Author Archive

Authorisation of access terminal rather than user: technical

The European Patent Office refused to grant a software patent on a method and system of authorisation of an access terminal rather than a user. Here are the practical takeaways of the decision T 0737/14 (Authorisation system / SECOREN) of 9.7.2019 of Technical Board of Appeal 3.5.01:

Key takeaways

Catchwords: The proper application of the COMVIK approach requires a thorough analysis of the business constraints when formulating the problem to be solved before investigating what the skilled person would have done to solve it. The failure to reflect all aspects of the business method in the problem to be solved led the examining division to argue unconvincingly that the inconvenient distinguishing feature of authorising the access terminal was an alternative whose choice was governed by unspecified business constraints.

The invention

The invention concerns an authorisation system for authorising a transaction on an account.

The invention recognised that existing commercial outlets, which were equipped with terminals able to read card details, could be used for loading money onto a pre-paid card with little effort or expense.

In this new scenario, there was no need for the card owner to register themselves with the system handling the authorisation of the pre-paid cards. Instead, trust was established based on the access terminal being authorised to carry out such transactions.

As shown in Figure 7, there are three entities in this system: an access terminal 100, an account server 120, and an authorisation server 140. The access terminal sends a first transaction request 204 to the account server that forwards this, as the third transaction request 208, to the authorisation server. The access terminal also sends a second transaction request 206, including a terminal identifier, to the authorisation server. Based on the transaction data, the authorisation server determines whether the access terminal is authorised to enable the transaction, and sends the response 210 to the account server that carries out the transaction on the account.

Fig. 7 of EP2115676
Fig. 7 of EP2115676

Here is how the invention is defined in claim 1 of the sole request:

  • Claim 1

Is it patentable?

Although the invention concerns inter alia a business idea, claim 1 also includes technical means. Therefore, there was no discussion whether the claim 1 as a whole is patent-eligible.

During the proceedings, D1 was considered as the closest prior art. The key distinguishing feature from claim 1 over D1 was found to be:

  • The authorisation server in claim 1 determined, based on access terminal identification data, whether the access terminal (rather than the user) was authorised to enable the transaction.

The examining division argued that the identification of the access terminal rather than the user was a well known alternative available to the skilled person, and that the choice was “governed by business constraints”.

The assessment of the examining division was found not convincing by the Board:

2.6 The examining division did not say what the business constraints were. That is unfortunate, because the business constraints are key in this case. The Board does not see any technical reason, given the on-line purchasing scenario in D1, why the skilled person would have identified the access terminal…

The Board took a further analysis of the underlying transaction scenario in the invention:

4.1 The Board takes the view that the pre-paid scenario, including the relationship between the point-of-sale/agent, the credit card issuer/processor, and the third party, is a business idea. According to decision T 641/00 – Two identities/COMVIK, this type of subject-matter cannot contribute to inventive step. Instead, as mentioned above, it is considered to be part of the problem that the skilled person has to solve.

4.2 In the Board’s view this case is a good example of why the proper application of the COMVIK approach requires a thorough analysis of the business constraints when formulating the problem to be solved before investigating what the skilled person would have done to solve it. …

4.3 …, the skilled person should have been given the problem of implementing a business model on the conventional transaction processing system, as exemplified in D1, in which the third party carries the financial risk and needs to safeguard itself from fraud and recover the funds from the agent. The skilled person would have assigned the necessary technical means, namely an access terminal at the side of the agent, an account server at the side of the credit card issuer/processor, and an authorisation server that carries out the task of the third party. The functions performed by those entities in claim 1 follow directly from the business scenario. Since the third party needs to safeguard itself, rather than the agent, from fraud, the skilled person would realise that the third party has to authorise the agent. Performing the authorisation based on the terminal identifier of the access terminal would have been an obvious implementation.

In the end, the Board concluded that claim 1 lacks an inventive step over D1. The appeal was thus dismissed and the patent application was finally refused.

