Facilitating exchange of information between parties in business launch centers: non-technical

This decision relates to a European patent application concerning a method and a system for facilitating exchange of information between parties in business launch centers. Here are the practical takeaways from the decision T 0528/07 (Portal system/ACCENTURE) of 27.4.2010 of Technical Board of Appeal 3.5.01:

Key takeaways

 

The invention

The invention in accordance with claim 1 is a computer system for providing a business-to-business relationship portal. Its purpose is to facilitate the exchange of information between parties for example in business launch centres. It presents business opportunity information to permissioned users. In case of a business launch centre an “opportunity” is eg “any e-business that is being evaluated by one of the launch centers”. “Business opportunity information” is eg company background information or financial information, and “permissioning” refers to users’ rights to view and/or modify information. The channels, which may appear as boxes on the user’s screen, contain links to portal applications and may include summaries of aggregated data from the applications.

Figure 2 of EP1438689

Here is how the invention was defined in claim 1:

Is it patentable?

The examining division had rejected the patent application on the grounds that the main request was a mixture of technical and non-technical features and that the invention merely seemed to display desired information, or a corresponding link.

During the appeal proceedings, the applicant objected that the Comvik approach was not appropriate on the basis of Article 27 (1) TRIPS.

The Board did not agree:

2.2 The Board is aware that the Comvik approach often leads to the conclusion that an invention involving non-technical aspects merely solves a trivial technical problem. But this is not an inevitable outcome. As soon as an invention solves a technical problem in a non-obvious way patent protection is in principle available even if the claim in addition contains non-technical features (cf T 769/92 “Sohei”, OJ EPO 1995,525). A frequent case is however that technical features, such as the client-server system in the present case, are known as such but are used for a non-technical purpose. According to the Comvik approach, a claim feature is regarded either as being a mere expression of a non-technical “framework” or as constituting a technical feature that contributes to an inventive step. The appellant seems to argue that such a grouping of features should not be performed, or at least that the “framework” should to some degree also contribute to the inventive step.

2.3 The Board does not share the appellant’s opinion that TRIPS would require a modification of the Comvik approach. Article 27(1) TRIPS stipulates that, subject to the provisions of its paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. At the revision conference in the year 2000, Article 52(1) EPC was amended to include the expression “in all fields of technology” to bring it explicitly into line with the TRIPS agreement. TRIPS does not give a definition of the term “technology” but leaves it to the member states and their jurisdiction to define and apply this concept (cf J. Straus, “Bedeutung des TRIPS für das Patentrecht”, GRUR Int. 1996, No. 3, 179, points 35 and 36). The Board accepts that in the present case the claimed subject-matter is technical, ie an invention within the meaning of Article 52(1) EPC, and therefore open to patent protection. However, under Article 27(1) TRIPS a patent shall only be granted if it is new and involves an inventive step. Again, TRIPS does not stipulate how these requirements are to be applied. Article 27(1) TRIPS reflects on the one hand a minimum consensus and on the other hand the member states’ unreadiness uniformly to define the patentability requirements (cf J. Straus, loc. cit. point 47). The TRIPS member states are free to adopt different standards for each patentability requirement, such as inventive step (cf Nuno Pires de Carvalho, “The TRIPS Regime of Patent Rights”, 2nd edn., The Hague, 2005, 191). The Comvik approach is one facet of the standard applied by the EPO.

Further, the Board reached the following decision on claim 1:

5.4 The remaining features in claim 1 owe, in the Board’s view, their existence to the underlying business model. In particular, the information contents enumerated in features e), f), g) and h) are meaningful only to the human mind:

e)… information related to new business opportunities;

f)… an opportunities application that displays business opportunities;

g)… a catalog application that displays catalog content related to the business opportunities;

h)… communication items related to the business opportunities.

5.5 Finally, feature i) is based on an administrative hierarchy:

i) said server being programmed so as to enable an administration set of permissionned users to set user permissionning related to said business opportunities.

5.6 The Board can therefore not see that claim 1 contains any feature making a non-obvious technical contribution to the prior art.

5.7 The appellant has argued that the overall combination of the features has a synergistic effect because they cooperate to solve the technical problem of facilitating the exchange of information and supporting rapid information sharing (cf the letter dated 21 January 2010, page 3).

The Board is not convinced that there is an (unexpected) synergistic effect since features do not interact merely because they have a common goal. But even if there was such an effect it could only exist on a business level. On a technical level nothing in the claim is surprising: the use of a client-server system facilitates the exchange of information and support information sharing (that is what it is for); and the kind of information displayed or transmitted (opportunities, catalogues) has nothing to do with the rapidity with which signals travel from user to user. Furthermore, if the invention has the effect of reducing the traffic load on the net – as has been argued – this is due to user restrictions rather than, say, a protocol determining how the computers transmit data packets over the communication channel. In other words, the load is reduced by non-technical rather than technical means (also referred to in the jurisprudence of the Boards as a “circumvention” of the technical problem).

5.8 It follows that the subject-matter of claim 1 does not involve an inventive step (Article 56 EPC 1973).

Since none of the auxiliary requests could overcome the objection of lack of inventive step, the application was finally refused.

 

More information

You can read the whole decision here: T 0528/07 (Portal system/ACCENTURE) of 27.4.2010 of Technical Board of Appeal 3.5.01.

Please share this article if you enjoyed it!