An evening with the Board: Computer-Implemented Inventions on Appeal at the EPO
The Boards of Appeal at the European Patent Office (EPO) are the only judicial instance in the procedures before the EPO. The Boards review contested first instance decisions, such as arising during examination of European patent applications and opposition of granted European patents. Board 3.5.01, chaired by William (Bill) Chandler, is responsible for appeals related to computer-implemented inventions (CIIs).
Hosted by the Centre for Commercial Law Studies (CCLS), Queen Mary University of London, Board 3.5.01 entertained and informed throughout the evening. Perhaps uniquely, the sell-out, two hundred strong audience was privileged to welcome the Board in almost its entirety. Joining Bill were not only three of the four technical members (Norbert Glaser, Marcus Höhn and Annika Wahrenberg; Paul Scriven travelling) but all three of the legal members (Ingo Beckedorf, Yvonne Podbielski and Petra Schmitz). A rare and very welcome opportunity to interface directly with the Board – especially outside of any proceedings.
The line between technical and non-technical subject matter
Scripted as a conversation, Bill, Petra and Norbert debated the line between technical and non-technical subject matter. Through humour, they explored the leading decision of T 0641/00 (Two identities/Comvik). In this decision, the ubiquitous problem and solution approach for inventive step, considers only those differences with respect to the closest prior art that contribute to the technical character of the invention. Iteratively, Bill, Petra and Norbert applied this approach to a hypothetical claim:
A security, e.g. a bond rating system comprising a security rating server (100d) and a security rating client (200b) connected via a communication network (300), wherein said security rating server (100d) comprises:
a security information table storing means (171d) configured for storing a security information table that records security elements, e.g. guarantor, interest rate, dividend, for each security;
a rating value calculating means (173d) configured for calculating a sum of rating contribution values for each security information table using a rating contribution value table, which stores contributing values for rating securities belonging to said security elements as rating contribution values, and for recording said sum of rating contribution values thus calculated as a rating value in said security information table;
a security information table transmitting means (174d) configured for transmitting said security information table to said security rating client (200b) when a security information table transmission request is received from said security rating client (200b); and
a transmission counting means (175d) configured for incrementing by one the number of transmissions, which is recorded on said security information table, each time when said security information table is transmitted to said security rating client (200b) by said security information table transmitting means (174d).
Prima facie, the claim relates, at least in part, to a business method, which is excluded from patentability under the European Patent Convention (EPC). But does the claim comprise patentable subject matter?
Adopting polar views and attenuated by Petra, Bill and Norbert analysed each feature of the claim in turn. In a first ‘technical novelty’ iteration, Norbert discounted all features as non-technical, being either business or mathematical methods, with the exceptions of the notorious and non-specific server and client. Countering this abrupt dismissal, Bill sought to identify features that could potentially contribute to the technical character of the claimed subject matter, purportedly directed to providing reliable ratings for securities.
The balance feature in the debate was the transmission counting means. By counting, a popularity of a security may be estimated, thereby providing more reliable security ratings for investors. The features thus identified, the trio formulated an initial objective technical problem to be solved: how to implement a system to determine reliable ratings for securities? Notably and now commonplace for those familiar with CIIs, non-technical features may be included in the objective technical problem. However, this tentative objective technical problem was deemed too abstract – the skilled person must receive the full business requirements.
The final objective technical problem to be solved was hence: how to implement a scheme taking into account the popularity of the securities?
Alas, the ‘Board’ found the solution to be obvious, a mere implementation of a business concept. Particularly, the skilled person would consider counting transmissions to assess popularity. So, like most other such contested applications heard before this Board, Bill, Norbert and Petra refused this hypothetical application. Indeed, in 2017, of some 15 patents and patent applications that related to technical and non-technical subject matter, 13 were revoked or refused by this Board.
Technical contribution in a user interface
Annika, who is also studying game programming, reviewed technical contribution in a user interface (UI), drawing on the foundations built by Bill, Norbert and Petra. With output in a UI likely to be presentation of information and hence non-technical subject matter, patentability of a UI should focus on input.
