This is an important decision when it comes to the patentability of software. 

On the merits, the European Patent Office revoked a software patent for order management with the decision T 0172/03 (Order management/RICOH) of 27.11.2003 of Technical Board of Appeal 3.5.01. Here are the practical takeaways from the decision:

Catchword

The RICOH case provides an objective approach to the assessment of inventive step for computer-implemented inventions. It teaches to identify first the claimed features which define the non-technical part of the invention, and then to identify the claimed features that are clearly technical.

The invention

This European patent application concerns an order management system and method for automatically placing an order for particular expendable supplies based on order information input from each department or section of a user of the system. Expendable supplies or parts are such as copy papers or toner cartridge used in an office.

The aim of the solution is to provide an order management system and method which can unitarily and automatically manage ordering processes based on order information supplied by each department or section.

Fig. 1 of EP 0 767 436

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

The first-instance examining division had refused the application for lack of inventive step.

According to the reasons given in its decision, the regime of patentable subject-matter was only entered with the design and programming of the computerized system for implementing the improved order placing mechanism. The examining division considered such an implementation obvious, taking into account that the relevant skilled person was a computer science expert, actually a team comprising a business expert and a programmer, who had the knowledge of the economic concept and structure of the improved order placing mechanism.

On appeal, the board gave a nice summary on relevant case law and practice of the EPO for assessing inventive step.

3. According to the case law and practice of the EPO, the patentability of an invention, for which inventive step is a requirement, must arise from features and aspects of the invention from which a technical solution to a technical problem can be inferred and which are thus of a technical character (see, for example, the PBS-decision (T 931/95) and the COMVIK decision (T 641/00 – Two identities/COMVIK, OJ EPO 2003, 352), points 2 and 3, respectively).

In the case of a mixed-type invention (including non- technical aspects), examination for patentability normally requires an analysis of the invention and the construction of the claims to determine the technical content of the claims as a prerequisite step (see, in respect of inventive step, the COMVIK and PBS decisions, points 7 and 8, respectively). The required analysis of claim features is possible only ex post facto, i.e. in knowledge of the patent application and the invention to which it relates.

The appellant objected inter alia that the examination approach in this decision was based on a fictitious kind of prior art and unlawful ex post facto considerations.

According to the board:

5. …the prerequisite step of determining the technical features and aspects of a mixed-type invention is not part of the prior art analysis. Certainly, an ex post facto knowledge of the patent application and the claimed invention cannot be avoided completely in judging inventive step; what should strictly be avoided are retrospective considerations and conclusions in evaluating the technical contribution the invention provides to the relevant prior art (see decision T 967/97 – Chipkarte/OVD KINEGRAM AG, not published in OJ EPO, point 3.3).

Furthermore, the board gave definition for the term “person skilled in the art”

6. …According to the COMVIK decision, point 8, the “skilled person will be an expert in a technical field”. The decision goes on to state: “If the technical problem is concerned with a computer implementation of a business, actuarial or accountancy system, the skilled person will be someone skilled in data processing, and not merely a businessman, actuary or accountant.”

7. Indeed, Article 18 EPC determines that an examining division in principle consists of three technically qualified examiners. The examining division is thus, due to its composition, neither professionally competent to evaluate the state of “non-technological art” nor to assess innovations in a non-technological field. It would be inconsistent with the terms and objects of the EPC to attribute an essentially different professional competence to the “person skilled in the art” within the meaning of Article 56 EPC, for example by construing this term to include business experts or practitioners in other non-technological fields. Even if there may be borderline areas, like system analysis and design which are based on rather abstract and intellectual activities but nevertheless provide important results for developing complex software systems (see decision T 49/99-Information modelling/INTERNATIONAL COMPUTERS, not published in OJ EPO, point 7), this should not divert from the principle that the skilled person within the meaning of Article 56 EPC is a technical expert, professional or practitioner.

In the present case, the board defined the relevant “person skilled in the art” as a software project team. It does not include any business expert, but it has knowledge of the business-related features and aspects of the order management method, in the kind of a requirements specification, as part of the formulation of the technical problem to be solved.

The board also gave definition for the term “state of the art”

8. …as explained in the COMVIK decision, point 2, the term “state of the art” in Article 54 EPC should, in compliance with the French and German text, be understood as “state of technology”, which in the context of the EPC does not include the state of the art in commerce and business methods.

9. The term “state of the art” should be interpreted in its legal context, and in the light of the object and purpose of the patentability requirements of the EPC.

In the present case, the board considered the closest prior art to be a distributed information system comprising multiple general purpose computers at different locations and connected by a communication network as known and in use in a vast number of companies for office automation well before the priority year 1995.

As a summary, the board considered that the claimed invention was distinguished from a normal distributed information system only in terms of functional features and data structures for implementing the essentially business-related features of the order management method. The claimed technical solution did not go beyond the concept of a mere automation of constraints imposed by the business-related aspects, such automation using conventional hardware and programming methods being considered obvious to the skilled person. Therefore, the European patent application was invoked for lack of inventive step.

You can read the whole decision here: T 0172/03 (Order management/RICOH) of 27.11.2003

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