Monday, 12 July 2010

T 528/07 – Com, Vick, And TRIPS It As Ye Go

From time to time Board of appeal decisions show a knowledgeable colleague trying to take advantage of one of the recent patent related conventions such as the TRIPS agreement. In most cases these attempts are unsuccessful, but you almost always learn something interesting or useful in the Board’s response.

[1] The invention in accordance with claim 1 is a computer system for providing a business-to-business relationship portal. Its purpose is to facilitate the exchange of information between parties for example in business launch centres (which is the preferred embodiment […]). It presents business opportunity information to permissioned users. In case of a business launch centre an “opportunity” is e.g. “any e- business that is being evaluated by one of the launch centers” […]. “Business opportunity information” is e.g. company background information or financial information, and “permissioning” refers to users' rights to view and/or modify information […]. The channels, which may appear as boxes on the user's screen, contain links to portal applications and may include summaries of aggregated data from the applications […]. “Applications” are in the Board's understanding application programs.

Inventive step

Article 27 TRIPS

[2.1] The invention as claimed consists of a mixture of technical and non-technical features, the non-technical features relating to a business-to-business relationship portal such as a launch centre, i.e. an entity arranged to provide new businesses with resources for rapidly and successfully building, launching and scaling their business […]. In order to examine this type of subject-matter the Board would normally apply the “Comvik approach” (cf. T 641/00). The appellant has however argued that since A 52(1) in its revised version had been brought into line with Article 27(1) TRIPS it had to be interpreted in the light of the object and purpose of this agreement. The wording of A 52(1):
European patents shall be granted for any inventions, in all fields of technology …
implied not only that there could be no “non-inventions” (i.e. exclusions of the kind enumerated in A 52(2)) in a field of technology, but also that the examination for inventive step had to be handled in a way to ensure that patents were indeed “available and patent rights enjoyable”, as required by Article 27(1) TRIPS. It was not permitted to treat features involving non-technical aspects as part of the object to be achieved by the invention. Business-driven aspects (such as the aim to develop profit-bringing products) were behind every invention, and were regularly ignored in the formulation of the problem. All features of a claim contributed to an inventive step, although it was permissible to attach more weight to the technical ones.

[2.2] The Board is aware that the Comvik approach often leads to the conclusion that an invention involving non-technical aspects merely solves a trivial technical problem. But this is not an inevitable outcome. As soon as an invention solves a technical problem in a non- obvious way patent protection is in principle available even if the claim in addition contains non-technical features (cf. T 769/92). A frequent case is however that technical features, such as the client-server system in the present case, are known as such but are used for a non-technical purpose. According to the Comvik approach, a claim feature is regarded either as being a mere expression of a non-technical “framework” or as constituting a technical feature that contributes to an inventive step. The appellant seems to argue that such a grouping of features should not be performed, or at least that the “framework” should to some degree also contribute to the inventive step.

[2.3] The Board does not share the appellant's opinion that TRIPS would require a modification of the Comvik approach. Article 27(1) TRIPS stipulates that, subject to the provisions of its paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. At the revision conference in the year 2000, A 52(1) was amended to include the expression “in all fields of technology” to bring it explicitly into line with the TRIPS agreement. TRIPS does not give a definition of the term “technology” but leaves it to the member states and their jurisdiction to define and apply this concept (cf. J. Straus, “Bedeutung des TRIPS für das Patentrecht”, GRUR Int. 1996, No. 3, 179, points 35 and 36). The Board accepts that in the present case the claimed subject-matter is technical, i.e. an invention within the meaning of A 52(1), and therefore open to patent protection. However, under Article 27(1) TRIPS a patent shall only be granted if it is new and involves an inventive step. Again, TRIPS does not stipulate how these requirements are to be applied. Article 27(1) TRIPS reflects on the one hand a minimum consensus and on the other hand the member states’ unreadiness uniformly to define the patentability requirements (cf. J. Straus, loc. cit. point 47). The TRIPS member states are free to adopt different standards for each patentability requirement, such as inventive step (cf. Nuno Pires de Carvalho, “The TRIPS Regime of Patent Rights”, 2nd edn., The Hague, 2005, 191). The Comvik approach is one facet of the standard applied by the EPO.

The jurisprudence of the Boards of Appeal

[3.1] The appellant has cited several decisions of the Boards of Appeal in order to demonstrate that the display of data can have technical character. One of these decisions is T 717/05. The appellant quotes its point [5.4]:
… any display of information of the internal state of an apparatus conveys a cognitive content to the user, as this is the fundamental reason for its existence. To exclude all such systems from patent protection cannot be seriously envisaged.
[3.2] Decision T 717/05 concerned a game apparatus. Its internal state reflected the state (outcome) of game events. The present Board is inclined to agree with the appellant that if the display of information about the outcome of games played on a computer has technical character, as held in the cited decision, then it may well follow by analogy that the information displayed in present claim 1, albeit not concerned with games, contributes to an inventive step. The Board will therefore review the jurisprudence of the Boards of Appeal on this point.

[3.3] T 717/05 relies for authority (see its point [5.5]) on decision T 115/85 […, which] states (at point [7]) that “giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem”.

This statement was explained in decision T 833/91 [3.1] in the following way: “Even though the decision [i.e. T 115/85] does not specify said ‘event’ or ‘condition’ by way of examples, it is therefore to be concluded that they were basically of a technical nature such as, for instance, an event calling for an error message”.

[3.4] Thus two different interpretations of decision T 115/85 exist in the jurisprudence: either the visual indications must concern technical conditions of the system in order to relate to a technical problem (T 833/91), or they may also concern non-technical conditions (T 717/05).

[3.5] The present Board will follow the more restrictive approach according to which only technical conditions of a system can be taken into account. This line has also been taken in other decisions of the Boards of Appeal (see e.g. T 790/92 [4.6]; T 953/94 [3.1]; T 1161/04 [4.5]; T 1567/05 [3.7]; T 756/06 [13]). Moreover, the clear character of exception of this approach appears to be more consistent with the exclusion of “presentations of information” pursuant to A 52(2)(d).

[3.6] The present Board will therefore regard features that indicate non-technical conditions of the claimed system, such as data relating to a business undertaking, as not contributing to an inventive step.

The Board then examines the features having technical character and comes to the conclusion that the claim does not contain any feature making a non-obvious technical contribution to the prior art. It then continues:

[5.7] The appellant has argued that the overall combination of the features has a synergistic effect because they cooperate to solve the technical problem of facilitating the exchange of information and supporting rapid information sharing […]. The Board is not convinced that there is an (unexpected) synergistic effect since features do not interact merely because they have a common goal. But even if there was such an effect it could only exist on a business level. On a technical level nothing in the claim is surprising: the use of a client-server system facilitates the exchange of information and support information sharing (that is what it is for); and the kind of information displayed or transmitted (opportunities, catalogues) has nothing to do with the rapidity with which signals travel from user to user. Furthermore, if the invention has the effect of reducing the traffic load on the net - as has been argued - this is due to user restrictions rather than, say, a protocol determining how the computers transmit data packets over the communication channel. In other words, the load is reduced by non-technical rather than technical means (also referred to in the jurisprudence of the Boards as a “circumvention” of the technical problem).

[5.8] It follows that the subject-matter of claim 1 does not involve an inventive step (A 56 EPC 1973).

If you wish to download the whole decision, you may find it here.

p.s.: If you find the title of this post somewhat obscure, it is an allusion to John Milton’s Allegro, line 33 et seqq.: ... Com, and trip it as ye go / On the light fantastick toe / And in thy right hand lead with thee / The Mountain Nymph, sweet Liberty ...