T 1294/15 - A business method claim without claiming the business is still a business method

A rose by any other name would smell as sweet

In affiliate reward programs, rewards might need to be divided among different participants; in the claim between a content manager and an introduction page manager. Instead of dividing up each reward among the parties, the application proposes to sometimes award the full amount to one single party and sometimes to another single party. Overtime this balances out so that the rewards are are about equal to exact division. The new scheme is more efficient since it needs fewer divisions. 

The board doesn't like the claim, as it represents a business method. However the applicant makes an interesting argument. By stripping all the business aspects of the claim, one is left with merely an improved division algorithm. If the stripped claim is technical and inventive then surely further restricting is can't remove patentability? Unfortunately for the applicant this argument is not accepted. 

T 2133/14 - Skilled person resolving a clarity problems in the claim

Sending an interrogation signal

How much can the skilled person bring to the table when establishing the meaning and enablement of a claim? This application was refused by the Examining division for being neither clear nor sufficiently disclosed. But the board has a higher opinion of the skilled person, and consider him capable enough to bridge the gaps.

The claims relate to a first device that stores 'multiple versions of application software'. The first device want to communicate with a second device, but its software may not be compatible. This is solved according to Claim 1 by sending 'an interrogation signal' to the second device and receiving back 'identification information'. The first device's method then comprises, based on the identification information:

correlating (225) thereto a version of the application software from among the multiple versions of application software associated with the first electronic device that is compatible with the recognized version of the application software currently being utilized by the second electronic device, wherein the correlating step utilizes a look-up-table."

An auxiliary request restricts claim 1 to a control device and an implantable medical device. Although the board reverses the Examining division on clarity and sufficient disclosure, in the end the claims are found to be non-inventive. 

Reasons for the Decision

The invention

1. The application is concerned with ensuring the compatibility of application software running on two communicating electronic devices, preferably an implantable medical device such as a cardiac pacemaker and an associated control device (see paragraphs 1 and 15).

1.1 More specifically, it is observed that the application software running on the implantable device (the "second" device in claim 1 of the main request) may be updated during its lifetime and stated that, for proper operation, the control device (the "first" device) will need to run a "compatible version of application software" (see paragraph 17).

1.2 According to a prior art solution, discussed in paragraph 4 (U.S. patent application 5,800,473), if it is detected that the implant runs a more recent version of the application software than the control device, then the more recent software "objects" are downloaded from the implant to the control device. In the application, this solution is stated to require an undesirably complex implantable device, too much energy and time, and to have the further disadvantage that the control device will at any point in time only run a single version of the application software, which may not be compatible with all implantable devices (see paragraph 4, lines 11-15, and paragraph 5). The invention is intended to overcome these disadvantages (see paragraph 9).

1.3 As a solution, it is proposed that a control device for communicating with a specific implantable device generate and transmit an "interrogation signal" to the implantable device. In response, the latter generates and transmits a "response signal" to the control device, the response signal comprising "identification information" including one or more of its type and a "unique identification number" and the version of the application software installed on it (see paragraphs 10, 20 and 23-30). The control device stores "multiple, preferably all, updates, versions or generations of the application software for the control device" in question (see paragraphs 16 and 34). Based on the received "identification information", the control device "correlates or maps" to the implantable device a compatible version of the application software using a lookup table (see paragraphs 21 and 22). Subsequently, the control device uses the so-determined compatible version (see para­graph 33). The procedure is depicted in figure 2.

Clarity and sufficiency of disclosure,

Articles 84 and 83 EPC

2. The examining division found the independent claims of both requests to be unclear for the following reasons (see the decision, points 19-22 and 25).

2.1 It was left open what kinds of interrogation and response signals could be processed by all possible electronic devices. At least for some pairs of elec­tronic devices, it would require inventive skill to provide suitable interconnection signals, while the description did not disclose further details. As a consequence, the independent claims were not supported over their full breadth by the description, Article 84 EPC, and, because "said clarity objection" could not be resolved using the description, their subject-matter was insufficiently disclosed, Article 83 EPC (see esp. the recitation of section 9.1.1.2 on pages 6 and 7 of the decision).

2.2 The claimed invention presupposed that the different software versions all had different interfaces. Because this was an unrealistic assumption, the intended "system context" was unclear (see the recitation of sections 9.1.1.3 to 9.1.1.5 on page 7 of the decision).

