This decision relates to a European patent application directed to a method of estimating the departure time when users have to leave their current location in order to arrive at the destination for a scheduled event on time. Here are the practical takeaways from the decision T 1636/18 (Estimating departure time/QUALCOMM) of 3.3.2022 of Technical Board of Appeal 3.5.01:

Key takeaways

An effect (a bonus effect) that is a mere consequence of a modified business scheme cannot contribute to the technical character of the subject-matter claimed.

Inherent effects are not enough to establish technical character. A “further” technical effect going beyond the normal effect of implementing something in a computer has to be achieved.

The invention

Looking at Figure 1 of the application, a user may populate a calendar module 112 with an event 114 at a specified location 116. A wireless device 110 may then calculate a departure time for this event by comparing its current location to the scheduled event location 116. If the two locations differ by more than a given threshold, the wireless device estimates the travel time from the current location to the event location. Finally, the device may determine a departure time from the estimated travel time and the scheduled event time and may generate an alert by comparing the departure time and the current time.

 

Figure 1 of EP 2 491 341 A1

Here is how the invention was defined in claim 1:

  • Claim 1 (main request with the appellant's numbering)

Is it patentable?

D4 (US 2007/0250257 A1) was considered by the Board in charge as a valid starting point for assessing inventive step and it was found that claim 1 differs by features 1.3 to 1.5.

Feature 1.3

Concerning feature 1.3, the appellant argued that network-provided time properly reflects the local time and results in more accurate departure alerts. The Board, however, considered that obtaining the current time from a network is one of several obvious choices (cf. decision, items 2.1 and 2.2).

Features 1.4 and 1.5

Concerning features 1.4 and 1.5, the appellant argued that not estimating the travel and departure times when the mobile device was near the destination achieved the technical effect of saving computational resources.

However, the Board was not convinced for the following reasons:

2.5 … Estimating travel times and generating departure alerts is known from D4. Features 1.4 and 1.5 merely specify a condition on when to perform (or not) these operations. In the Board’s view, this condition does not necessarily come from technical considerations, but may merely reflect subjective user preferences. Some users may prefer not to be disturbed by annoying notifications when they are close to their intended destination. Other users, however, may be unfamiliar with the neighborhood and may prefer to have such reminders.

Any energy efficiency, if indeed achieved, would be an inevitable bonus effect resulting from the straightforward implementation of these non-technical considerations. An effect that is a mere consequence of a modified business scheme cannot contribute to the technical character of the subject-matter claimed (see e.g. T 258/03 – Auction method/HITACHI, Headnote II).

2.6 Moreover, according to the jurisprudence of the boards of appeal, the technical character of a feature is independent of the prior art. Therefore, relative effects, such as reduced processing time, cannot be used to distinguish between technical and non-technical method steps. This is because it is always possible to conceive of a method that requires more computational resources (e.g. T 1227/05 – Circuit simulation/Infineon, point 3.2.5). Considering the relative amount of processing time as an indicator of technicality might render the same method both technical and non-technical depending on the chosen starting point in the prior art. Although features reducing the required computing resources might involve an inventive step, the assessment of inventive step presupposes that these features contribute to the technical character of the invention.

2.7 The appellant also argued during the written proceedings that since the method was carried out on a wireless device, and since it caused a change in this device, i.e. a necessary change in the computational resources by carrying out the method, a technical contribution had to be acknowledged.

2.8 However, these effects are inherent to any computer-implemented method. Inherent effects are not enough to establish technical character. A “further” technical effect going beyond the normal effect of implementing something in a computer has to be achieved. (G 3/08 – Programs for computers, point 13.5; T 1755/10 – Software structure/TRILOGY, point 6).

Features 1.4 and 1.5, however, do not achieve a “further” technical effect in the context of the claimed method.

In the end, the Board found that the subject-matter of claim 1 did not involve an inventive step within the meaning of Article 56 EPC. The auxiliary requests were also found to lack an inventive step. Hence, the European patent application was finally refused.

More information

You can read the whole decision here: T 1636/18 (Estimating departure time/QUALCOMM) of 3.3.2022 of Technical Board of Appeal 3.5.01.

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