More information

You can read the whole decision here: T 0737/14 (Authorisation system / SECOREN) of 9.7.2019.

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Conducting internet search from an instant messenger: non-technical

The European Patent Office refused to grant a software patent on a method of conducting internet search from an instant messenging application. Here are the practical takeaways of the decision T 0543/18 (Internet search from an instant messaging application/OATH) of 9.5.2019 of Technical Board of Appeal 3.5.07:

Key takeaways

The desire to enable users to perform explicitly defined web search queries is not a technical aim but rather a non-technical requirement. Searching for documents using keywords has a non-technical character, and this is not changed by the mere use of a computer system.

The invention

This patent application relates to inline searching in an instant messaging (IM) environment. According to the description, known IM applications do not allow a user to link directly to the World Wide Web to perform searches, nor do they allow the user to easily share the search result. IM users must manually open a separate web browser window to visit the web site of an internet search engine. After typing search criteria into the internet search web site, an IM user manually flips through the search results to identify relevant web sites and then visits those web sites. To share the search result, the user must copy and paste the URL of the web site into an IM conversation and send the URL.

The patent application proposes performing a web search inline in an IM environment and displaying search results inline in the IM environment. A user can enter a search query in the IM application by typing a predefined character string as a search trigger to identify the text following this string as a search query. The search query itself is then displayed inline in the IM windows of the two users connected via IM. The search request is also sent to an internet search server, which processes the request and generates search results. At least one search result is then displayed inline in an IM window to both users.

Fig. 1 of EP1747516
Fig. 1 of EP1747516

Here is how the invention is defined in claim 1 of the sole request:

  • Claim 1

Is it technical?

During the proceedings, D3 was considered as the closest prior art. The Board took the view that D3 does not disclose steps (a)(i), (b) and (d) of claim 1:

  • (a) (i) said recognizing comprises identifying a predetermined character string in the instant message as a search trigger
  • (b) causing the search query to be displayed to the first user inline in an IM window on the first client computer and to the second user inline in a second IM window on a second client computer of the second user
  • (d) automatically causing at least one of the search results to be displayed inline in the IM window on the first client computer and inline in the second IM window on the second client computer

The Board found that these steps do not have a synergistic interaction and could therefore be treated separately in the obviousness assessment. For step (a)(i), the problem solved was formulated as how to modify the teaching of document D3 to inform the system explicitly when a search should be performed.

5.3.2 However, the desire to enable users to perform explicitly defined web search queries is not a technical aim but rather a non-technical requirement. Searching for documents using keywords has a non-technical character, and this is not changed by the mere use of a computer system.

Also the appellant’s arguments did not change this assessment:

5.3.7 The appellant further argued that D3 … would have dissuaded a skilled person from using a command-line type mechanism because computer/user interaction schemes had evolved away from command-line interfaces to windowed environments precisely to try to reduce requirements for user effort/action, and this represented a technical prejudice in the relevant art.

However, the desire to add an explicit search query is non-technical and forms part of the problem to be solved. As an explicit search command always involves some input from the user side and as explicit search commands were also well-known in windowed environments, the appellant’s arguments are not persuasive.

For steps (b) and (d), the appellant argued that they had the technical effect of improving user ergonomics. Step (d) of claim 1 improved the visibility of search results for both users by displaying search results in an inline manner, thereby increasing user convenience to enable users to view search results fatigue-free while also continuously keeping track of their conversation. The Board also considered the appellant’s argument that the invention provided an objective physiological reduction in eye and hand movement when providing input:

5.4.2 … That the inline manner of presentation enables users to view search results fatigue-free while also continuously keeping track of their conversation is not convincing as this depends on subjective user preferences (some users may prefer an inline presentation whereas others may not like it) and the information to be presented (e.g. reproducing a retrieved web page inline may not be appropriate as the web page may no longer be readable or occupy so much window space that the messaging context is no longer visible). Hence, the inline manner of presentation does not contribute to the technical character of the invention.

