Technical character and inventive step at the EPO – Two Hurdle Approach
Article 52 of the European Patent Convention (EPC) excludes computer programs “as such” from patentability. However, a claim directed to a computer program may still pass this first (eligibility) hurdle if the claimed subject-matter causes a “further technical effect” going beyond the normal physical interactions between the program and the computer on which it is run (e.g. T 1173/97). A claim directed to a computer-implemented invention (CII) involves use of a technical apparatus, e.g. a computer, computer network or other programmable apparatus, where one or more features are realized wholly or partly by means of a computer program. Such claim is also acknowledged to have technical character (e.g. T 424/03) and therefore directly passes the first hurdle.
While the first hurdle thus constitutes a rather low threshold, a second hurdle (patentability hurdle) still has to be passed, namely a hurdle corresponding to the question of whether or not a claim directed to a CII or to software that causes a further technical effect involves an inventive step.
This question is answered at the EPO by assessing whether or not features distinguishing the claim from the prior art have a technical effect – and if yes, by assessing whether or not a skilled person, having regard to the prior art as a whole, would have suggested the claimed technical features in order to solve a correspondingly defined objective technical problem. This well-established Problem-and-Solution-Approach thus focusses the assessment of whether or not claimed subject matter can be inventive on the claimed features that can be a solution to a technical problem explicitly or implicitly derivable from the application (Rule 42 EPC).
In case of CIIs, claims often include a mix of technical and non-technical features, the latter being features relating to non-inventions within the meaning of Article 52(2) EPC. In such situations, the “COMVIK approach” established in decision T 641/00 provides rules according to which the non-technical features which as such cannot contribute to the solution of a technical problem have no significance for the purpose of assessing inventive step. In fact, while in order to avoid hindsight, the objective technical problem should normally not include pointers to the solution or partially anticipate it, in particular an aim to be achieved in a non-technical field may appear in the formulation of the problem that is to be solved, in particular as a constraint that has to be met (T 641/00, headnote II). In other words, while the non-technical features may fully or in part define requirements that have to be met by an implementation, only the technical features of a claim can provide support for an inventive step.
A key question to be answered when assessing inventive step of a computer-implemented invention is thus the question: What are the technical and what are the non-technical features of a claim?
The notional business person
A systematical approach to address this question has been developed by the Board of Appeal 3.5.01 and its application is the core of decision T 1461/11. The decision reverses a previous decision of an Examining Division who refused European patent application 03760289.3 entitled “Universal merchant platform for payment authentication” on grounds of lack of inventive step. The application generally relates to online shopping and more specifically to authentication of a consumer for payment. A starting point of the development subject to the application is an authentication scheme according to which for example for a credit card payment, a server of an online shop communicates with a computer of a corresponding credit-card company via a plug-in hosted at the server of the online shop. According to the application, a drawback of this scheme is that each online shop has to host (and maintain) a number of plug-ins for a corresponding number of payment methods. Addressing this drawback, the claimed invention suggests installing the plug-ins at a separate, centralized, server that can be accessed by each of the several online shops.
In its decision refusing the application, the Examining Division essentially argued that technical features defined with the claims under their consideration would be merely used for their respective well-known purposes for solving respective partial problems arising upon implementation of the claimed solution. In their view, the problem solved essentially amounted to the problem of how to outsource authentication of a commercial transaction, and the claimed solution therefore merely corresponded to a non-technical, administrative or business related, activity.
Revising this decision, the Board of Appeal judged that this approach was too simplistic as it did not distinguish in sufficient depth between technical and non-technical aspects. In particular, the Board judged that the particular payment authentication subject to the application could not be abstracted to a business activity because it involved technical aspects such as the use of plug-ins and servers.
In view of this, in order to ensure that an assessment of a claim directed to a CII does not overlook any technical matter, including known or even notorious matter, decision T 1463/11 introduced the concept of the “notional business person”. With this concept, the objective technical problem can be formulated by assessing what are the requirements the business person can actually give to the technically skilled person. While in reality, a business person is of course aware of particular technological aspects, the notional business person is a fictional concept analogous to the skilled person of Art. 56 EPC. Thus, the notional business person may on the one hand formulate purely business related tasks, but can on the other hand not formulate any technical requirement. Applied to the case under consideration, the Board judged that the business person cannot require the technically-skilled person to use, for the plug-ins, a server other than the server of the online shop. Coping with difficulties arising from having to host and to maintain a variety of plug-ins at the server of the online shop would be a matter for a programmer or a network engineer – hence for the skilled person of Art. 56 EPC.
Having thus reassessed the question of which aspects of the payment authentication scheme subject to the application contribute to the technical solution and which do not, the Board of Appeal concluded that the relocation of the plug-ins to a centralized server involved an inventive step.
In a further decision (T1082/13), the same Board of Appeal clarified that the notional business person is to be interpreted within the framework of the COMVIK-approach. The notional business person is not fully blind but knows about the fact that business related concepts can be implemented on a computer system. A choice of where to implement an aspect in a distributed system is not necessarily technical, but can also be driven by administrative considerations. How exactly a business scheme can be implemented is what the notional business person does not know. This is in the sphere of the technical expert and subject to the assessment of inventive step.
Thus, the concept of the notional business person is a helpful tool to complement the notional person skilled in the art when the objective technical problem is formulated and when a claim is divided into technical and non-technical features. The concept of such notional person appears to be helpful in analogy also in different cases where non-technical features of a claim may stem from different fields included in the list of exclusions to patentability given in Art. 52(2) EPC. For example, an analogous application may make use of a “notional design person” when a claim is related to presentation of information.