2.3 The claims left open how the control device was meant to be "'equipped with multiple software versions initially' for all diverse types of 'second electronic devices', [and] for all their respective versions of software", and how it was avoided that the first electronic device had to be modified whenever the application software was changed (i.e. continuously or frequently). Also, for combinatorial reasons it was unrealistic to assume that each first electronic device could store all versions of the application software for all types of second electronic device. This rendered the claims unclear, Article 84 EPC, and meant that their subject-matter was insufficiently disclosed, Article 83 EPC, because "said clarity objection" could not be resolved using the description (see the recitation of sections 9.1.2.1 to 9.1.2.5 on pages 9 and 10 of the decision).

2.4 "Correlating" a version of the application software to the second device did not have a clear technical effect, since the "correlated version of [the] application software" was neither loaded nor used for communication (see esp. the recitation of section 9.1.3 on page 11 of the decision).

The board's view on clarity and sufficiency

3. The board does not share the conclusions of the examining division on clarity of the independent claims.

3.1 While the board agrees with the examining division's view that "correlating" has no clear technical effect (see point 2.4 above), this alone does not imply a lack of clarity.

3.2 The board also agrees with the examining division that the claims do not specify any details about the inter­rogation or response signals, or what it would mean for two devices to be compatible or incompatible. The claims further do not include any feature that would allow an estimate of the number of versions the first electronic device would have to store and when or how the first electronic device would have to be updated.

3.3 None of these omissions however implies, in the board's view, a lack of clarity - or an insufficiency of disclosure, for that matter.

3.3.1 The board considers that the skilled person would have no technical difficulty in implementing a form of interrogation/response-protocol in devices even in a "non-standard scenario" such as a smartphone communicating with a cardiac pacemaker (see paragraph bridging pages 6 and 7 in the decision).

3.3.2 The skilled person would interpret the notion of "compatibility" as used in the claims broadly. In the broadest reasonable sense, two pieces of software would be considered "compatible" if they are intended - and can, thus, be assumed - to interoperate properly. Apparently, this would not be the case if their interfaces did not match. However, even software with matching interfaces might not properly interoperate, for various reasons apparent to anyone skilled in the art of programming. The skilled person would understand that, effectively, "compatibility" is what the "correlating" step establishes, and - for the purposes of the claimed subject-matter - two pieces of software are compatible if the look-up-table "says so".

3.3.3 It would have been evident to the skilled person that the memory requirements on the first electronic device grow with the number of versions of the application software to be stored. The board also agrees with the examining division that this number might well be larger than what a typical such "first electronic device" can actually store (see also "all possible versions" in claim 2). However, while it might be undesirable or impracticable for various reasons, it would not be technically difficult to either enlarge the memory of the first electronic device or to limit the number of versions to some (the most recent say, or only those needed for some "second" device types) to the detriment of others.

3.4 The board takes the view that the skilled person would not need any explicit statement in the application to be able to handle the mentioned situations properly. Hence, in the board's view, the independent claims are neither unclear in the mentioned respects, nor insufficiently supported. Their subject-matter is also not insufficiently disclosed.

4. The findings in point 3 are further corroborated by the following considerations.

4.1 An objection that a claim is too broad to be supported by the description over its full breadth can be addressed by limiting the claim to a breadth which is. For that reason, the limitation of a claim covering standard and non-standard scenarios (claim 1 of the main request) to only the standard scenario of a control device and an implantable medical device (see the auxiliary request) is a valid attempt to overcome at least one of the objections regarding incomplete support by the description labelled "9.1.1.2" (see paragraph bridging pages 6 and 7 of the decision).

4.2 Moreover, the board does not agree that the subject-matter of a claim which is not supported over its full breadth by the description or which is unclear is ipso facto insufficiently disclosed, as the examining division suggests (loc. cit.). Accordingly, the board considers that the objection under Article 83 EPC is not correctly reasoned in the decision.

5. In the following, the board takes the view that the skilled person would construe claim 1 of the auxiliary request as follows. The first electronic device (the control device), storing multiple versions of some application software, asks the second electronic device (the implantable medical device) for identification information which, inter alia, identifies the version of the application software it runs. This information is then used to identify a preferred version of the software to be run on the first electronic device. This version is identified using a look-up table and referred to in the claims as "compatible".

(...)

