Tuesday, August 30, 2016 T 779/11 - In the dark after the search stage

Acting in its capacity of ISA, the EPO issued a declaration under Art.17(2)(a) PCT to the effect that no international search report would be established because no meaningful search was possible. The declaration explained that "[t]he claims relate to subject matter excluded from patentability under Art. 52(2) and (3) EPC [sic]". The declaration further mentioned that a search might be carried out during examination before the EPO should the problems which led to the declaration be overcome. However, the Examining Division refused the application without carrying out a search. It decided on a main request and two auxiliary requests, refusing the main request and auxiliary request 1 for lack of inventive step and not admitting auxiliary request 2 into the proceedings. The applicant appealed and argued, in particular, that the Examining Division's decision not to perform a prior-art search at all was against the established case law of the boards of appeal.
The Board made a clear distinction between the EPO as ISA, and the EPO in the regional phase: acts of the EPO as ISA are not subject to review by the Board. The Board then continued to review whether the claimed subject-matter related to notorious knowledge, which would/could justify to not perform a search and not cite any prior art document. 

Tuesday, May 10, 2016 T 1145/10 - Notoriously known, but still to be identified

In this examination appeal, the Board considers that, depending on the case at hand, that it may be acceptable to start the inventive-step assessment of a particular invention including a mix of technical and non-technical features from a "general-purpose computer system" or a "standard computerised system" as known at the effective filing date, without citing documentary evidence.

As such, the Board confirms the established practice of the BoA (e.g., T 1242/04 citing T 939/92) in which notorious general technical knowledge does not require documentary evidence. 

However, in the present case, the Examining Division failed to identify which features were exactly considered to be anticipated by that well-known prior art. 

Moreover, the Board considers that where specific technical features or functionality of the standard computerised system are required to implement the non-technical features, those specific well-known technical features and functionality should be clearly identified.

However, rather than further considering the inventive step over a standard computerised system, the Board proceeds with selecting a D2 document as CPA while considering the distinguishing features as non-technical administrative constraints which would be obvious for the skilled person.

As such, the Board avoids a potentially tricky subject. Namely, one can imagine that, without having any documentary evidence as a basis for discussion, it may not always be trivial to clearly determine which features of a computer implemented invention are exactly anticipated by that well-known prior art, and which non-technical features may be implemented thereby...

Tuesday, July 21, 2015 T 306/10 - Recommender systems not patentable

Can an improved recommender system be inventive? Claim 1 of the main request concerned a 'method of discovering relationships between items'. In response to a query item, user logs are found in which the query occurs. Based on the logs a result item is then identified. 

One problem with such recommenders is that best sellers tend to occur in many user logs. Thus, such an algorithm would tend to recommend best sellers in response to any query. The invention in this application solved this problem by identifying an item which is over-represented compared to all user logs. An auxiliary request also outputs the identified result item as a recommendation.

However, the board will have none of it. Improvement in the selection of an item for recommendation is regarded as subjective, and thus not technical, and thus not patentable. A lot of non-trivial research is done on recommender systems, however; much of it involving mathematics (see this example). Following this decision, none of it can be protected.

The decision uses the notorious general-purpose computer as closest prior art. Some other boards seem to dislike this and have held that notorious should be interpreted narrowly (T698/11; T690/06; T359/11). In this regard it would be interesting if the amendments suggested in an obiter dictum (R.4.8) were carried out, to see if that could at least have swayed the board to adopt a more realistic starting point for inventive step.