In the end, the Board considered that also steps (b) and (d) do not contribute to the solution of a technical problem. The appeal was thus dismissed and the patent application was finally refused.

More information

You can read the whole decision here: T 0543/18 (Internet search from an instant messaging application/OATH) of 9.5.2019.

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Managing booting of secure devices with untrusted software: technical

The European Patent Office refused to grant a software patent on a method of managing booting of secure devices with untrusted software. The decision was appealed successfully and the case was remitted to the Examining Division. Here are the practical takeaways of the decision T 1563/17 (Booting untrusted software) of 7.5.2019:

Key takeaways

Erasing user data outside of the security block before allowing the execution of an unsigned operating system contributes to increasing the security of the claimed device.

The invention

This European patent application considers the situation in which a “third party” or “contract manufacturer” manufactures a computing device on behalf of an OEM. In the eventually delivered product, only trusted operating systems should be executed; trust may be established with cryptography. During manufacture, however, it may be convenient to allow the execution of operating systems which are unsigned or only signed by an entity not trusted by the OEM.

To deal with this situation, the invention proposes to provide the device with two modes: “factory mode” and “product mode” (see figure 2).

Fig. 2 of EP2487618A2
Fig. 2 of EP2487618A2

In product mode, only “secure boots” are allowed. In factory mode, a limited number of “insecure boots” is allowed during which the access to a “security block” is disabled. The security block is disclosed as containing, inter alia, device-specific cryptographic keys or “user-specific data”.

Here is how the invention is defined in claim 1 of the sole request:

  • Claim 1

Is it technical?

When assessing inventive step, the Board found that having two “modes” of operation in which two security policies apply is non-technical:

7. Having two “modes” of operation (see feature (ii)) in which two security policies apply is the direct consequence of a non-technical requirement. Starting from D1, the invention would have to be viewed as the provision of a “product mode” as opposed to a (suitably modified) “factory mode” as disclosed in D1.

However, the Board found that to validate a cryptographic signature of the OEM before execution is technical.

8. The application starts from the situation in which a device manufacturer has to execute software provided by an OEM during manufacture and, for security reasons, to validate a cryptographic signature of the OEM before execution. …

8.2 A device manufacturer would naturally experience the inconvenience of having to obtain an OEM signature for any software to be executed and would want to have this requirement relieved at least during manufacture­­. The OEM would then address the objective technical problem of providing a more lenient security policy to the manufacturer without unnecessarily compromising security.

After a detailed comparison between all the features of claim 1 and D1, the Board found the following feature technical and inventive:

  • (v) “user data not stored in or protected by the security block” is erased along with the disabling of the access to the security block.

The reasons are:

8.6 D1 does not disclose an explicit step of erasing user data that happens not to be stored in the security block – or rather, the security environment of D1, for that matter (see feature (v)).

8.7 Erasing user data outside of the security block before allowing the execution of an unsigned operating system contributes to increasing the security of the claimed device in a way not suggested by D1 or any of documents D2 to D4.

Therefore, the subject-matter of claim 1 was found to involve an inventive step.

More information

You can read the whole decision here: T 1563/17 (Booting untrusted software) of 7.5.2019.

Unlocking a device by performing gestures on an unlock image: non-technical

The European Patent Office refused to grant a software patent on a method of unlocking a device by performing gestures on an unlock image. Here are the practical takeaways of the decision T 2630/17 (Feedback on gesture input/APPLE) of 28.5.2019:

Key takeaways

Giving visual indications about conditions prevailing in an apparatus or system can only be considered a technical problem if these are technical conditions.

Not every internal state variable in a running computer can be considered a “technical condition” prevailing in the computer. The display of an internal state variable of a running computer program cannot, by itself, establish that a technical problem is solved.

Providing reassuring feedback – i.e. a confirmation that the user has been doing the right thing so far – is not in itself a technical effect.