This decision T 2133/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2020:T213314.20200603. The file wrapper can be found here . Image by Stafford Green (staffordgreen0) obtained under the Pixabay license

T 1798/13: Improving accuracy of forecasted weather data is akin to a scientific discovery, so not technical

The invention relates to a method and system for forecasting the value of a weather-based financial product using forecasted weather data. This data is derived from historical weather data for a defined time and geographical area and is processed to obtain a "quality indicator", which is indicative of the reliability of the forecasted data. The quality indicator is then used to forecast the value of the financial product. The application was refused for lack of inventive step, because in the opinion of the Examining division, no technical problem was solved.

In appeal, the applicant argued that although the use of weather data to calculate the value of a financial product had no technical character, the invention improved the reliability and predictability of weather forecast data in general, which was a technical problem.

The Board disagreed and observed that "the weather" is not a technical system, but is a physical system that can be modelled to show how it works.  In its view, this kind of modelling is considered to be a discovery or a scientific theory, which are not regarded as inventions under Art. 52(2)(a). The Board concluded that the improvement lay in the processing of data to achieve a more accurate weather forecast, i.e. an improved model using a scientific theory, which could contribute to technical character.

The appeal was dismissed. 

T 1900/16 - strict formulation of objective problem leads to inventiveness

Printer with blank pages 

When printing a document, it sometimes happens that inadvertently a blank pages ends up between the printed pages. While this is annoying in any print-job it can become a real problem if one is doing print jobs of 100,000 pages. The solution to this problem comprises better synchronization of read and write commands in the printer spool file. 

The Examining division argued for lack of inventive step by solving the general problem how to 'ensure correct printing results are generated'. A skilled person would then try to apply known techniques that avoid incorrect data and arrive at the solution defined in claim 1. 

The board found this line or arguing incorrect. Without generalizing the problem set out in the application, the skilled person would not have combined with the secondary document. 

BREAKING NEWS: G 3/19 - Plants and animals exclusively obtained by essentially biological processes are not patentable, but no retroactive effect

Today, the EPO issued a Press Communiqué concerning opinion G 3/19 of the Enlarged Board of Appeal. (link)

The Press Communiqué is cited in full below (with emphasis added).

The full decision can be found here (G 3/19). Further references are given at the end of the Press Communiqué.

The headnote of the decision reads:

Taking into account developments after decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal, the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC has a negative effect on the allowability of product claims and product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process. This negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending.

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[start of citation of Press Communiqué]

Press Communiqué of 14 May 2020 concerning opinion G 3/19 of the Enlarged Board of Appeal

The Enlarged Board of Appeal of the European Patent Office issued opinion G 3/19 (Pepper) today and concluded that plants and animals exclusively obtained by essentially biological processes are not patentable.

The Enlarged Board of Appeal of the European Patent Office adopted a dynamic interpretation of the exception to patentability under Article 53(b) of the European Patent Convention (EPC) and held that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by means of an essentially biological process.

Background

The Enlarged Board of Appeal is the highest judicial authority under the EPC, which provides for an autonomous legal system that is separate from the European Union. The Enlarged Board's main task is to ensure the uniform application of the EPC.

Under Article 53(b) EPC, European patents shall not be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals. Rule 28(2) EPC provides that under Article 53(b) EPC, European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process. Rule 28(2) EPC was introduced by decision of the Administrative Council of the European Patent Organisation and came into force on 1 July 2017.

In 2015, the Enlarged Board had concluded in its decisions G 2/12 and G 2/13 within the then applicable legal framework, i.e. before the introduction of Rule 28(2) EPC, that the non‑patentability of essentially biological processes for the production of plants or animals under Article 53(b) EPC did not extend to products that are exclusively obtained by means of an essentially biological process.

In 2018, a Technical Board of Appeal held in decision T 1063/18 that new Rule 28(2) EPC had no impact on the interpretation of Article 53(b) EPC, and followed the Enlarged Board's earlier decisions G 2/12 and G 2/13.

In 2019, the President of the European Patent Office referred a point of law to the Enlarged Board of Appeal under Article 112(1)(b) EPC concerning the interpretation of Article 53(b) EPC in view of legal and other developments occurring after decisions G 2/12 and G 2/13, and in particular in view of new Rule 28(2) EPC.

Key considerations

In its opinion issued today, the Enlarged Board of Appeal held the referral by the President of the European Patent Office to be admissible within the terms of a re‑phrased question. On the merits of the referral, the Enlarged Board endorsed its earlier findings on the scope of Article 53(b) EPC, which were based on the classical (i.e. the grammatical, systematic, teleological and historical) methods of interpretation. However, the Enlarged Board found that a particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provision may change or evolve over time. This meant that decisions G 2/12 and G 2/13 did not settle the meaning of Article 53(b) EPC once and for all.

