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:
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.
Here is how the invention is defined in claim 1 of the sole request:
A method for searching the Internet in an instant messaging environment, the method comprising:
- recognizing (602,703) at least a portion of an instant message, from a first user to a second user and entered into an instant messaging application on a first client computer (410) of the first user, as a search query, wherein said recognizing comprises identifying a predetermined character string in the instant message as a search trigger;
- causing the search query to be displayed (502,603,607,702,706) to the first user inline in an instant messaging window on the first client computer and to the second user inline in a second instant messaging window on a second client computer (411) of the second user;
- causing (503,604,708) a web search based on the search query in response to identifying the search trigger in the instant message, the web search retrieving search results, by transmitting the search query to a search server, wherein the search server performs the web search based on the search query; and
- automatically causing at least one of the search results to be displayed (505,609,611,711,713) inline in the instant messaging window on the first client computer and inline in the second instant messaging window on the second client computer.
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.
You can read the whole decision here: T 0543/18 (Internet search from an instant messaging application/OATH) of 9.5.2019.
Maggie is a patent attorney at BARDEHLE PAGENBERG. She specializes in software patents in Europe both from a prosecution and litigation point of view.