The invention

This European patent application relates to a gesture-based procedure for unlocking the touch screen of a portable computing device such as a mobile phone – or, more generally for “transitioning […] between” first and second “user interface states” – and to providing visual feedback for supporting the user in the process.

A typical interface according to the invention is depicted below. To unlock the device, the user “drags” an “unlock image” (402) along a predefined path (404). This mechanism has become known as “slide-to-unlock”.

Fig. 4A of EP3435213A1
Fig. 4A of EP3435213A1

It is proposed to give “sensory feedback of the progress” of the required gesture by “transitio­ning an optical intensity of one or more user interface objects associated with the second user interface”. The “optical intensity of a user-inter­face object” is said to be “the object’s degree of visu­al materialization” in a broad sense, subsuming transparency or brightness effects or other means of “visual diffe­ren­tiation”.

Here is how the invention is defined in claim 1 of the main request:

  • Claim 1 (main request)

Is it patentable ?

For assessing the inventive step, the Board found features in the main request that are not disclosed or suggested by the prior art:

6.8 The board … concludes that neither D8 nor D6 discloses or suggests that a user interface element appears at the start of the gesture input and increases in optical intensity to provide “feedback” about its progress.

It remains to be assessed whether the difference features solve a technical problem or, instead, merely “refer[] to an aim to be achieved in a non-technical field” (see, in particular, T 641/00, headnote 2). In the latter case, the difference features would not support an inventive step (see T 641/00, headnote 1), even if they happened to be non-obvious over the prior art.

The Board assessed the above difference features do not have a technical effect:

10. In the present case, the board considers gesture input on a touch screen to be a technical process, in that it implies the tracking of the user’s finger position to identify a gesture and the comparison of that gesture with a required, reference gesture.

10.1 The board also accepts that the claimed graphical user interface provides a form of “feedback” about a “continued […] human-machine interaction process” but considers that this feedback does not guide the user or, more importantly, assist the user in inputting the gesture correctly. The feedback does not, for instance, indicate an error between the gesture being input and the reference gesture.

10.2 According to the claimed invention, users are merely continuously informed as to whether they have input the required gesture correctly so far. That is, as long as they observe a change in optical intensity while gesturing they will understand that the partial gesture input so far has been correct.

10.3 This may reassure (inexperienced) users about what they are doing but does not help them decide what to do next. The board considers that providing reassuring feedback – i.e. a confirmation that the user has been doing the right thing so far – is not in itself a technical effect. For illustration, the board notes that a user who knows the required gesture, in particular if it is a short, simple swipe as required by D8, may decide to ignore the graphical feedback altogether without any loss in input precision or speed. In other words, the user need not heed the feedback in order to successfully enter the required gesture.

Therefore, the board held that the characterising GUI features do not solve a technical problem. In the end, the appeal was dismissed and the European patent application was rejected for lacking an inventive step over the prior art.

More information

You can read the whole decision here: T 2630/17 (Feedback on gesture input/APPLE) of 28.5.2019.

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Masking a private key: technical

The European Patent Office considered a mathematical method of masking a private key technical. Here are the practical takeaways from the decision T 0556/14 (Masking a private key/CERTICOM) of 28.7.2016 of Technical Board of Appeal 3.5.06:

Key takeaways

Protecting a cryptographic computation against power attacks is considered a technical problem if, and only if, the computation is actually carried out on hardware and thus open to such attacks.

The invention

The invention underlying the present decision relates to a method for masking a private key used in cryptographic operations on a security to­ken, such as a smartcard. The security of cryptographic systems relies on a particular piece of information being kept secret. One way to retrieve information about the secret is to apply power analysis attacks to extract information about the secret by statistically analysing the power consumption of the security token when carrying out the cryptographic operation. To avoid such attacks, masking is used, which is a technique of randomising the calculations carried out in each instance of a cryptographic algorithms, so that the result remains the same but no relevant statistical information about the key can be gathered.

