This decision relates to a European patent application directed to targeted advertisements. Here are the practical takeaways from the decision T 2174/18 (Including a video recording option in advertisements/COMCAST) of 25.5.2022 of Technical Board of Appeal 3.5.01:
The invention relates to targeted advertisements which make users aware of entertainment content without them having to discover it themselves.
Figure 1 shows a “content page” (myCITY TIMES) from a “publisher” web server (www.pub.zzz) displayed in a web browser 100 on a user’s computer. It has an advertisement 102 from a third party ad “server” targeted at gardeners on behalf of a (video) “service provider” that offers the TV series “Gardening”. The basic idea of the invention is that the third party ad server determines that a user is a customer of the service provider and customises an advertisement by adding an “interactive control” of functionality offered by the service provider. Thus, the third party server can provide the above mentioned advertisement 102 with a “RECORD NOW!” button 103 which automatically configures digital recording of the series via a digital video recording service offered by the (video) service provider.
Figure 1 of EP 2 533 185 A1
Here is how the invention was defined in claim 1:
Claim 1 (second auxiliary request)
A method comprising:
providing, from a server to a plurality of display devices, an advertisement for display in a plurality of different content pages hosted by a plurality of different publishers;
the advertisement comprising a request including a link to a computing device of a service provider, wherein the link includes a path that is associated with the server, for enabling a browser of a display device to perform a verification with the server via the service provider to confirm authentication of the display device;
based on the link, receiving, by the server, information that indicates one or more user accounts of the service provider, and indications of service options of the service provider available to each of the one or more user accounts;
based on the information, determining, by the server, that one or more display devices from the plurality of display devices is associated with the one or more user accounts;
in response to the determining and based on the indications, providing, from the server to the one or more display devices, a modification to the advertisement such that the advertisement, when modified by the modification, comprises an interactive control that, when selected at each of the one or more display devices, causes instructions to be sent to the service provider to control the service for each of the one or more user accounts respectively;
wherein the service provider is a video service provider, the service provided by the video service provider is a digital video recording service for remotely control [sic] recording of video programs, and wherein the interactive control displayed in the advertisement, when selected, causes an automatic configuration of the digital video recording service to schedule a recording of a video program advertised in the advertisement.
Is it patentable?
US 2004/0215509 A1 (cited as D4) was considered as the closest prior art. The Board came to the conclusion that even the most limited second auxiliary request lacks inventive step (Article 56 EPC).
In detail, according to the Board, the distinguishing features over D4 can be broken down into two groups representing different aspects of the invention:
(A) Authentication aspect: The user authentication is not performed by the third party advertiser, but by the service provider.
(B) Service aspect: The service provider is a video service provider, the service is a digital video recording service and the interactive control enables to remotely control recording of a video program.
No synergistic relationship between (A) and (B)
The Board considered there is no synergistic relationship between (A) and (B):
2.7…Contrary to the appellant’s view, the ad server in claim 1 is neither authenticated to the service provider nor does it control the video recording service. The link to the service provider including a path associated with the ad server (see lines 7 to 9 in claim 1 and the example in paragraph ) merely indicates a specific web page of the service provider’s web server. The Board can only assume that the reason for including this specific path is to inform the service provider which ad server is providing the ad. This is, however, part of the (business) agreement between the service provider and third party advertiser; the former needs to inform the latter which advertisements to customise and deliver to the user.
In view of the above, the Board considers that there is no synergistic relationship between (A) and (B). Their contribution to inventive step, therefore, has to be assessed separately and independently from each other.
Feature (A) would be non-technical
2.4…In the Board’s view it is clear that D4 also discloses the key element of the invention, namely that this targeting is in addition to the conventional advertising service, as it is disclosed as “icing on the cake” (see paragraph ).
In summary, both in D4 and the invention the ad server receives user authentication status information and, based thereon, serves a specific advertisement. Authentication is performed by different entities, however, as discussed further below, this relates to a non-technical requirement.
2.8 It is common ground that the effect of difference (A) is that user authentication data is not provided to outside parties such as the third party ad server – see paragraph  of the application.
2.9 This, however, relates to data privacy, i.e. what information to share and not to share with third parties, and thus is not a technical matter (see e.g. T 1248/12 – Privacy preserving data mining/CROSSIX, reasons 3.2). Under the “Comvik approach” (T 641/00 – Two identities/COMVIK) it may legitimately be part of the problem to be solved, for example in the form of a requirement specification given to the skilled person to implement.
In the context of D4 this would mean that the list of cookies, for example authentication cookies for an online shop, is not shared with or collected by the ad server (see paragraphs  and ). As a consequence, the ad server could not itself authenticate a user (see paragraph ) but would need to get this information from elsewhere. The only other party which could perform user authentication is the one in possession of the cookies, i.e. the online shop.
Thus, in this situation the steps as in claim 1, namely authenticating the user via the service provider, i.e. the online shop, and providing authentication status information to the ad server are inevitable. The latter might also include, depending on the business agreement, information as to which advertisements to serve.
The Board judges that the technical implementation of this authentication procedure, e.g. by sending an authentication cookie via a web page request to the service provider’s web server and using a specific path for indicating the originating ad server, would have been obvious to the skilled person, a web programmer.
Feature (B) would be obvious
2.10 Regarding difference (B) the appellant argued that the specific control enabled the user to schedule the recording of a video program via a digital video recorder (set-top box) or a cloud service in a convenient and flexible way.
This raised the awareness of the user regarding the availability of video programs/content (see paragraph  and  of the application). Even though D1 disclosed a video recording service, it required the installation of a browser plug-in and was limited to set-top boxes.
2.11 Firstly, the Board notes that adding a service option to an advertisement is a known concept. For example, the advertisements in D4 include a link for online shopping (see paragraph ).
Secondly, D1 discloses the recording functionality as far as it is claimed – see paragraphs  to  since claim 1 is not limited to a specific implementation regarding the control of the digital video recording service, e.g. the use of a cloud service.
Thus the Board judges that, when asked to implement such a service option, the skilled person would have turned to D1 and arrived at the claimed solution without inventive effort.
Since claim 1 of the main and first auxiliary requests is broader than claim 1 of the second auxiliary request, they were found to lack inventive step for the same reasons (Article 56 EPC). Hence, the European patent application was finally refused.
You can read the whole decision here: T 2174/18 (Including a video recording option in advertisements/COMCAST) of 25.5.2022 of Technical Board of Appeal 3.5.01.