Case Law Review – T 313/10

Case:

Claimed Subject Matter:

Matching items with items in a table.

Comments:

This case confirms that one indication of technical character is that the method has an overall technical effect, such as controlling some physical process. On the facts, the claimed invention was found to provide either an abstract data-processing effect or, taking into account the specific embodiment of matching books and compact discs, an effect in the field of business. Neither of these effects was deemed to indicate technical character.

The board did indicate though that that, based on T 424/03 or T 1351/04, a technical effect may arise from “functional data structures”. For example, an index may have technical character as it controls a computer by directing it to a certain memory location. However on the facts of the present case, the indexes in the claim were well-known or “generic”.

Case Law Review – T 629/11

Case:

T 629/11

Claimed Subject Matter:

Personalization of data services.

The invention concerns the presentation of information in an Internet browser, and the management of the information and the way it is presented, so as to evoke a desired response in the user.

Comments:

The method as claimed was deemed prima facie not excluded from patentability because it modified “Internet browser pages”.

However, the underlying method was deemed to be a means of manipulating information and its presentation, in order to affect the perceptions or behaviour of users.

As such the underlying method was not technical. Instead, it was more appropriately classified as a form of applied psychology, and the field of application might be, for example, advertising or education. As such, being non-technical, it could not contribute to inventive step. Any remaining technical features related simply to the provision of information on an Internet browser page, which was well-known.

Case Law Review – T 700/07

Case:

T 0700/07

Claimed Subject Matter:

Global Electronic Trading System.

The claimed invention in this case comprised a computer network consisting of trader terminals, a central server, and a communications network, each with particular properties.

Comments:

The board stated that, rather than decide whether the invention was a superior trading system to any previously known system, they were concerned with whether a technical realisation in terms of terminals and server was obvious.

In the reasoning it was submitted that there may be two ways in which a skilled person might arrive at a particular technical implementation of a non-technical system:

they might start from a specification of the non-technical system and seek a technical realisation; or
alternatively they might start from some prior art technical realisation of a similar technical system and modify it.

If either of those paths would have been obvious at the priority date, there would have been no inventive step.

The central server in the claim was argued by the appellant to provide a technical effect by reducing network traffic. However, the board disagreed. They submitted that the non-technical trading system required a central agent. This constraint would be given to the skilled person, for example as a “requirements specification”. It would then be obvious for the skilled person to implement the said central agent using a central server. Even if there was shown to be less communication between traders, this was seen as a property of a non-technical arrangement, rather than a technical property associated with a technical implementation.

Case Law Review – T 2171/08

Case:

T 2171/08

Claimed Subject Matter:

Redundancy-free multi-purpose data (UBS).

The invention relates to aspects in context with updating a data base that is jointly used by two or more different processing mechanisms on the basis of multi-dimensional data sets. A network component performing this task includes a master data base for storing master data including static data and a multi-dimensional generic data template having predefined data fields relating to elementary information determined by the data input requirements of the different processing mechanisms. An interface is provided for receiving accounting-related data sets from a plurality of individual sub-systems. Processing resources having access to the master data base generate for each accounting-related data set one or more associated multi-dimensional data sets by deriving elementary information included in the accounting-related data set and in static data associated with the accounting-related data set and by writing the derived elementary information in corresponding data fields of the data template. On the basis of the elementary information contained in the one or more multi-dimensional data sets an elementary data base that is jointly used by the different processing mechanisms to generate report data sets is updated.

Comments:

In this case the board appeared to acknowledge that a network component for transforming accounting-related data sets may be adapted to process static data in such a way as to provide a technical effect of reducing network traffic.

However, the appeal was dismissed on the grounds that the invention was not sufficiently disclosed to allow the skilled person to implement the static data in a manner that allowed for the effect.

Hence, it is recommended to set out clearly the technical implementation behind any technical effects that may be relied upon.

Case Law Review – T 531/09

Case:

T 531/09

Claimed Subject Matter:

Checkpoint Simulation.

The invention concerns the simulation of a security checkpoint. It could be the sort of familiar security checkpoint used at airports, but is not limited to that. The simulation is carried out by computer.

