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A Claim that is seen to lack technical features can have a hard time at the EPO. The applicant was refused a patent with the following claim:
1. A mobile communication device comprising:
a transmitter configured to transmit data, messages, and commands;
a receiver configured to receive data transmissions and information, including via one or more live data feeds;
one or more input devices for receiving user inputs;
a display screen; and
a
processor executing software that causes said communication device to
generate and display a first interactive graphical user interface (GUI)
on said display screen,
said first interactive GUI simultaneously
displaying live market data and information received via at least one of
said live data feeds in the form of:
a dynamic market window displaying user-selected multimedia content,
live market statistics, and
at
least one execution icon that when selected, invokes said communicating
device to generate and transmit a transaction execution command."
The applicant had received a no search, and no invitation under R.63(1) to indicating the subject-matter to be searched. Neither the search division nor the examining division cited any prior art document.The applicant is asking the Board to refund the search fee, as no search has actually been performed.
The applicant was refused as not being inventive over a notorious smart phone. The applicant tries to argues that the Claim nevertheless requires technical considerations and cannot be refused in this manner. How can one show that a claim feature implies a technical consideration?
Reasons for the Decision
(...)
Main request Article 56 EPC - Inventive step
2.
The Board sets out from
close prior art represented by a mobile
communication device in the form of a notorious smart phone comprising
an interactive graphical user interface (touch screen), as acknowledged
in the application (A1, column 1, lines 26 to 31).
3. In the light
of Article 52(1)(2)(3) EPC,
Article 56 EPC requires a non-obvious
technical contribution (see e.g. T 641/00-Two identities/COMVIK,
Headnote 1, OJ EPO 2003, 352; T 1784/06-Classification method/COMPTEL).
4.
The cognitive meaning of information received, displayed and
transmitted (multimedia content, market data, transaction execution
command) does not have any non-obvious technical implication for the
functioning of the communication device and its interactive graphical
user interface (GUI).
The appellant has argued that a "transaction
execution command" implies an automatic (i.e. technical) compilation of a
plurality of data items as a "transaction" presupposes information on
at least two trading partners, the commodity to be traded, an accepted
price and the like. However, the underlying technical operation is
carried out by any conventional smartphone used for an online shopping
transaction.
(If that operation was non-obvious, the application would
have to disclose it in enabling detail.)
5. The use of an icon as a
means for inputting a command is another notorious GUI feature.
Similarly, displaying various types of information simultaneously in one
window ("dynamic market window") is anticipated by GUIs of conventional
smart phones which display internal and external data and metadata.
6.
The appellant's central argument with respect to inventive step was
that the claimed communication device was arranged to receive live data
feeds, i.e. real-time transmissions updated in "milliseconds" (A1,
paragraph 0137), which were significantly more sophisticated than
conventional, slower data transmissions. Prior mobile devices were
unable to connect to multiple feeds (statement of grounds of appeal,
bottom of page 4). Setting out from a conventional communication device,
there was no hint for the skilled person to provide live data feeds for
improving the mobile retrieval, display and/or interaction with
critical market data.
7. The Board first notes that updating a
transmission is primarily an operation of the transmitting device (e.g. a
server) and may not require any modification of the receiving device
(i.e. of the mobile communication device claimed). Once a conventional
communication channel to a conventional communication device has been
established, transmitted data may be updated by the sender as frequently
as desired.
8.
Moreover, while the application frequently
mentions live data feeds, it does so essentially in the form of
catchwords or desiderata without explaining any non-obvious technical
background of such feeds. The appellant relied on a single feature in
the description (A1, paragraph 0156: data compression) to show that the
application provided some technical detail enabling live data feeds.
However, that feature represents common general knowledge in data
processing (zip files, for example), and it is up to the skilled person
to weigh up its well-known advantage (reduced data volume) and
disadvantages (compressing/decompressing steps). While a compressed data
volume can be transmitted more quickly, the compression and
decompression steps may eat up the time saving. This (conventional)
compromise is confirmed by the application which states that data
compression is used to "optimize" communications (A1, paragraph 0156)
rather than to maximise the updating speed. In other words, no
non-obvious approach is disclosed for providing the desired real-time
market information.
