c. the input file is stored only if no executable code has been found.

Comments:

The Board of Appeal debated whether a step of “parsing” per se had technical character. They concluded that it did not necessarily rely on technical considerations or have technical effects – i.e. it may lack a technical character in certain cases.

In the case in question the appellant added a concrete step of “storing” based on the output of the “parsing” step. The Board of Appeal concluded that the storage of a file was a technical step that provided a further technical effect. This could then lend technical character to the preceding “parsing” step.

Case Law Review – T 0042/10

Case:

T 0042/10

Claimed Subject Matter:

Determining relative skills of players (Microsoft).

The invention models performance by way of probability distributions and factor graphs.

Comments:

This case is interesting as  the Board of Appeal make reference to Gale’s Application [1991] RPC 305, a UK Court of Appeal case that considered an improved method of evaluating a square root. The Board took a similar approach to Lord Justice Nicholls in the UK case, asking: 1) what does the method as a whole do, and does it produce an overall technical result? And 2) if there is no overall technical result, does the method at least have a technical effect within the computer? If both questions are answered in the negative, no technical problem has been solved and there can be no inventive step. Using this analysis the Board concluded that certain features were not technical and that representing performance by probability distributions and using factor graphs were mathematical methods or abstract computer science concepts. As such there was no inventive step.


The Board came to a similar decision in T 1281/10, a related case. There it was found that “Bayesian learning” would be part of a non-technical method the skilled person would be required to automate.

Case Law Review – T 1459/10

Case:

            T 1459/10

Claimed Subject Matter:

Upgrading programs in a wireless communication system – i.e. upgrading TV or set-top box software (Samsung).

The claimed device differs from the cited art by:

(a) the means for downloading upgrade program code from a memory card, and

(b) the device is one of a set-top box and a television and the other device is the other one out of a set-top box and a television.

Comments:

Upgrading the software of a (stand-alone) television or set-top box is merely a specific example of the general case of a wireless communication system having a program update function, as is indeed apparent from the introduction to the description.

The limitation in claim 1 to the claimed device being a television or a set-top box only serves to specify the type of the device which is to be upgraded without implying additional technical features or requirements.

Such a limitation does not lead the skilled person to consider exclusively prior art in the field of upgrading software of a television or set-top box since, as noted above, there is no technical relationship between the device being specifically a television or a set-top box and the features in claim 1 relating to the upgrade of software, i.e. the means for downloading upgrade program code, the configuration of the upgrade program having first, second and a common upgrade programs, the configuration of the device to upgrade itself using the first and the common upgrade programs and comprising transmission means for transmitting the second and the common upgrade program to the other device.

Case Law Review – T 1954/08

Case:

T 1954/08

Claimed Subject Matter:

Predicting marketing campaigns using customer-specific response probabilities and response values (SAP).

The application seeks to improve on iterative algorithms which have been used to find a global maximum of a goal value of an envisaged marketing campaign. The iteration represents a “simulation” of the marketing campaign.

 Comments:

The use of computers for automation purposes is technical but commonplace.

A mathematical algorithm may become a technical means, i.e. it may go beyond a mere mathematical contribution, if it serves a technical purpose (T 1227/05-points 3.1 / 3.2).

Anticipating a maximum revenue or profit value of a marketing campaign is a commercial rather than a technical purpose. Therefore, the iterative mathematical algorithm of claim 1 remains a mere mathematical contribution which does not enter into the examination for an inventive step.

The Board agrees that the mathematical algorithm is not provided by the business manager who is only interested in an economic forecast on which he can base his decision for a marketing campaign.

However, the Board does not agree with the appellant’s conclusion that the algorithm is provided by the implementing programmer. In the absence of a technical overall effect and purpose, the algorithm is provided by a mathematician for mathematical and ultimately commercial purposes. Mathematical definitions do not become technical by defining commercial relationships.

In T 1227/05, point 3.2.5 it was held that processing speed was not a suitable criterion for distinguishing between technical and non-technical method steps since it was always possible to conceive of a slower algorithm than the one claimed. Similarly, the sole amount of memory a computer-implemented algorithm requires is equally unsuitable for determining whether or not a method step contributes to the solution of a technical problem since it is always possible to imagine an algorithm demanding more memory. Furthermore, whether or not an algorithm is similar to what a human being would do may play a role for the examination for inventive step, but this examination presupposes that the technicality of the feature has been established.

The Board concludes that the claimed method does not involve an inventive step over a general computerised method for processing data according to any existing mathematical algorithm and, thus, does not meet the requirements of inventive step.

Case Law Review – T 0844/09

Case:

T_0844/09

Claimed Subject Matter:

A computer-implemented method of operating a verification system (100) for verifying details of transactions drawn upon a financial account and a user’s authorization to use the financial account, the method comprising:

    • receiving from a user, at a user interface (102), information identifying (204) a financial account which the user desires to use, before the user may initiate an online transaction using the financial account;
    • generating (208) a series of verifying transactions involving the financial account, with selected details of the transactions not being known to the user;
    • initiating (210) the series of verifying transactions from a transaction processor (106);
    • storing in storage means within the verification system a first set of details of said series of verifying transactions;
    • receiving (216) from the user, at the user interface, a test set of details, to include specified details of evidence of the verifying transactions retrieved by the user from his or her financial account;
    • comparing (218) said test set of details to said first set of details; and
    • if said test set of details matches said first set of details, authorizing (220) the user to conduct online transactions using the financial account.

