Case Law Review – T 0037/08

Case:

Claimed Subject Matter:

Method for controlling subscriber accounts in connection with a pre-paid IN platform, and a pre-paid mediator

In the example of the invention set out from line 26 of page 6 to line 11 of page 7, the charging data are only generated once the service has started running. There is a distinction to be made between delivery of a service and, in this example, delivery of the SMS. Reception of a message at a mobile switching centre is part of the SMS service and an essential part of the delivery of that service. Nevertheless, the full SMS service is not delivered and it seems that claim 1 must be read such that the charging data are sent before the service is complete. (See section 3.4.)

According to D2, a running service is stopped once funds become insufficient, and this requires that charging data are sent before the service stops running. However, it is not quite clear that this is really the same thing as sending the data before service delivery, as stated in claim 1. The Board, then, tends to the view that this feature does provide novelty. (Section 3.5.)

Comments:

The effect of this feature, as argued by the appellant, is to prevent fraud, by which the Board understands that a user should not be allowed to use a service for which funds are not available. As it stands, this effect is not a technical one, and it is necessary to consider what the corresponding technical problem is. The Board notes that the sending of data before a particular time does not imply that the data is used by the recipient before that time; it is, however, a necessary condition for such use. The technical problem can, then, be formulated in this way: allow a check to be made, before service delivery, on whether sufficient funds are available. It would be obvious to the skilled person, faced with this problem, that she would have to provide for the charging data to be sent in time. The Board does not consider that this requires anything beyond the skilled person’s general technical knowledge. Nor, apparently, does the appellant, since the application does not provide more information on this feature than the statement that it is implemented (page 4, lines 19 – 22).

Case Law Review – T 0823/07

Case:

T 0823/07

Claimed Subject Matter:

Searching apparatus and a method of searching.

Novel Features:

(A) the images stored by the image storage means identify or are associated with commercial suppliers;

(B) the linking means links such images, i.e. images which identify or which are associated with commercial suppliers, with the corresponding text item to form listings (stored results entries) to display each text item and corresponding graphical image simultaneously;

(C) so that when the listings are displayed the user is enabled to readily identify a desired commercial supplier from the graphical image.

Comments:

The novel features, however, derive in a straightforward manner from an underlying concept which lacks technical character and does thus not provide a technical contribution to the prior art.

In fact, displaying logos of commercial suppliers in combination with information concerning products, services etc provided by such suppliers is a presentation of information which exclusively addresses the mental and cognitive activities of users. There is no direct causal relationship to the technical solution of a technical problem. Even if it is true that presenting information according to this concept enables the user to identify the desired supplier and the associated listings more easily and quickly than with the prior art system, this result would be entirely subjective depending on the mental furniture of the user.

As follows from decision T 1143/06, the manner how cognitive content is presented to the user may only contribute to the technical solution of a technical problem if the manner of presentation (exceptionally) shows a credible technical effect (see 5.4 of the Reasons of the decision). Non-technical features and aspects of an invention should not be given any weight in assessing inventive step. If they belong to the general framework in which the invention evolves, they may be used in formulating the relevant technical problem (see decision T 641/00 – Two identities/COMVIK, OJ EPO 2003, 352).

There has been no proof of any such technical effect of the present concept of presenting information, beyond the alleged advantages which concern the mental and cognitive activities of the user. The only credible technical effects result from the computer implementation of this concept.

This circumstance distinguishes the case from the decisions cited by the appellant in support of its arguments (see X. above). In all these decisions, the board concluded on the existence of a technical contribution over the prior art. The technical contribution resulted from overcoming physical limitations of the size and resolution of computer screens (T 643/00, T 928/03) and from the functions of a “new input device” conferring technical character (T 333/95). Neither one of the decisions derives the technical character of a feature or activity from the mental effort required or any similar effect; these are only secondary considerations. Moreover, in the context of inventive step, caution is required in applying old decisions concerning non-technical subject-matter like decision T 333/95 since the relevant case law has experienced some important development as explained in decision T 154/04 – Estimating sales activity/DUNS LICENSING ASSOCIATES, OJ EPO 2008, 46.

In the present case, the only relevant technical aspects of the invention are standard programming features for implementing the idea of displaying search results in connection with supplier logos on a computer system. The programming and implementation of this idea is obvious in the light of the prior art.

Case Law Review – T 1445/10

Case:

T_1445/10

Claimed Subject Matter:

Nappies with active elements.

Comments:

The Examining Division considered that there were two problems relating to the feature of the active graphic being placed in the interior of the article. The first problem related to the question of small amounts of urine being sufficient to activate the graphic. The second problem related to the necessity for the wearer to inspect the pants internally in order to see the signal. The first problem was considered to be linked to an unpredictable perception of the user and thus linked to a further feature which could not be controlled. The second problem was considered to be non-technical as it related to the use of the article.