Fig. 5 of EP 1,365,308 A2

  • Claim 1 (main request)

Is it patentable?

After grant, in response to an opposition, the European patent No. 03 018 048.3 was fully revoked. The patent proprietor appealed this decision. Besides several other ground of opposition and of its own volition, the board in charge raised the issue of whether a “method of masking” constituted a mere mathematical method and was hence excluded “as such” from patentability under Article 52 EPC.

However, since claim 1 explicitly refers to a smart card, the board in charge outlined that the claimed subject-matter cannot be considered excluded from patent protection as such:

10. Due to the express reference in claim 1 to a smart card on which the key parts and also the new parts are stored, the claimed method of masking is not a mathematical method as such which can be objected to under Article 100(a) EPC 1973 for lack of compliance with Article 52(2) and (3) EPC.

Moreover, in this specific case, the Board expresses that protecting a cryptographic operation also solves a technical problem.

13.3 The board accepts as a technical problem the protection of a cryptographic computation against power analysis attacks – if, and only if, the computation is actually carried out on hardware and thus open to such attacks.

13.4 The board also accepts that claim 1 specifies a masking method carried out on hardware. Even though claim 1 literally specifies only the storage of the key parts on a smart card, in the board’s view the skilled person can only understand the method of claim 1 as a fully computer-implemented method.

14. The board therefore takes the position that the claimed randomisation steps, namely the calculation of two randomised key parts and the computation of Q = b1P + b2P instead of Q = dP, does achieve some protection against power analysis attacks and thus have a technical effect.

Hence, the board finally accepted that the claimed method is technical and provides an inventive step. Consequently, the board decided to set the decision of the first instance opposition aside and to remit the case back to the opposition division with the order to maintain the European patent.

More information

You can read the whole decision here: T 0556/14 (Masking a private key/CERTICOM) of 28.7.2016.

Navigation systems that can be tailored to a user’s particular wishes: non-technical

The European Patent Office refused to grant a patent for a navigation system that can be tailored to a user’s particular wishes. Here are the practical takeaways from the decision T 2035/11 (Navigation system/BEACON NAVIGATION) of 25.7.2014 of Technical Board of Appeal 3.5.07:

Key takeaways

Mathematical algorithms may contribute to the technical character of an invention only in so far as they serve a technical purpose.

The mere fact that the input to an algorithm has a particular meaning in the real-world is insufficient for the algorithm to make a technical contribution.

The invention

The focus of the present application is on the route-planning functionality of a navigation system. Such a navigation system can either be installed in a vehicle or located in a personal computer. The navigation system comprises a database of road segments, a system for selecting a beginning point, a user input device for selecting a desired destination, and a system for determining a route between said beginning point and said desired destination.

The invention essentially proposes an optimization algorithm to determine a path (consisting of a series of graph edges) connecting a first graph node to a second graph node and having the lowest total cost.

Fig. 3 of EP 1 018 081
Fig. 3 of EP 1 018 081

  • Claim 1 (main request)

Is it patentable?

The Board considered that the optimization algorithm of claim 1 does not serve a technical purpose and therefore does not make a technical contribution:

5.1.3 … In the present case the purpose of the algorithm is the mere display of an optimal path to the user for cognitive processing. The user may act on the information, but does not need to. As stated in decision T 1670/07 of 11 July 2013, reasons 13, a technical effect may arise from either the provision of data about a technical process, regardless of the presence of the user or its subsequent use, or from the provision of data (including data that on its own is excluded, e.g. produced by means of an algorithm) that is applied directly in a technical process. In the present case the data is produced by means of an algorithm and is not applied directly in a technical process, so that neither possibility applies.

In contrast, the applicant (in this case the appellant) argued that the algorithm was concerned with real-world facts. The costs associated with road segments reflected technical and geographical conditions and specifics to the topographical information which were to be considered when determining the route.