Presence of a technical effect
Having identified the technical features present in a claim, and having identified those technical features of a claim that distinguish the claim from the closest prior art (distinguishing features), the next question to be answered when applying the Problem-and-Solution-Approach is:
Do the identified distinguishing features solve a technical problem with respect to the closest prior art?
In the field of inventions based on neural networks and machine learning, the negative answer to this question lead to the refusal of European patent application 06804383.5 with decision T 161/18. The application relates to a method for determining cardiac output from an arterial blood pressure curve. The measured blood pressure curve is not directly assessed but firstly arithmetically transformed into a corresponding central blood pressure curve. The corresponding transformation uses an artificial neural network whose weighting values are determined by learning.
In agreement with the finding of the Examining Division, the Board of Appeal acknowledged the features distinguishing the claimed subject-matter from the closest prior art to be that the transformation is performed using an artificial neural network whose weighting values are determined by learning. However, the application did not include any further information in this respect. The applicant essentially argued that these features would allow for a precise determination of the cardiac output taking into account a specific form of the curve in a particular range at reasonable computational cost thus allowing for implementing the claimed technology in a small and compact device.
However, the Board of Appeal did not follow the applicant’s argument as neither the claims nor the description of the application included any detail regarding the training of the artificial neural network. The artificial neural network would therefore not be adapted in any particular way to the specific case claimed such that the claim would merely define an arbitrary training which would be the same for any artificial neural network. Based thereon, the Board of Appeal was not convinced that the effect argued by the applicant in fact exists within the whole range defined by the claim and that it could therefore not be taken into account when assessing inventive step. The objective technical problem thus merely amounting to the question of how to provide a method alternative to the method disclosed in the closest prior art, the Board of Appeal concluded that the claim lacked an inventive step as use of artificial neuronal networks was common practice.
Thus, while for example CII claims in the field of artificial intelligence may in principle be patentable (e.g. T598/07), it is important to disclose how the claimed implementation is different from the prior art. This is generally true for claims directed to CIIs in general. It is not sufficient that a claim directed to a CII includes features that have technical character, it is crucial that an application provides support for corresponding technical effects by providing specific examples on how the invention is in fact put into practice. Such examples may on the one hand constitute fallback positions for claim limitations and on the other hand basis for arguments in support of inventive step.
While an established, unified approach for assessing software-related developments comparable to the Two Hurdle Approach applied at the EPO does not exist in Germany, depending on the case, some or all of the following three tests are applied. In a first test, the claims subject to an application in question are assessed as regards their technical character, this assessment being independent of the prior art. If technical character is acknowledged, a second test then assesses whether or not any exclusion to patentability applies, e.g. whether or not the invention purely relates to a computer program or to presentation of information (§1 PatG). If such exclusion does not apply, the claimed subject-matter is then assessed in a third test as to whether or not it is new and involves an inventive step.
This approach has been applied in a decision of the German Federal Patent court (FPC) in case 17 W (pat) 6/18 of a German patent application addressing the problem of how to derive useful signal components from a source signal. The application had previously been refused by the GPTO. The Examining Division considered the claims subject to decision to be purely related to respective mathematical methods and therefore to be excluded from patentability under §1 PatG.
The FPC disagreed and acknowledged patentability. Applying the first test, the FPC argued that the claim subject to their consideration would at least in part be set up in a technical field as it defined detection of positions of useful signal components in a discrete source signal. According to the FPC, a source signal as subject to the application in question would correspond to a collection of measurement values such that processing of the source signal would relate to processing of physical values and would as such be technical. In addition, it would be clear to a skilled person that the processing would necessarily be performed by means of a computer program running on a computer such that the claim would provide a clearly technical teaching for use of a computer.
Applying the second test, the FPC assessed whether or not the claimed subject-matter would be excluded from patentability, i.e. would be a mathematical method excluded from patentability in accordance with §1(3) Nr. 1 PatG. According to the FPC, the claim would provide a solution to the objective technical problem of how to enable detection of useful signal components repetitively occurring in a discrete source signal also in high-noise conditions. Technical considerations would be necessary to provide several features defined in the claim and the determination of the useful signal components would directly relate to a determination of physical values. The FPC thus considered the claimed mathematical method technical and as not falling under the exclusions to patentability.
Continuing with the third test to assess the claimed method in comparison to the prior art, the FPC considered the specific mathematical steps defined in the claim as not being disclosed in the prior art available to the FPC and as involving an inventive step. The case was then remitted to the first instance for further examination.
Thus, the main requirement for a claim directed to a CII to be patented at the EPO or at the GPTO is that the claim includes technical features that are a solution to a technical problem. It is thus crucial that a patent application drafted for a software based development specifically defines technical features that cause corresponding technical effects and that provide respective solutions to technical problems. Following for example the notional-business person approach, an applicant should identify any feature that contributes to the technical solution of the problem solved potentially in a non-technical field. It should be ensured that a complete solution to the problem is present as providing only a high-level conceptional solution bears a high risk that an application is refused based on lack of inventive step at the EPO or based on lack of technical character at the GPTO.
This article first appeared in IAM Japanese 9: a supplement to IAM, published by Globe Business Media Group - IP Divison. To view the guide in full, please go to www.IAM-media.com.
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