The Board considers both problems to be linked to the general problem of improved assistance in toilet training. Although it may be unpredictable whether or not the individual wearer correctly uses the provided assistance, such use which is not claimed but rather an article which provides, by means of a technical feature (the active graphic disposed on an interior article surface) the possibility of such improved assistance. Hence, the application specifies an invention within the meaning of Article 52 EPC. Accordingly, it is not necessary to consider the further auxiliary requests. (See sections 2.4.1/2.4.2.)

Case Law Review – T 1359/08

Case:

T_1359/08

Claimed Subject Matter:

Versioning of elements in a configuration model

A method for defining a configuration model for a configurable product and for updating subcomponents thereof. As explained in the description, a “configuration model is generally some collection of … information that is needed to configure the product” (see p. 2, section 0003). The configuration model includes components, subcomponents, and elements which define characteristics of the product as for example prices, costs, colours etc (see p. 3, section 0011 ff.).

Comments:

Defining a configuration model and its components and subcomponents is thus a form of information modelling, which is, as such, not an invention for the purposes of Article 52(1) EPC (cf decision T 49/99 – Information modelling/INTERNATIONAL COMPUTERS, not published; retrievable from URL: legal.european-patent-office.org/dg3/pdf/ t990049eu1.pdf). The same holds for the management of information models during their life cycle. In general, abstract activities in the field of information management are per se not patentable, and to the extent that they do not interact with technical features to contribute to the technical solution of a technical problem they cannot establish novelty or inventive step (for a summary of the relevant case law, see the EPO-publication “Case Law of the Boards of Appeal of the European Patent Office”, sixth edition, European Patent Office, July 2010, chapter I.D.8.1.).

All features in claim 1, except for the general computer-implementation of the method, concern abstract processes of information management in the context of defining and updating a configuration model. In particular, setting versions of the model to an active or inactive state is primarily part of the abstract concept of managing the update process and not per se a genuine technical feature of the computer implementation.

The present application does not provide any specific information about the computer implementation of the method at all. Even from the drawings, no details of the implementation can be derived. Only from the acknowledgement of the background art and from general statements at the end of the application, starting with section 0067, can it be understood that the computer implementation is a possibility for carrying out the invention.

Considering that the application is confined to disclosing abstract concepts of information management rather than setting out a practical computer implementation, the Board concludes that a technical interpretation of the said features of the second auxiliary request would be inappropriate. The board judges that these features do not support inventive step.

Case Law Review – T 1841/06

Case:

T_1841/06

Claimed Subject Matter:

Integrated multilingual browser

The claimed method is essentially characterised in that the source documents are automatically translated on-the-fly at the time the user requests access to the source documents (main request), or in that the web page retrieved is translated and cached on the web server before being sent to the user (auxiliary request).

Comments:

According to the claims as interpreted by the appellant, all web pages requested have been translated into the selected language before being sent to the user; this serves the aim to present to the user only the translated versions of web pages.

This aim and object of the invention is at best the result of balancing various mental preferences of the user but it is per se not a technical problem. Having the option of choosing between an original language and the preferred language might be felt as an inconvenience by one user but as an advantage by another. The invention brings about a mental simplification and subjective advantage for some users but it does not provide any objective advantage nor any technical advance in any field of technology. Such purely subjective preferences like any other non-technical aspects of an invention do not form a valid basis for a technical and inventive contribution over the prior art (for a summary of the practice of the EPO in dealing with non-technical subject matter, see for example the EPO-publication “Case Law of the Boards of Appeal of the European Patent Office”, sixth edition, European Patent Office, July 2010, chapter I.D.8.1).

The computer implementation of the claimed methods requires only minor changes to the machine translation system of document D7. In the W3-PENSÉE type 2 system (see figure 4), for example, only the step of sending the original data need be omitted (the box in the middle of the flow diagram); then the subsequent step shown in the right box at the bottom of the flow diagram (see document D7, figure 4) fully meets the aims of the present invention. These changes to the prior art system do not involve any inventive step.

It might be argued that in the type 2 system the web pages translated are cached but not in a cache on the web server. However, it is an obvious alternative to locate the translation cache at any appropriate place in the World Wide Web other than between Internet and client. Such an alternative arrangement is shown, for example, in document D7, figure 1 in connection with the WWW server type.

Case Law Review – T 1097/06

Case:

T_1097/06

Claimed Subject Matter:

A computer-based system and method for detecting risks.

A specific object of the invention is to provide a computer-based system and method for detecting risks emerging in geographical areas without having to collect measurements of risk indicators in all of the geographical areas (A1 publication, paragraph [0004], last sentence).

Comments:

Side steps inventive step issues raised in examination by refusing application for lacking novelty over the prior art.

