This decision relates to an European patent application for a shop terminal and an information processing server for guiding the user to a shopHere are the practical takeaways from the decision T 0589/17 (Guiding the user to a shop/SONY) of 20.4.2021 of Technical Board of Appeal 3.5.01:

Key takeaways

Any effects compared to a hypothetical, alternative computer-implemented business method cannot be taken into account for the purpose of assessing inventive step in accordance with the problem and solution approach.

The invention

The invention concerns a system for sending customers (users) between shops in a franchise group. The system comprises a server (2) and a plurality of shop terminals (8), one in each shop (81). The basic idea is the following: when the user purchases something with his mobile phone in a first shop (e.g. Yamada Set Meals in Figure 1), he is “guided” to a second shop (e.g. Cacao Coffee Shop). If the user purchases something in the second shop, he receives a bonus in his mobile payment account.

Fig. 1 of EP2221759

Claim 1 of the main request is directed to the server (2) in Figure 1, here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

At the first instance, the examining division considered that features distinguishing the claimed invention from the prior art disclosure D1 (US 2006/144927) were either non-technical or obvious.

During the appeal, the appellant had tried to argue why some of the technical features had been overlooked:

D1 merely described using the IC chip for making an electronic payment, not using the IC chip as a means for tracking the user’s progress from a first shop to a second shop.

By using the IC chip to track the user, rather than requiring the user to present a coupon received from the first shop, any need for either the user or the shopkeeper in the second shop to perform any specific actions was avoided. Consequently, the time for processing the transaction in the second shop was reduced.

The business requirements provided by the notional business person did not specify that the processing of identification information should take place at a server rather than at the shop terminal. The same applied for the means for paying the bonus. Whether the bonus was provided to the customer by the second shop’s terminal or to the customer’s telephone by the server was a technical choice of the technically skilled person.

These arguments are however not so convincing.

The Board again adopted the well-known COMVIK approach to decide this case (i.e. by taking into account only the technical features in the assessment of inventive step. The non-technical features which make no technical contribution are instead considered as being part of the formulation of the technical problem to be solved in the framework of the problem and solution approach.):

D1 does not disclose that the server receives and processes identification information and guidance completion information as in claim 1.

In claim 1 of the main request, the identification information read from the IC chip included in the user’s phone is used to determine that the user has made a purchase in the second shop. D1 merely discloses the use of an IC chip for making payments and for providing identification.

Furthermore, D1 does not disclose that the server transmits monetary value changing information to the user’s phone.

In the communication accompanying the summons to oral proceedings, the Board considered that sending a customer from a first shop to a second shop and giving the customer a bonus when purchasing something in the second shop was a business idea. In the Board’s view, this idea already implied some form of checking whether the customer had made the purchase in the second shop, as well as paying out the bonus directly to the customer in monetary form rather than providing a discount in the second shop. The problem to be solved was thus considered as how to implement the business idea on the system of D1.

The relevant criterion for assessing technicality is whether the feature or features in question provide a technical effect over the prior art chosen as starting point. Any effects compared to a hypothetical, alternative computer-implemented business method cannot be taken into account for the purpose of assessing inventive step in accordance with the problem and solution approach.

While the business person cannot require the use of a server which is a technical feature, he can specify that a certain task be performed by a central administrative entity. In the present case, the use of a central entity for handling the bonus scheme is an organisational matter related to the franchising business model. This is in contrast to the server in T 1463/11 which centralised the management of plug-ins i.e. software components.

Starting from the disclosure of D1 and given the task of implementing the business idea defined above, the Board is of the view that the skilled person would have used the server or servers in D1 for comparing information received from the source POS and the destination POS in order to check whether the guidance had been completed. Although D1 does not disclose payments using a mobile phone, this was known at the priority date, and it is not presented in the present application as making an inventive contribution (see paragraphs [0009] to [0012]).

Furthermore, the skilled person would have considered using the same mobile payment system for paying out the bonus, and given the requirement of using a central entity for paying the bonus directly to the user, the skilled person would have used the server to transmit “monetary value changing information” to the user’s phone.

Even if the payment of the bonus by a central entity directly to the user’s account was not part of the business requirements, the Board considers this to be at least an obvious alternative to using the second shop terminal to top up the mobile payment account.

Therefore, claim 1 was considered not to involve an inventive step. Since none of the auxiliary requests could overcome this objection, the appeal is dismissed.

More information

You can read the whole decision here: T 0589/17 (Guiding the user to a shop/SONY)of 20.4.2021 of Technical Board of Appeal 3.5.01.

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