This decision concerns a patent application for a method of redesigning a product based on customer feedback. In the appeal, the Board considered that claim of the Main Request was so abstract that it encompasses entirely non-technical subject-matter excluded under Article 52(2) and (3) EPC. However, with the Auxiliary Request, claim 1 was amended to include technical limitations and was then considered patent-eligible.

This decision is an excellent example of how the first (patent-eligibility) of the two-hurdle approach (i.e., COMVIK approach) is applied at the EPO. Here are the practical takeaways from the decision T 1790/17 (Redesigning product or process parameters/PROCTER & GAMBLE) of 18.3.2021, of Technical Board of Appeal 3.5.01:

Key takeaways

To not be excluded from patentability under Article 52(2) and (3) EPC (i.e., to be patent-eligible), claim should have at least a single technical feature. The so-called “any hardware” approach introduces a low hurdle that can be easily overcome by introducing any hardware limitation to the claim.

Redesigning a product based on user feedback is not a patentable invention and relates to a business method. A business person would have the idea of keeping track of products to collect consumer feedback. 

But controlling the manufacture of a product with improved process data is a patentable invention as it includes technical features. A claim, including an explicit manufacturing step, technical means of manufacturing and limited to process data, is technical.

The invention

The European patent application relates to a method for redesigning product or process parameters of a manufactured article based on consumer feedback.

As an example, the application indicates that the manufactured article may be a diaper, and customer feedback maybe the article’s performance in use (see paragraphs [0005] to [0007] of the published application).

Here is how the invention was defined in claim 1 of  EP 2 843 600 A1  :

  • Claim 1 (main request)

The two-hurdle approach:

The European Patent Office uses the established two-hurdle approach (also called the COMVIK approach) for assessing the patentability of an invention. As a quick reminder, to be patentable at the EPO, the claimed subject-matter should overcome two hurdles:

  1. Patent-eligibility hurdle: claim should have at least a single technical feature
  2. Inventive step hurdle: only distinguishing technical features are considered for assessing non-obviousness

The first hurdle (Patent-eligibility), also called “any hardware” approach, is a low hurdle that can be easily overcome by introducing any hardware limitation. This makes the subject-matter patent-eligible and no longer excluded from patentability under Article 52(2) and (3) EPC.

Is it patent-eligible?

In the present invention, the European Search report merely contained a so-called no-search declaration. The examining division maintained that claim 1 defined an administrative workflow without any technical means. Therefore, this subject matter was excluded from patentability under Article 52(2) and (3) EPC. The Board also agreed:

3. The Board agrees with the examining division’s conclusion that claim 1 is so abstract that it encompasses entirely non-technical subject-matter excluded under Article 52(2) and (3) EPC.

4. The claim essentially defines a method for collecting consumer feedback on the use of a product. This feedback is used to redesign the product such that it is better adapted to meet consumer needs.

For example, when buying shoes the consumer might report that they don’t fit. This feedback could be related to data collected during manufacture of the shoes such as a label on the shoebox indicating their size. The manufacturer might then conclude that a wrong label has been attached to the shoebox and issue an instruction to change the manufacturing – in this case the labelling – process accordingly.

The applicant argued that the process should be interpreted as a manufacturing process, and the data are technical data obtained during manufacturing or during product testing. However, the Board then considered that none of the steps of the method related to technical matter or involved technical data:

5. The Board finds that none of steps i) to vi) relate to technical matter and do not necessarily involve technical data.

5.1 Firstly, a business person would have the idea of keeping track of products such that consumer feedback can be collected for a specific product. Keeping track of products requires some sort of identifier. The “unique identifier” in step i), which according to the description can for example be a serial number or a bar code, is a self-evident implementation of this requirement.

5.2 Secondly, the product and/or process data in step ii) does not exclude non-technical product data such as the above mentioned size label.

The appellant argued that the skilled person understood that this data was recorded and used in a manufacturing process and, thus, technical (see paragraphs [0008] and [0009]). The Board is not convinced as no examples of any such data are given. Product data collected during the manufacture of a product can be interpreted broadly and – as mentioned above – include non-technical data.

5.3 Similarly, the Board is not convinced that the consumer feedback relating to “in use performance” of a product in step iii) necessarily represents technical data.

The Board also noted that there was no link between the determination from the received feedback and its use in manufacturing:

5.4 The appellant argued that step v) in conjunction with step iv) further explained the technical purpose of the feedback information being that of identifying manufacturing parameters used for producing faulty products and changing them.

The Board notes that there is no link between step v) and iv). It is, thus, not possible to conclude that the correlated data is actually used for determining different manufacturing parameters. Even if it were, the Board remains of the view that a purely non-technical interpretation as outlined above, for example determining a different size label, still exists.

The determined different product and/or process data can, therefore, not be considered as data useful or used for controlling a technical device and, therefore, has no technical purpose or effect.

For that reason the Board does not agree with the appellant that step v) is technical. The determined parameters encompass non-technical data and, thus, cannot imply a technical effect in the sense of points 88 and 94 of G 1/19 as argued by the appellant.

5.5 The Board judges that step vi) is not clear enough to contribute to technical character either.

Applying the new parameters to the first manufactured articles to “transform” them into second articles does not seem to be possible. Most likely, what is meant is to apply these parameters to the manufacturing process. This, however, neither implies an actual manufacturing step nor involves any technical means. Also, as the parameters themselves might not be technical their application to the manufacturing process does not necessarily imply any technical effect either.

6. Accordingly, claim 1 is not an invention under Article 52(2) EPC.

How to be patent-eligible?

During the Oral Proceedings before the Board, the applicant filed a set of amended claims as an Auxiliary Request. Amended claim 1 of the Auxiliary Request is as follows (emphasis added to identify the additional features).

  • Claim 1 (Auxiliary request) - annotated

In brief, the amended claim included the following limitations: a hardware limitation of a controller and converting apparatus, type of manufactured article to an absorbent article, and a manufacturing step by the converting apparatus.

These amendments were adequate to overcome the first hurdle (patent eligibility):

8. Claim 1 of this request has been changed to a method for redesigning process parameters and manufacturing articles according to the redesigned process parameters. The articles are limited to absorbent articles and the manufacturing data to process data.

Furthermore, the claim specifies that a controller performs the correlation step and applies different process parameters to a converting apparatus, these parameters being determined based on the correlation step.

Finally, a new step vii) of manufacturing, by the converting apparatus, articles according to the determined different process parameters has been added.

9. The Board judges that the amendments are clear and derivable from paragraph [0015] of the description and do not add any new subject-matter.

10. The Board is satisfied that the subject matter of claim 1 is technical. It includes an explicit manufacturing step, technical means of a manufacturing process and is limited to process data which in the Board’s view can only refer to technical data.

Does this mean the application was granted? No, not yet, this was just the first hurdle.

Since the examining division had only decided on the technicality of the invention but not on the further patentability requirements (e.g., inventive step), the Board decided to remit the case to the examining division for further prosecution.

You can read the whole decision here: T 1790/17 (Redesigning product or process parameters/PROCTER & GAMBLE) of 18.3.2021

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