A Searchable CIPA Journal Archive

The CIPA Journal – the august publication of the UK’s Chartered Institute of Patent Attorneys – contains a veritable treasure trove of articles for the discerning Patent Attorney. It’s a shame then that, after an initial read, most editions find themselves in a forlorn pile in a distance corner of the average Patent Attorney’s office…

…Until now. With a few simple steps, you can breath life into those old editions and be the envy of your Attorney colleagues. Here’s how to do it:

Goto the CIPA Website: http://www.cipa.org.uk .
Log in as a member (“Members” link on left-hand side).
Once logged in, click “Journal Archive” on the right-hand side.
Download the available issues into a directory, such as “CIPA Journals”.

This gets you a nice collection of CIPA Journals in PDF format. You can use Adobe Acrobats “Find” feature:

to search in individual editions. However, to be of real use we need to be able to search the whole directory. There are two ways to do this:

Using Acrobat Portfolios

Adobe Acrobat 9 has a “Portfolio” feature. Click on “File” > “Create PDF Portfolio” to create one:

When the Portfolio screen loads up click “Add Existing Folder”:

Choose your “CIPA Journals” folder. After Acrobat has worked its magic, save the Portfolio using “File” > “Save Portfolio As…”. You can now search through the Journals in the Portfolio using the “Search” box in the top right corner:

Using Windows Search

Updated / modern versions of Windows come with a “Windows Search” tool. You can find this by looking for the magnifying glass in the system toolbar. You can also display a search box by right clicking the Windows toolbar, selecting Toolbars, then selecting Windows Search Deskbar:

If the “CIPA Journals” folder is in your “My Documents” folder you should be able to search within the PDFs straight away by entering the search term in the Deskbar.

If that does not work you may have to check your search options. Right click the magnifying glass in the toolbar and select “Windows Search Options”. When the optiosn screen appears click modify to add your “CIPA Journals” folder to the list of indexed locations. Also click on “Advanced” and go to the “File Types” tab. Check “pdf” is an option and that the second radio box is active: “Index Properties and File Contents”. If the radio options are greyed out you will need to install the PDF iFilter, available as a free download from Acrobat (see here).

One downside to the Windows Search is I have not yet been able to show the highlighted text within each PDF. Hence, for each of your search results you will need to search within the PDF in the usual way to find the specific paragraphs. There are other 3rd party tools that can be used to search PDFs: see this post for details.

Some Interesting Euro-Moroccan Developments

I have always been a fan of the progressive nature of the European Patent Office, for example, including Turkey which is (at present) a non-EU state.

I was thus glad to see signs of a new partnership between the Moroccan Patent Office and the EPO. An agreement has been signed that appears similar to existing extension state agreements (wherein an European patent can be registered as a national patent in Balkan states that are not yet signatories to the European Patent Convention).

Whereas the extension state agreements became a stepping stone for becoming a full EPC signatory, the new Moroccan agreement appears to be a looser co-operation agreement that could pave the way for easy conversion of a European patent into a Moroccan national patent. Exact implementation details will follow amendments to Moroccan national law.

More details can be found here:

http://www.epo.org/topics/news/2010/20101220.html

http://www.eplawpatentblog.com/eplaw/2010/12/epo-european-patents-may-become-valid-in-morocco.html

“EU Patent” Rumour Mill: Saga Update

Plans have been afoot since the dawn of time (well at least the 70s) for a unitary patent right across the whole of the EU (plus special guests like Turkey). See Wikipedia for background.

As many may know, the existing “European Patent” is a bit of a hydra; on grant a centrally administered application is converted into a number of national rights which need to be managed and enforced nationally. For years European politicians have been labouring away to sort out this messy back-end to make it easier for patent owners to enforce their rights Europe-wide. However, the proposition covers a minefield of incendiary issues: language (the Italians and Spanish get particularly fired up over this); forum-shopping (the British and Germans do not like the thought of national rights being litigated in back-water jurisdictions); replacement of sovereign rights; integration with the European Patent Office; the disjoin between EU members and European Patent Convention (EPC) states (the latter being more progressive) etc..

Things had been placed back on the burner a little after several years in the wilderness. However, the language issue recently torpedoed any forward progress.

Interesting though, this weekend a number of rumours have been circulating that several EU countries are making another stab at it, this time in the form of a private arrangement under the Lisbon Treaty. This quite cleverly side-steps the language issue by leaving the Spanish and Italians on the outside of the private arrangement. For example, PatLit reports on an article in the Financial Times and Axel Horns picks up on a tweet from Mr Vincent Van Quickenborne (great name), Belgian Minister for enterprise and streamlining policy.

EPO Rule Changes: R.141 EPC – Update to Prior Art Exchange Procedures

Following on from my post here, the President of the EPO has decided that an applicant will not need to file search results under R.141(1) EPC if the priority application was first-filed in one of:

US,
UK, or
Japan.

These will be exchanged between the patent offices automatically. In most cases, US, British and Japanese attorneys (and the majority of their clients) can thus let out a sigh of relief.

As set out here, this adds to the exemptions available when the search reports were drawn up by the EPO (e.g. EPO search on international or national applications).

Still from January it is worth checking the state in which a priority application was filed as a general procedural step.