9. As far as multiple real-time feeds to a
mobile communication device are concerned, the Board again notes that
this is not necessarily a feature of the claimed receiving device as the
desired data may be aggregated by a sending server (A1, paragraphs
00010, 0012 etc), the server not being part of claim 1.
Moreover,
no non-obvious technical implementation of multiple real-time feeds to a
mobile communication device is detailed in the application. The Board
accepts that such an implementation was available to the skilled person
but pre-existing knowledge cannot be an inventive contribution.
10.
The Board finally notes its disagreement with the argument that the
skilled person had no obvious reason to enhance a mobile device by live
data feeds. Real-time transmissions were demanded by market participants
(A1, paragraph 0004), i.e. this user demand is the obvious task
addressed by the skilled technical person.
11. Therefore, the
Board judges that the mobile communication device according to claim 1
of the main request does not involve an inventive step.
(...)
Request for a (partial) refund of the fee for a European search
24.
The appellant considers that the EPO has enriched itself unfairly by
receiving the search fee without performing a search. According to the
appellant, the no-search declaration of the search division cannot be
deemed to be a European search report under Rule 63(2) EPC as the search
division ignored Rule 63(1) EPC by failing to invite the appellant to
file a statement indicating the subject-matter to be searched.
Even
in the absence of a specific reimbursement provision in the EPC, the
search fee should be reimbursed (partly) according to a pertinent
principle of law (condictio ob rem) generally recognised in the
Contracting States (Article 125 EPC).
Article 9 of the Rules
Relating to Fees is said to reflect the principle of fairness as it
grants a refund of the search fee if the European patent application is
withdrawn or refused or deemed to be withdrawn at a time when the Office
has not yet begun to draw up a search report. By way of analogy, the
same principle should apply to cases where the EPO has deliberately
chosen not to conduct a search, in particular where the choice is based
on an unjustified discrimination of subject-matter according to the
Notice from the European Patent Office dated 1 October 2007 concerning
business methods (OJ EPO 2007, 592) which announced a no-search policy
for claims pertaining to business methods. In similar fields (such as
gaming machines), searches are provided even on minor technical
features. In any event, the Notice concerning business "methods" is not
applicable to the claims of the present application which relate to
"devices" comprising technical features. Hence, there has never been any
justification for omitting a search.
25.
The Board points out
that it applies the EPC and associated provisions as they stand. The
Rules Relating to Fees do not provide for a refund of the search fee in
case of a no-search declaration under Rule 63 EPC. Rule 63(2) EPC states
that such a no-search declaration shall be considered as the European
search report.
26.
The fact that the search division did not
comply with Rule 63(1) EPC (failure to communicate with the appellant)
does not alter the legal situation. The search division's actions are
not open for review by the Board (Article 106(1) EPC) and, for the same
reason, the search division's reliance on the Notice from the European
Patent Office dated 1 October 2007 concerning business methods is
neither.
27. The appellant referred also to Article 125 EPC to
postulate a right to a (partial) reimbursement of the search fee when no
prior art search has been carried out. Article 125 EPC reads:
"In
the absence of procedural provisions in this Convention, the European
Patent Office shall take into account the principles of procedural law
generally recognised in the Contracting States."
What the
appellant claims here is to apply an allegedly pertinent principle of
law in the Contracting States, namely the law of unfair enrichment.
However, the law of unfair enrichment is provided by substantial law,
not procedural law. Thus, Article 125 EPC does not provide any basis for
the appellant's claim to reimburse the search fee.
28.
For the
sake of completeness, the Board wishes to express its awareness of the
appellant's fundamental right to judicial review but that does not mean
that such a review has to be provided by the Boards of Appeal in all
types of disputes between an appellant and the European Patent Office or
Organisation.
In particular, the Board is not competent to decide
on claims for compensation in respect of a loss or damage allegedly
caused by the EPO in the course of patent grant proceedings, see e.g. J
14/87 (OJ EPO 1988, 295, point 13, referring to Article 9 EPC
"Liability").
29. Therefore, the Board considers that the request for a (partial) refund of the search fee is inadmissible.
(...)
This decision has European Case Law Identifier:
ECLI:EP:BA:2014:T224913.20141017
. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "reading in white" by