Annika introduced also the notional business person, who premiered in T 1463/11 (CardinalCommerce). The notional business person is the antithesis of the skilled person – knowing all about business matters but knowing nothing of technical matters, such as a fictitious trader, accountant or sales person.
By way of example of UIs, Annika analysed the decision of T 2019/12 (Chart curve). Claim 1 of the Main Request before the Board related to:
A method of quickly issuing an order for a chosen commodity comprising:
displaying, on a screen, a chart curve representing the price of the commodity as a function of time;
the chart curve comprising coordinate axes X and Y;
the X-axis representing time; and
the Y-axis representing the price of the commodity.
Being merely presentation of information and devoid of technical subject matter, save for the step of displaying, on a screen, the Main Request was refused.
However, the First Auxiliary Request brought user interaction, by way of a click on the curve, thereby including technical subject matter:
When the user clicks on a point on the chart curve, the order interface appears, and the price of the order is the price (Y-coordinate) at the point where the user clicked.
In this way, speed and simplicity for the user are improved, allowing faster trading. Alas and as with the hypothetical claim debated previously, the notional business person would similarly provide business requirements that render this subject matter obvious to the skilled person. Faced with the needs of improving speed and simplicity, the skilled person knows how to program such interaction with the chart curve. What is required, though not part of the application as filed in this case, is something more – a physiological benefit for the user.
Questions from the floor
The Board graciously invited questions from the floor – with attorneys enthusiastically probing a spectrum of subjects.
Blockchain is the subject of a forthcoming one-day conference at the EPO on 04 December 2018 and applications the number of European applications for this technology has increased exponentially in recent years. While the Board has as yet to review a case on blockchain, this is expected in the future. The Board is of the opinion that the existing framework, based on Comvik, for review of such applications and patents is appropriate, as it is for inventions related to artificial intelligence (AI) and machine learning (ML). In addition and as discussed at the recent one-day conference on these technologies, the Board mused whether AI is itself patentable…
With a 30 year history of refining definition of the ‘as such’ qualifier of excluded subject matter, the position developed by the Boards of Appeal is increasingly applied in other jurisdictions, which is welcome.
Guidelines for Examination
Asked whether the Guidelines for Examination at the EPO are correct, the Board diplomatically avoided a binary response. The Boards of Appeal are bound only by the EPC and do not check the Guidelines. Rather, the Guidelines interpret the Case Law of the Boards of Appeal and as with any interpretation, there is a possibility of different interpretations. However, the Board remarked that the Boards of Appeal and the Examining Division are well aligned.
Rules of Procedure of the Boards of Appeal
Following the user consultation earlier this year, contributed to by more than 40 user groups and 150 users, a second draft of the Rules of Procedure of the Boards of Appeal is in preparation. This second draft will be published in advance of the User Conference on 05 December 2018. It is expected that the final draft will be presented for adoption in March 2019, with entry into force six months later i.e. September 2019.
What can patent attorneys do to enhance chance of success? Describe in detail the technical effects arising from the features and include concretized fall back positions. Show test data to demonstrate the benefits of the invention, contrasting physiological and psychological indicators – the former being helpful to patentability.
The consistent approach at the EPO to handling applications and patents including non-technical and technical subject matter gives certainty to Applicants, Patentees and Opponents. This makes Europe a well-characterised jurisdiction for patenting economically-important computer implemented inventions. Industry 4.0, for example, depends entirely on CIIs. This predictability enables Applicants to better identify patentable inventions and to progress respective applications at the EPO with increased assurance. In addition, the extensive update to the Guidelines for Examination for inventions based on AI and ML is also particularly welcome, harmonizing their examination at the EPO.
The second draft of the revisions to the Rules of Procedure of the Boards of Appeal is much anticipated, particularly given that the revised Rules are expected to enter into force in September 2019. The revisions aim to streamline the appeal proceedings, by tightly constraining the appeal proceedings to only a review of the appealed decision. However, the proposed revisions of the first draft appear to disadvantage Applicants and Patentees. This is particularly concerning in inter partes appeal proceedings.
If your business depends on computer implemented inventions, we can secure the intellectual property (IP) protection you need, so you can maintain your exclusivity. In addition, we can define a clear path for you through the IP surrounding your technology, so you can continue and grow your business.