The European Patent Office refused to grant a European software patent for calendar-based profile switching on small computer devices. Here are the practical takeaways from the decision  T 1989/12 (Calendar-based profile switching / MICROSOFT) of Technical Board of Appeal 3.5.01:

Key takeaways

Non-technical features cannot contribute to inventive step. Therefore, they may legitimately appear in the formulation of the problem to be solved without constituting hindsight.

Hence, formulating the technical problem to be solved may comprise elements of the solution as long as they lack technical character.

The invention

The application relates to small, portable computing devices, and particularly to computing devices that provide user notifications relating to particular events. According to an embodiment, the invention provides control of user notifications for different environments through the use of customized notification profiles. Each profile has information related to each type of notification event (such as a meeting reminder, a button press among others) and a corresponding notification type (such as an audible chime, a visual display, among others) for each notification event. Thus, each profile may be configured to provide different types of notifications for a plurality of different types of notification-type events.

Fig. 1 of EP 1 217 532
Fig. 1 of EP 1 217 532
  • Claim 1 (auxiliary request)

Is it patentable?

The application describes that, in the prior art, the user could control the notifications by putting the phone on silent mode. However, the silent mode is inflexible in that it applies to all types of notifications and events. Thus, if the user is expecting an important telephone call during a meeting, it is not possible to receive a sound notification for that important call when the phone is on silent.

According to the assessment of the examining division, to which the Board agrees, the claimed subject-matter differs from the prior art in several features:

3.1 The examining division assessed inventive step starting from D3 and the Board agrees that this is a reasonable starting point. D3 discloses a mobile phone having a plurality of notification profiles (for example “General”, “Silent”, and “Meeting” – see pages 53 and 54, as well as the table on page 142). The user can select a profile from the settings menu (pages 146 and 147).

3.2 It is common ground that the method of claim 1 of the auxiliary request differs from D3 by the automated profile switching:
“if the user has selected an automated profile switching, the method further comprises:
upon occurrence of a calendar-related event, determining whether a notification mode has been set for the calendar-related event;
if no notification mode has been set, remaining in the current notification mode;
if a notification mode has been set, automatically applying the selected notification mode;
upon ending of the calendar-related event, automatically switching back to the current notification mode”.

The examining division formulated the problem to be solved as “how to couple the notification modes with the calendar”. Since this involves elements of the solution, namely the recognition that the notification mode should be coupled with calendar functionality, this can only be allowable if the concept is not technical.

3.4 The next step in the assessment of inventive step is to formulate the objective technical problem solved by the invention. This is often a crucial issue, because the problem defines what is given to the skilled person. A broadly formulated problem leaves a lot for the skilled person to solve. A narrowly formulated problem, on the other hand, puts the skilled person closer to the invention. The limit is the point just before elements of the solution enter into the problem (impermissible hindsight).

In all cases, non-technical features cannot contribute to inventive step. Therefore, they may legitimately appear in the formulation of the problem to be solved without constituting such hindsight (T 641/00 – Two identities/COMVIK). Applicant argued that the computer-implemented method as claimed provides an efficient and flexible way for allocating resources. Moreover the claimed method allegedly minimizes data transfer via the use of a remote reference.

The Board agrees in that it the claimed concept is not technical. Hence, most of the features present in claim 1 must not be taken into account for assessing inventive step:

3.6 The Board agrees that it is not. Moreover, the Board goes further than the examining division and considers also the settings themselves to be non-technical. Those settings do nothing more than provide the user with options. The global setting allows the user to switch the automatic profile switching on or off. The local setting allows the user to specify a notification profile for each event. The Board sees none of this as technical. Therefore, all of it is part of the problem to be solved in the form of a requirement specification given to the skilled person. This is a narrow problem. The only thing that is left for the skilled person to do is to implement the requirements on the mobile device. In the Board’s view, this would have been obvious.

In conclusion, the Board ruled that the subject-matter of claim 1 does not involve an inventive step (Article 56 EPC).

More information

You can read the whole decision here: T 1989/12 (Calendar-based profile switching / MICROSOFT) of April 26, 2018

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