Taking account of the Administrative Council's decision to introduce Rule 28(2) EPC, the preparatory work on this provision and the circumstances of its adoption, as well as legislative developments in the EPC contracting states, the Enlarged Board concluded that new Rule 28(2) EPC allowed and indeed called for a dynamic interpretation of Article 53(b) EPC.

In adopting this dynamic interpretation, the Enlarged Board abandoned its earlier interpretation of Article 53(b) EPC in decisions G 2/12 and G 2/13. It held that, after the introduction of new Rule 28(2) EPC, Article 53(b) EPC was to be interpreted to exclude from patentability plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.

In order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board ruled that the new interpretation of Article 53(b) EPC given in G 3/19 had no retroactive effect on European patents containing such claims which were granted before 1 July 2017, or on pending European patent applications seeking protection for such claims which were filed before that date.

Contact

Nikolaus Obrovski
Spokesperson of the Boards of Appeal of the European Patent Office
BOA-PRESS@epo.org

This press release is a non-binding document for media use.

• The full text of the opinion (PDF, 548 KB)

Further information

06.07.1998	EU Directive 98/44/EC of the European Parliament and of the Council on the legal protection of biotechnological inventions; OJ EU 1998 L 213/13
16.06.1999	Decision CA/D 10/99 of the Administrative Council, insertion of new Chapter VI "Biotechnological inventions" in Implementing Regulations to the EPC; OJ EPO 1999, 437
09.12.2010	G 2/07 (Broccoli I), Decision of the Enlarged Board of Appeal; OJ EPO 2012, A130 G 1/08 (Tomatoes I), Decision of the Enlarged Board of Appeal; OJ EPO 2012, A 206
25.03. 2015	G 2/12 (Tomatoes II), Decision of the Enlarged Board of Appeal; OJ EPO 2016, A27 G 2/13 (Broccoli II), Decision of the Enlarged Board of Appeal; OJ EPO 2016, A28
01.07.2017	Rule 28(2) EPC (entry into force), see Decision CA/D 6/17 of the Administrative Council; OJ EPO 2017, A56
05.12.2018	T 1063/18, Decision of Technical Board of Appeal 3.3.04; decision text (not published in OJ EPO)
05.04.2019	Referral of a point of law by the President of the EPO; OJ EPO 2019, A52
14.05.2020	G 3/19 (Pepper), Opinion of the Enlarged Board of Appeal; opinion text (not yet published in OJ EPO) Amicus curiae briefs

[end of citation of Press Communiqué]

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T 487/16 - Can a document admitted by the opposition division and upon which the decision was based be excluded from appeal proceedings?

In the present case, an appeal was filed by the appellant (patent proprietor) against the decision of the opposition division revoking his patent due to lack of novelty  w.r.t. D1 and lack of inventive step w.r.t. D3 in combination with late-filed document D7. D7 was admitted by the Opposition Division as prima facie relevant (page 5 of the decision). Arguments of the proprietor before the Opposition Division, that D7 belongs to a remote technical field were not of any avail. In his grounds of appeal, the appellant submitted that "D7 was late filed before the opposition division which then erred in admitting the document despite its content relating to a remote technical field and not being of prima facie relevance to the claimed subject-matter. D7 should thus not have been admitted into the proceedings." Was the Board convinced? Did the Board allow D7 to be used? Did the Board agree with D7 being from an unrelated or remote technical field and did that have any effect on its admissibility or otherwise?

T 509/18 - Lack of sufficiency in a machine learning application

This examination appeal concerns a driver alertness detection system. Based on imaging of the driver's head and eyes the driver's attention state is determined. Determining the attention state uses a machine learning system. 

The description has a few sections in which the machine learning aspects are explained. Apparently, a matrix of inter-point metrics is used for a look-up-table classification. In principle classification systems are well known, and this suggests some kind of nearest neighbor classification, so I didn't think anything of it.  But the board probes deeper and finds the description insufficient. On closer reading it is indeed unclear what exactly is happening. I'm convinced that one could make a system like this work in many ways; but perhaps not while literally following the description. 

The applicant had argued that the skilled person would know how to enable this based on his common general knowledge; the applicant cited multiple documents in support of this argument. Moreover, in first instance the application was refused for lack of novelty not for lack of sufficiency.  The reasons of the appeal decision do not refer to the common general knowledge though.

In any case, it is a useful reminder not to be too succinct in your description.