However, the Board stated:

5.1.4 … the present invention is not concerned with the specifics of the constitution of road maps and corresponding databases. The database of road segments of claim 1 is essentially a graph comprising nodes and edges with cost values assigned to the edges. Calculating a route having the lowest total cost does not require knowledge of environmental conditions or traffic routing and planning. The database of road segments serving as input to the algorithm may reflect real-world facts, but the mere fact that the input to an algorithm has a particular meaning in the real-world is insufficient for the algorithm to make a technical contribution (see e.g. decision T 154/04, OJ EPO 2008, 46, reasons 20).

After further unsuccessful arguments by the appellant, the Board finally decided that claim 1 of the main request is not patentable.

In auxiliary request 1, additional features relating to a “congestion level” were added, which is claimed as a “cost”. The Board assessed that auxiliary request 1 has the potential of an inventive step and therefore remitted the case back to the department of first instance (the Examining Devision) for further prosecution. However, this application was finally refused by the Examining Devision because of lacking an inventive step.

More information

You can read the whole decision here: T 2035/11 (Navigation system/BEACON NAVIGATION) of 25.7.2014.

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Displaying a bird’s eye view map: technical

The European Patent Office decided that displaying a 3D bird’s eye view map, e.g. in a car navigation system, and the associated calculation steps are technical. Here are the practical takeaways from the decision T 0651/12 () of 14.4.2016 of Technical Board of Appeal 3.4.03:

Key takeaways

Displaying information in an ergonomically improved manner is a technical purpose. Ergonomics, understood as the applied science of refining the design of products to optimize them for human use, in the context of the map display of the present case, is a technical field.

The immediate apprehension of the presented information results in the driver being less distracted from the road and traffic and, thus, also adds to safety. Accordingly, also in this respect, displaying the three-dimensional bird’s eye view map provides a technical solution to a technical problem.

The invention

This European patent application relates to a map display apparatus that three-dimensionally displays a two-dimensional map (plane map) as a bird’s eye view map. This is achieved by converting the two-dimensional map into a bird’s eye view display format, whereby ground levels and roads are displayed either depressed or elevated in correspondence to their altitudes.

Fig. 11 of EP 0 926 652
Fig. 11 of EP 0 926 652

The invention was reflected in claim 1 of the main request as follows:

  • Claim 1 (main request)

Is it patentable?

Firstly, the Board addressed whether claim 6 – a  computer-implemented method for displaying a bird’s eye view map – was patent-eligible. Not surprisingly, claim 6 passed this hurdle already due to the presence of the phrase “computer-implemented”:

As a first point, it is noted that the subject-matter of claim 6 is not excluded from patentability under Article 52(3) EPC, as it does not relate to such subject-matter or activities as such. Indeed, since claim 6 is directed at a computer-implemented method, it involves the use of technical means in the form of a computer and thus, according to established jurisprudence of the boards of appeal, is an invention within the meaning of Article 52(1) EPC (cf T 258/03 OJ 2004, 575, Reasons 4.1 to 4.4 and “Case Law of the Boards of Appeal of the EPO”, 7**(th) Edition 2013, I.A.2.4.4.c).

By the way, if you are interested in a deeper look into how the European Patent Office examines software-related inventions, this 30-minute video gives a concise overview of the “two hurdle” approach with lots of examples:

Then, the question remained whether the calculations performed by the method were to be considered merely mathematical “as such” and thus irrelevant for assessing inventive step. The Board took the view that the calculations indeed serve a technical purpose:

In the board’s judgement, however, the method of claim 6 does not relate to a mathematical method within the meaning of Article 52(2)(a) EPC. Meant are in Article 52(2)(a) EPC, in the board’s view, merely abstract mathematical methods, ie calculations for the sake of the calculation.

In the present case, however, the outcome of the calculation is used for a technical purpose, namely to display information in an ergonomically improved manner.