Tasks at the checkpoint are modelled as probabilistic events, each taking a certain time to perform, which may depend on what happens in preceding tasks. Two of the tasks simulated involve technical equipment, namely a walk-through metal detector and (possibly) an x-ray device.

Comments:

The appellant referred to T 1227/05, which is discussed in the linked case law review. However, the board concluded that simulation of a checkpoint was not inherently technical.

Even though the probabilistic equations referred to technical devices (e.g. metal detectors and x-rays), these devices were modelled no differently from other non-technical tasks such as the queuing of people. Hence, their inclusion did not contribute to a technical character.

Case Law Review – T 1366/08

Case:

T 1366/08

Claimed Subject Matter:

Electronic signatures.

The scheme was found to differ from notorious common knowledge in commerce only by being adapted to modern technology in the form of electronic (e-) commerce and presenting a copy of a contract to a bank as evidence that payment is due.

Comments:

Partial problems were considered. The first problem was deemed to be how to implement a business scheme on a computer network. It was found to be obvious as it simply involved applying well-known technical means as equivalents of a manual paper process. The second problem was found to be purely a business or legal question, and so features relating to its solution could not contribute to the technical character of the claim.

Amazon’s “One Click”: Still Not Inventive [T 1244/07]

Often, when discussing my job in public, I receive a number of pontifications on the various merits, or more usually demerits, of “the patent system”. It is said that “the patent system” is “broken” and that there are far too many “dubious patents”. Oft cited is Amazon’s “1-Click” patent, typically described as a monopoly on anything “1-Click” related.

In reply, I politely ask which “patent system” is being discussed, explaining the system of national territorial rights. The eyes then glaze over as I launch my defence.

Helpfully for me the European Patent Office has recently published Board of Appeal decision T 1244/07. This case relates to a divisional European patent application within the “1-Click” family. It is worth a read, especially for those with negative views of “the patent system”, as it rather nicely shows the European Patent system operating smoothly with not a breakage in sight.

Firstly, the claimed invention does not consist of the words “1-Click”. Instead, all of the following features are required:

“A method for ordering an item using a client system, the method comprising:

receiving from a server system a client identifier of the client system when the client system first interacts with a server system;

persistently storing the client identifier at the client system, wherein the client identifier is from then on included in messages sent from the client system to the server system and retrieved by the server system each time a message with an identifier is received from the client system by the server system;

storing at the server system for that client and other clients a customer table containing a mapping from each client identifier identifying a client system to a purchaser last associated to said client system;

storing at the server system customer information for various purchasers or potential purchasers, said customer information containing purchaser-specific order information, including sensitive information related to the purchaser;

connecting at a later point in time, when a purchase is intended, the client system to the server system, comprising the steps of:

sending from the client system a request for information describing an item to be ordered along with the client identifier;

determining at the server system whether single-action ordering is enabled for that purchaser at the client system;

if enabled sending from the server system the requested information to the client system along with an indication to perform a single action to place the order for the item;

displaying at the client system information identifying the item and displaying an indication of a single action that is to be performed to order the identified item,

performing at the client system that single action and in response to that indicated single action being performed, sending to a server a single action order to order the identified item and automatically sending the client identifier whereby a purchaser does not input identification information when ordering the item, and

completing at the server system the order by adding the purchaser-specific order information including said sensitive information that is mapped to the client identifier received from the client system.”

Secondly, even with this long list of features the Board of Appeal found the claim to lack an inventive step over previously published documents. In particular a journal article called “Implementing a Web Shopping Cart” by Baron C. et al was cited.

Thirdly, I enjoyed the thinly-veiled dig at US and Canadian law:

27. It is interesting to observe the outcome of this application in other jurisdictions.

In the US, where there is no specific exclusion for business methods, the validity of the equivalent claims was never decided in court, but a decision by the Court of Appeal of the Federal Circuit (D6) lifted an injunction on the basis that the alleged infringer had “raised substantial questions as to the validity of the patent”. The patent was also re-examined and allowed in essentially the same form albeit limited with additional features of a shopping cart. The office action in the re-examination did not discuss D1, or go into details of cookie technology and the skilled person’s appreciation of it.

