This decision is interesting for shop operators and concerns predicting future acquisitions. However, the EPO considered this non-technical. Here are the practical takeaways from the decision T 0977/17 (Storing electronic receipts/OTTO GROUP SOLUTION PROVIDER) of June 17, 2021 of Technical Board of Appeal 3.5.01:

Key takeaways

A technical problem must be derivable from the claim wording.

Business research activities are excluded per se from patentability.

The invention

The Board in charge summarized the subject-matter of the application underlying the present decision as follows:

The invention concerns a method for systematic storing and analysing of electronic and printed payment certificates documenting purchases made by a user (see originally filed application, page 1, paragraph 1; page 7, paragraph 2).

A corresponding system according to Fig. 2 includes a central database 140 connected to a computer 110, such as a shop cash register equipped with a bar code scanner (page 10, lines 10 to 28). In a preparatory phase, the database registers the user and creates an account (page 2, lines 23 to 26). After the registration, the user is provided with an identification card comprising a unique bar code 120 (paragraph bridging pages 2 and 3).

When a user makes a purchase, the cash register creates a payment certificate and stores it locally (page 2, lines 14 to 18; page 9, lines 22 to 25). Then, the user is authenticated by scanning the bar code (page 9, lines 26 to 28) and if the authentication is successful, the cash register transmits the stored payment certificate to the central database over the Internet (page 10, lines 4 to 9). The database then stores the received payment certificate in association with the user’s account (page 2, lines 4 and 5).

In addition to collecting the electronic payment certificates, the invention enables information extracted from printed payment certificates to be input into the database. To this end, the invention uses a scanning device and optical character recognition (OCR) methods (page 7, lines 9 to 18).

The database includes a statistical application analysing data extracted from payment certificates assigned to the user’s account (page 5, lines 25 to 32) in order to predict future purchasing behaviour of the user (page 6, lines 26 to 32). This might include for example predicting the probability that the user will want to purchase a certain product or a price he will be willing to pay for it (paragraph bridging pages 6 and 7).

Fig. 2 of WO 2013/068378 A1

Here is how the invention was defined in claim 1 according to the main request:

  • Claim 1 (main request)

Is it patentable?

In the first instance, the Examination Division refused the application due to lack of inventive step in view of prior art document D1.

According to the Board, claim 1 includes the following two distinguishing features:

2.1 … It is common ground that claim 1 differs from D1 by:

A) Predicting future acquisitions by a user and/or parameters of future acquisitions by a user based on previous acquisitions by the user and/or parameters of previous acquisitions by the user.

B) A scanning device adapted to scan a printed payment certificate and extract information from the printed payment certificate for further processing of the information in the database.

However, the Board in charge arrived at the conclusion that both features lack a technical character.

Concerning feature A, the Board reformulated the technical problem and argued that this problem is of non-technical nature:

2.2 Concerning feature A, the appellant argued that it solved the objective technical problem of how to select a product to be presented to a user and to adjust the timing and location of the presentation of the product to the user. The examining division formulated a similar problem.

However, the Board considers that this problem formulation is not correct. Firstly, it is not derivable from the claim, which does not mention presenting products to the user. Secondly, even assuming for the sake of argument that the claimed method predicts time and location at which a user is likely to make future purchases, this is in the Board’s view not a (further) technical effect counting towards an inventive step. Rather, using statistical methods to predict future purchases based on previous ones is a business research activity excluded per se from patentability under Article 52(2)(c) and (3) EPC (cf. decision T 154/04, points 19 and 20 of the reasons).

Using the COMVIK approach (see decision T 641/00) this non-technical functionality cannot contribute to an inventive step and is instead given to the skilled person within the framework of the objective technical problem. Accordingly, the Board considers that the skilled person faces the objective technical problem of implementing feature A in the system of D1.

Concerning feature B, the Board once more arrived at the conclusion that no technical character is present since the feature would merely relate to considerations concerning cognitive business content:

2.4 However, the Board considers that none of the purported effects qualifies as a further technical effect counting towards an inventive step.

Firstly, the advantages of increased data accuracy and ease of analysis are not derivable from the original application which does not explain why paper certificates are used. The application does not mention the format and content of printed certificates.

Secondly, even assuming that using the printed certificates indeed provided the alleged advantages, the decision to use these certificates would be based on considerations concerning their cognitive business content. These are purely business considerations.

Hence, the Board judges that at the claimed level of detail the requirement to use printed certificates does not involve any technical considerations and constitutes non-technical business matter.

To defend claim 1, the appellant argued that the distinguishing features A and B would produce a synergistic technical effect based on technical considerations:

2.8 The appellant argued further that features A and B were functionally interdependent and it was not correct to analyse them separately. More specifically, inputting into prediction algorithms more accurate and complete data facilitated these algorithms’ operations. As a result, it was possible to use less sophisticated prediction software. This was a synergistic technical effect.

However, the Board in charge was not convinced and maintained its position as outlined above:

2.8 … However, the Board considers that the distinguishing features do not interact synergistically. Firstly, the alleged synergistic effect is not derivable from the original application (cf. point 2.4. above). Secondly, the claim covers the case in which electronic payment certificates make up a vast majority of all analysed certificates and the Board cannot see how using few printed certificates (say, one printed certificate versus one million electronic ones) could allow simplifying the prediction software. Thirdly, as set out above, predicting future acquisitions is a non-technical business activity. Improving this activity by basing the predictions on more accurate business data does not give rise to a technical effect which could provide a basis for the alleged synergy.

As a result, the appeal was dismissed due to lack of inventive step.

You can read the whole decision here:T 0977/17 (Storing electronic receipts/OTTO GROUP SOLUTION PROVIDER) of June 17, 2021.

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