17 October 2010

Computer-Implemented B2B Information System not Inventive Due to Comvik and Despite TRIPS

Electronic components shops in Guangzhou, CN, supplying local companies
Case T 528/07, decided by the EPO’s Technical Board of Appeal 3.5.01 on 27 April 2010 is exceptionally interesting since it relates to not less than three interesting issues, namely the influence of the TRIPS agreement on the EPC, the examination of claims having both technical and non-technical features, and the exclusion of “presentation of information” from patentability according to Art. 52 (1) d EPC.

The applicant (Accenture Global Services GmbH) of EP application  02800218 appealed the EPO’s decision that the invented computer system for providing a computer-supported Business-to-Business (B2B) portal is found not inventive over prior art document US 5 893 091 A. Claim 1 of the refused application reads:

A computer system for providing a business-to-business relationship portal presenting business opportunity information to permissionned users comprising:
  1. a network of computers including a server and a plurality of client computers capable of communicating with said server;
  2. said server being programmed to send files to create a graphical user interface on a display of at least one of said client computers via browser software executing on said at least one client computer;
  3. said graphical user interface including a login page to identify permissionning that the user will have within the system;
  4. said graphical user interface including a briefing page having a plurality of channels with links to respective portal applications; wherein the channels contain substantially real-time data from the portal applications, wherein the user selects a specific timeframe for content retrieval and sees new items added to the portal within the selected time-frame;
  5. said briefing page including a link to a create opportunities application enabling the entry of information related to new business opportunities, said server being programmed to restrict use of said create an opportunities application to a createopportunity set of permissionned users;
  6. said portal applications including an opportunities application that displays business opportunities based on user permissionning;
  7. said portal applications including a catalog application that displays catalog content related to the business opportunities based on user permissionning;
  8. said portal applications including at least one communication application that displays communication items related to the business opportunities based on user permissionning;
  9. said server being programmed so as to enable an administration set of permissionned users to set user permissionning related to said business opportunities.
The TRIPS agreement and inventiveness:
Claim 1 relates to a computer system (a so called “business-to-business relationship portal”) facilitating the exchange of information between business parties by presenting “business opportunity information” to permissioned users, e.g. company background information or financial information. The information is displayed in boxes (“channels”) appearing on the user’s screen, that my contain links to application programs or summaries of aggregated data from the applications.

Assessment of inventive step and the TRIPS agreement: The Board of Appeal agreed with the Examining Division in that the claimed subject-matter is defined by both technical and non-technical features, the latter features relating to the “business-to-business relationship portal”, i.e. an entity arranged to provide new businesses with business-related information resources.

According to the pertinent “Comvik approach” (cf. T 641/00 "COMVIK"), the Board is not allowed to consider non-technical features when assessing inventive step. However, the appellant argued the opposite way and explained that since revised Art. 52 (1) EPC 2000 had been brought into line with Art. 27 (1) TRIPS it has to be interpreted in the light of the object and purpose of the TRIPS agreement, such that the identical wording of Art. 52 (1) EPC and Art. 27 (1) TRIPS ("patents shall be granted for any invention, in all fields of technology") implies not only that there could be no exclusions of the enumeration in Art. 52 (1) EPC, 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 Art. 27 (1) TRIPS. The appelant concluded that it is therefore not be permitted to treat features involving non-technical aspects as part of the object to be achieved but, instead, all features of a claim contribute to an inventive step, although it was permissible to attach more weight to the technical ones.

The Board did not share the appellant's opinion that the Comvik approach has to be modified in view of TRIPS, since Art. 27 (1) 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. Moreover, Art. 27 (1) TRIPS only requires that
[...] patents shall be available for any inventions [...] in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. [...] Patents shall be available and patent rights enjoyable without discrimination as to [...] the field of technology [...].
TRIPS, however, does not stipulate how these requirements are to be applied. The Board explained that Art. 27(1) TRIPS only reflects, on the one hand, a minimum consensus and, on the other hand, the member states’ unreadiness to uniformly define the patentability requirements. Therefore, the TRIPS member states are free to adopt different standards for each patentability requirement, e.g. inventive step, and the Comvik approach is one facet of the standard applied by the EPO.

At that occasion, the Board clarified that the Comvik approach does not imply or result in that an invention involving non-technical aspects merely solves a trivial problem. A frequent case is, however, that technical features which are known as such (e.g. the client-server system in the present case) are used for a non-technical purpose (e.g. the present B2B platform). The Board explained further that the Comvik approach only divides claimed features into either a mere expression of a non-technical “framework” (not contributing to inventive step) or a technical feature contributing to an inventive step, whereas the notion of a “(non-technical) framework” covers those features that cannot be considered as contributing to the solution of any technical problem by providing a technical effect (cf. T 641/00, Reason 6).

While a claimed subject-matter is, as a whole, considered not patentable in the sense of Art. 52 EPC if no technical problem can be derived from that claim at all (cf. T 641/00, Reason 5), the individual features not contributing to the derived technical problem are part of the “non-technical framework”. 

When a patentable – i.e. sufficiently technical – claim (also) addresses a non-technical problem, this problem may well be considered in the formulation of the objective technical problem as required by the problem-solution approach for assessing inventive step. At this point the Comvik decision assumes that the person skilled in the art would receive knowledge of those non-technical features as part of the objective technical problem (cf. T 641/00, Reasons 13, 14).

That is, since non-technical features usually define the context of an “invention“, e.g. the features defining the B2B platform in the present case, and a skilled person would (per definitionem) be able the immediately implement such features (since they are not technical) these features cannot support inventive step of the claim.

Presentation of information:
As a further approach, the appellant refered to T 717/05 (LABTRONIX) to argue that the display of data can have technical character since
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 (cf. T 717/05, item 5.4)
The Board agreed that if the display of information about the outcome of games played on a computer has technical character, as held in T 717/05, then it may well follow by analogy that the information displayed in present claim 1 contributes to an inventive step.

To clarify this question, the Board then reviewed T 115/85 and T 833/91, whereas T 717/05 relied for authority to the former and was cited by the latter, and found that
[on the one hand side,] giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem (cf. T 717/05, item 5.5) [while]

[on the other hand side,] even though 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 (cf. T 833/91, item 3.1)
and concluded that 
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).
The Board then followed the more restrictive approach according to which only technical conditions of a system can be taken into account, since this line has also been taken in other decisions of the Boards of Appeal and the clear character of exception of this approach appears to be more consistent with the exclusion of “presentations of information” pursuant to Art. 52 (2) d EPC. The thus regarded 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.

Inventive step:
Features (a) and (b) of above-sketched claim 1 as well as those features that related to the permissioning were regarded sufficiently technical but known in the art. The remaining features (e to h) were regarded to owe their existence to the underlying business model, while feature (i) was considered as relating to an administrative effect only.

The Board therefore could no see any feature making a inventive technical contribution to the prior art. (cf. T 528/07, items 5.1 to 5.6).

As a conclusion it was stated unter item 5.7 that
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.

(Photo (C) 2008 by Vladimir Mekov via Wikimedia under the terms of a CC license)