Comments:

Claim 1 concerns a computer-implemented method of operating a verification system for verifying details of transactions drawn upon a financial account and a user’s authorization to use the financial account. It thus relates to the field of schemes, rules and methods for doing business, which shall not be regarded as inventions pursuant to Article 52(2)(c) EPC. The corresponding features in claim 1 are deemed to be non-technical. The method of claim 1 is, however, defined to be computer-implemented and thus involves a computer as technical means, with a transaction processor, storage means and a user interface. The corresponding features in claim 1 are technical. Claim 1, thus, contains both non-technical and technical features and has technical character as a whole. Accordingly, the subject-matter of claim 1 is not a scheme, rule or method for doing business as such. The patentability of the subject-matter of claim 1 is, therefore, not considered to be excluded under Article 52(2) and (3) EPC (cf T 258/03 (OJ EPO 2004, 575), reasons 3 and 4).

Although verifying a user’s authorization to use a financial account may in certain cases involve an administrative procedure lacking technical character, this is not considered to be the case for the subject-matter of claim 1.

The verification of the user’s authorization to use a financial account in the present case, in particular the recognition that the retrieval by the user of transaction details offers a convenient and secure channel for forwarding transaction authentication information to the user, and the realization that “verifying” transactions can be generated and initiated to contain the transaction authentication information, relies on a technical understanding of the operation of the transaction system and its respective components and, thus, lies within the scope of a technically qualified person working in the field of computer-implemented online financial transaction systems and notably entrusted with the security aspects thereof.

Neither the business professional nor the administrative professional would, in the board’s judgement, be qualified and indeed able to devise any of these ideas as they lie outside their areas of competence.

Accordingly, the above consideration relating to the verification of the user’s authorization to use a financial account cannot be included in the formulation of the technical problem, contrary to what is essentially argued in the decision under appeal applying the principles of decision T 641/00 (cf above).

Still, the remaining features of claim 1 relating to a financial transaction refer to an aim to be achieved in the field of schemes, rules and methods of doing business, deemed to be non-technical, which may legitimately appear in the formulation of the problem (following T 641/00 above).

The appellant argued that since the user had to obtain transaction details online relating to a previous or test transaction, effectively he had to pass two levels of verification in order to use an account.

This argument is, however, not convincing. In conventional online-banking systems, involving the use of lists of Transaction Authentication Numbers (TAN) provided to the user like in D3, the user gains online access to a bank account via an internet site of his bank, typically by entering the bank account number and a password, thereby passing a first level verification. At this point, the user has eg direct access to his financial statements or can initiate a fund transfer for which a TAN will be needed. In the case envisaged in the application and covered by claim 1 where the transaction authenticator in the form of a set of details of evidence of a verifying transaction is available through online access to the financial statement of the bank account, a fraudulent user will, thus, have unrestricted access to the transaction authenticator. Accordingly, no second level verification needs to be passed in this case.

The objective problem to be solved relative to document D3, accordingly, is to provide transaction authenticators to the user in an alternative manner.

The claimed solution consists in:
– generating (208) a series of verifying transactions involving the financial account, with selected details of the transactions not being known to the user;
– initiating (210) the series of verifying transactions from a transaction processor (106);
– storing in storage means within the verification system a first set of details of said series of verifying transactions;
– receiving (216) from the user, at the user interface, a test set of details, to include specified details of evidence of the verifying transactions retrieved by the user from his or her financial account;
– comparing (218) said test set of details to said first set of details; and
– if said test set of details matches said first set of details, authorizing (220) the user to conduct online transactions using the financial account.

This solution is not rendered obvious by document D3.

Case Law Review – T 2464/09

Case:

T_2464/09

Claimed Subject Matter:

A system for automatically managing workflow, comprising:

    • a first computer arranged to receive an originating job request and job instructions from an authorized user, and to generate a job packet associated with-a digital file, wherein the digital file represents job input from the authorized user, and
    • a second computer for processing said job packet;

characterised in that the first computer is arranged to interpret said job instructions to provide in the job packet a job record that includes a set of computer-readable job processing requirements and the second computer is arranged to read and analyze the job processing requirements, to maintain respective scribe data for each of a plurality of scribes, the scribe data including a respective schedule data associated with each scribe and indicating when the respective scribe is to be available to work, and to automatically forward job step data to a remote computer associated with a selected scribe based on the corresponding schedule data.

Comments:

Underlying the system defined in claim 1 is a method of allocating work to workers.

A manager receives a job specification from a client and uses it to generate a “job packet” which he passes on to another manager. The second manager maintains data, including schedules, about “scribes” and forwards the job packet, or part of it, to particular scribes on the basis of their schedules. There is nothing technical in the underlying method.

It would have been obvious to the skilled person, seeking to automate that method, to use a network of computers. Once it had been decided to use such a network, it would have followed directly that the “job packet” would be associated with a digital file, that the data would be maintained on the second computer, which takes the role of the second manager, and that forwarding would be automatic.

The appellant has argued that account must be taken of the state of technology in 1998, without knowledge of the developments which have taken place since. The Board accepts that, but notes that the use of a network of computers in similar systems was known in 1998. D1 provides an example. The argument above relies only on the obviousness of using a network of computers, and not on any technical details beyond the abilities to store, process and communicate data.