It is noted in this respect that in the board’s judgement, displaying the three-dimensional bird’s eye view map, eg in a car navigation system, provides a more realistic view of the road to the user and supports the user in better orienting himself, ultimately assisting the user in taking the right turn, and thus adds to the ergonomics of the map display.

In the board’s opinion, ergonomics, understood as the applied science of refining the design of products to optimize them for human use, in the context of the map display of the present case, is a technical field. Displaying the three-dimensional bird’s eye view map is, thus, considered to provide a technical solution to a technical problem.

Moreover, it is noted that in the context of eg a car navigation system, the immediate apprehension of the presented information results in the driver being less distracted from the road and traffic and, thus, also adds to safety. Accordingly, also in this respect, displaying the three-dimensional bird’s eye view map provides a technical solution to a technical problem.

As such, the board sees no fundamental difference between the present case and a method for operating a computer-controlled machine where the outcome of some calculation is used for operating the machine in an improved manner, which is generally considered technical in all aspects.

In the end, the Board remitted the case back to the examining division for additional search and a subsequent examination.

More information

You can read the whole decision here: T 0651/12 () of 14.4.2016

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Expert system for assessing patents: non-technical

The European Patent Office refused to grant a software patent for an expert system for assessing patents. Here are the practical takeaways from the decision T 1817/14 (Expert system/SCHINDLER) of Technical Board of Appeal 3.5.06:

Key takeaways

A major part of the claimed procedure is done by the user, which is an intellectual activity / mental act, and thus does not, per se, contribute to the technical character of an invention.

The description and drawings shall be used to interpret the claims: a patent application “may be its own dictionary“.

Even if it is possible to interpret a claim in the light of the patent specification, Article 84 EPC may oblige the applicant to make that interpretation explicit in the claim language.

It is normally not sufficient for overcoming a clarity objection to indicate that the claim can be interpreted in the light of the description.

The invention

In a nutshell, the invention proposes to obtain from a patent (or patent application) and any prior art document elements of their respective technical teachings. These may be specified informally. The elements and their “relations”, expressing anticipation and contradiction between elements or sets of elements, are arranged in what is called an ANC matrix (“anticipates/non-ants/contradicts”). The information in this matrix can be queried by and is then displayed to the user.

EP 2 441 033
EP 2 441 033

The claimed method has two phases. The first phase leads to the creation of the ANC matrix which, in the second phase, is used to “automa­tically and instantly” produce responses to user queries. The major part of the first phase is done by the user. Especially the generation of the ANC is under user control. Only the processing of user queries is meant to be automated.

  • Claim 1 (main request)

Is it patentable?

First of all, the claims of all the requests were considered to lack clarity. Nevertheless, the decision for this case is ultimately based on inventive step.

The board concludes that the major part of claim 1 (of all requests) is a modelling procedure during which the user considers the items in the domain of interest (comprising, specifically, the patent/patent application and the documents being compared, the laws of nature and the items of a national patent system), extracts their relevant properties (elements, facts, relations), and “compiles” them “into” a formal language.

The board considers this procedure of information modelling to be an intellectual activity (effectively a method for performing mental acts which does not, per se, contribute to the technical character of an invention). Accordingly, a technical contri­bution of the present invention could only lie in the way in which the generation and use of the model are implemented.

The appellant essentially argued that particular features of the ANC data structure had to be considered to be technical. It stressed in particular that the ANC had to reflect the analysis of documents in terms of two different levels of granularity (“elements” and “fundamental facts of these elements”) and that it contained novel fields (e.g. “anticipates/not-anticipates-and-not-contradicts/contradicts” as claimed).

However, the appellant was unable to convince the Board that the modelling steps caused any technical effect. When, however, the modelling steps are assumed to be taken as an aim to be achieved in a non-technical field, the form of the ANC is determined by the model and thus obvious.

In addition, the feature that users may query the “items” in the ANC and the method replies “automatically and instantly by displaying to the user this item’s information and all its such relations to other items” does not go beyond the statement that the information in the ANC may be accessed by user queries, as is known from prior-art database systems.