In Canada, the examiner had considered equivalent claims to be obvious over D5 and cookie technology. The review (D7) by the Commissioner of Patents found that the use of a cookie to retrieve purchaser-specific information was obvious (point 87), and the single-action ordering aspect not obvious (point 102), but an unallowable business method (point 181) and not technical (point 186). On appeal, the Federal Court overturned the latter findings for having no basis under Canadian law for such exclusions. D1 was not discussed in either of these decisions.

Case Law Review – T 1466/06

Case:

T_1466/06

Claimed Subject Matter:

Method of supporting sales and maintenance of steam traps and an aggregating system for use in that method.

Comments:

Sampling and interpolation were deemed to be standard techniques.

A comparison was performed on selected data, but the comparison was used to inform a business decision. Thus there was deemed to be no technical effect.

Case Law Review – T 1769/10

Case:

T_1769/10

Claimed Subject Matter:

Internet remote game server.

The gaming of the prior art did not include:

a plurality of “game outcome servers” in which a “player management server” is physically separate and remotely located from the “game outcome servers” by network infrastructure;
a “game outcome server” that is not allowed direct access to the player database;
a player that may navigate to each “game outcome server” through a game access interface offering game links to game outcome server-supported games at the “game outcome servers”;
a game access interface that is supported by the “player management server” and displayable by the identified client device; and
player navigation that arises without the player having to register or log-on into the game outcome servers.

Comments:

It was concluded by the Board of Appeal that improving a player’s access to games and maintaining confidentiality of the player’s data in the player database were requirements to be met. In particular, a suitable technical problem was: how to improve the player’s access to games while maintaining confidentiality of the player’s data in the player database in terms of a technical solution using technical means.

The technical solution involving technical means as claimed was essentially determined to be letting the server for maintaining the player database communicate with a plurality of game outcome servers, with respective, different games. The server for maintaining the player database was arranged to be physically separate and located remote from the game outcome servers. The game outcome servers were not allowed direct access to the player database, such that confidentiality of the player database was maintained. Player access was improved by letting the player navigate to each game outcome server through a game access interface offering game links to game outcome server-supported games at the game outcome servers through a game access interface supported by the player management server and displayable by the identified client device and without the player having to register or log-on into the game outcome servers.

In the prior art the “player management server” did not communicate with a plurality of “game outcome servers”, nor did it support a game access interface accessible by the player offering game links to game outcome server-supported games at the game outcome servers, without the player having to register or log-on into the game outcome servers. In the prior art, the “player management server” merely maintained the player database and the server has direct access to the player database. Accordingly, the above technical solution involving technical means as claimed was not rendered obvious by the prior art.

Case Law Review – T 0698/07

Case:

T_0698/07

Claimed Subject Matter:

The differences between the subject-matter of claim 1 and the disclosure of D1 are that the user interface of claim 1 includes information concerning at least two transactions associated with the user, instead of a single one, and that the user interface enables the user to input feedback information for the at least two transactions, instead of enabling the user only to enter feedback for a single transaction.

Comments:

In the board’s judgement, the non-technical features consist in the nature of the data which is stored in the network-based facility (“transactions”), included in the user interface (“transaction information”), and inputted by the user (“feedback information”). These non-technical features relate to the harvesting of feedback pertaining to transactions, representing essentially a commercial objective, therefore relating to unpatentable subject-matter as defined in Article 52(2)(c) EPC. Thus, these features do not contribute to any technical effect. According to the case law of the boards of appeal (see e.g. T 641/00), these features cannot support the presence of inventive step and are therefore to be disregarded in the assessment of inventive step.

The technical effect of these differences is that the user can input feedback information related to two transactions using a single interface.

The technical problem can thus be formulated, based on this technical effect, as how to improve the ease of use for the user of the feedback scheme.

The appellant has mainly argued that the alleged invention is in a technical field and that each step of claim 1 is a technical step and contributes to the solution of a technical problem. The board accepts that the alleged invention is in a technical field and agrees with the definition of the technical problem by the appellant. However in the board’s judgement the technical features of claim 1 do not contribute, in combination, to an inventive step of the subject-matter of claim 1 (see paragraph 3.3 above).