The board concludes that claim 1 of all requests lacks inventive step in view of common knowledge, as an “obvious way of providing computer support to an essentially non-technical method“.

More information

You can read the whole decision here: T 1817/14 (Expert system/SCHINDLER) of 4.7.2017

Only technical features can establish an inventive step (Comvik approach)

This is one of the landmark decisions when it comes to the patentability of software. The EPO Board of Appeal established that inventive step can only be based on technical features.

On the merits, the European Patent Office revoked a software patent for a multi-identity SIM card with the decision T 0641/00 (Two identities/COMVIK) of 26.9.2002 of Technical Board of Appeal 3.5.01. Here are the practical takeaways from the decision:

Key takeaways

Headnote I: “An invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step.”

Headnote II: “Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met.”

The invention

The invention relates to digital mobile telephone systems and in particular to the use of a single-user multi-identity IC card as subscriber identity module in a mobile unit of a GSM-type system.

The patent application was granted in 1997. A few months later, oppositions were filed. The opposition division revoked the patent in 2000. Shortly after that, the appellant filed an appeal against the decision. The Board of appeal dismissed the appeal in 2002 so that the patent was finally revoked.

The scope of the invention can be easily understood from claim 1 and Figure 1. The object of the invention is to enable a more flexible use of subscriptions and subscriber identity modules.

Fig. 1 of EP 0 579 655
Fig. 1 of EP 0 579 655
     

  • Claim 1 (Main request)

Is it patentable?

First of all, the Board confirmed that patent claims may well contain a mix of technical and non-technical features:

On this approach it is legitimate to have a mix of technical and “non-technical” features (i.e. features relating to non- inventions within the meaning of Article 52(2) EPC) appearing in a claim, even if the non-technical features should form a dominating part. Thus in T 26/86 X-ray apparatus/KOCH& STERZEL, (OJ EPO 1988, 19) a mix of technical and non-technical features was considered as a matter of principle to be patentable even if the technical was not the dominating part of the invention. As reasoned by the Board, “the teaching (might, otherwise, be made) unpatentable in its entirety if the greater part is non-technical and even though the technical aspect which is found to be subordinate is in fact judged to be novel and to involve inventive step” (see paragraph 3.4 of the decision). It follows that the Board, although allowing a mix of technical and non-technical features to be claimed, considered the technical part of the invention as the basis for assessing inventive step.

Moreover, the Board held that the non-technical features of a patent claim cannot take part in the inventive step assessment:

Further, where a feature cannot be considered as contributing to the solution of any technical problem by providing a technical effect it has no significance for the purpose of assessing inventive step.

Applying these principles to the case at hand, the Board identified three features in claim 1 that distinguished over the closest prior art, namely (i) the subscriber identity module is allocated at least two identities, (ii) said at least two identities being selectively usable, and (iii) the selective activation being used for distributing the costs for service and private calls or among different users.

However, according to the Board, these features did not solve a technical problem:

Distributing costs according to specific schemes (features (ii) and (iii)), however, is not disclosed as a technical function of the system: it is left to the user to decide and to select the desired identity and to the network operator to use the additional identity data in one or other way. The inconveniences to be eliminated are actually not located in any technical aspects of the network system, distributing costs according to the claimed kind of cost attributing scheme is rather a financial and administrative concept which as such does not require the exercise of any technical skills and competence and does not, on the administrative level, involve any solutions to a technical problem. Technical aspects first come into play with the implementation of such a scheme on the GSM system. In other words, the claimed concept of selectively distributing the costs for service and private calls or among different users does as such not make a contribution to the technical character of the invention.

Therefore, the Board ultimately decided that the patent application does not provide any technical contribution that could be the basis for an inventive step.

More information

You can read the whole decision here: T 0641/00 (Two identities/COMVIK) of 26.9.2002