This decision concerns a system and method for secure delivery of business mail such as contracts. The first instance Examining division refused the application as an obvious implementation of a non-technical administrative postal scheme on a notorious networked computer system, claiming components were abstract entities having roles in this administrative scheme and, therefore, lacked technical character. The Board disagreed and noted that in order to route an electronic message from one location to another involves considerations which go beyond what the business person providing the non-technical requirements to the technically skilled person is aware of. A mere similarity to a business or administrative solution is not a sufficient reason for denying a technical contribution of a claim feature. Here are the practical takeaways from the decision T 1158/17 (Routing electronic message/ESCHER GROUP) of December 12, 2022, of the Technical Board of Appeal 3.5.01.
Key takeaways
A similarity to a business or administrative solution is not a sufficient reason for denying a technical contribution of a claim feature applied in a technical context and involving technical considerations. Put another way, technical considerations in the technical context cannot be negated merely on the basis of a non-technical analogy.
The provision of the computers and/or programs in order to route an electronic message from one location to another involves considerations which go beyond what the business person providing the non-technical requirements to the technically skilled person is aware of.
Even if the claim components were defined in functional terms at a high level of abstraction, this alone is not sufficient to negate the technical considerations involved in providing those components.
Just because the claimed component modeled the roles of humans interacting within the framework of the administrative postal scheme, it does not mean the claimed components were not technical.
The lack of detailed disclosure concerning the hardware used does not imply that the subject-matter of the application is an administrative postal scheme. This lack of technical detail does not remove the technical contribution of routing electronic messages and ensuring their integrity in a novel manner.
The invention
The invention concerns a system for secure delivery of business mailings, for example, contracts or invoices.
The system comprises multiple access portals (104) enabling authenticated users to send and receive electronic business mailings. Each access portal is associated with a message server (108), which produces a uniquely identifiable message from an electronic business mailing sent at the portal, and with a secure system node (102). A delivery subsystem (110) routes a message created by the message server, associated with the sender portal, to the recipient access portal over the system nodes. Furthermore, a secure system node associated with the recipient portal checks the integrity of a received message and the integrity of its delivery.
If the received message passes both checks, the destination system node sends an acknowledgement to a secure system node associated with the sender portal. Having received the acknowledgement, the originating system node also checks the integrity of the message delivery, and if the check fails, it instructs the destination node to discard the message. Then, the originating system node sends the original message again. If the received message passes the checks at both nodes, it is delivered to the recipient’s access portal.
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System Claim 1 of the only request
Is it patentable?
In the first instance, the Examination Division refused the application as the claims related to a non-technical administrative postal scheme comprising the abstract administrative steps and the activity roles represented by abstract functionality entities and users. The decision contested that due to the high level of abstraction at which they were claimed and disclosed in the application, the claimed components modelled the roles of groups of persons interacting within the framework of the administrative postal scheme.
Moreover, the division alleged that the application did not set out what particular hardware devices were used, and therefore, it was clear that the application’s subject-matter was the administrative postal scheme and not its technical implementation.
Applying the COMVIK approach, the Division held that the administrative postal scheme was given to the technically skilled person as the requirement specification to be implemented on the notorious networked computer system or on the technical infrastructure of one of the known computer systems. The claimed implementation was limited to routine programming and, therefore, obvious to the skilled person.
The applicant appealed against the decision.
The Board disagreed with the Division and judges that many of the claimed features provide a technical contribution and are subject to the assessment of inventive step:
3.2.4 Like claim 1 of the refused auxiliary request, claim 1 of the present main request defines an electronic business portal system that comprises access portals enabling users to send and receive electronic mailings. These features determine the context in which this claim is to be interpreted, namely that a message, created by the message server from an input electronic mailing, is an electronic message. It is also clear that the electronic message is automatically routed to the receiving access portal where the recipient can retrieve the electronic mailing.
Accordingly, the claim clearly defines that messaging servers, system nodes, access portals and the delivery subsystem are either appropriately programmed computers and/or programs running on computers. This was essentially acknowledged by the contested decision, at point 18.
The Board then agreed with the applicant that it went beyond the business person, and merely because the claims were defined at a high-level abstraction or that the invention modelled the role of human interaction does not negate the technical consideration:
3.2.5 In line with the appellant’s argument presented in the first instance proceedings (see section VIII above), the Board judges that the provision of the above computers and/or programs in order to route an electronic message from one location to another involves considerations which go beyond what the business person providing the non-technical requirements to the technically skilled person is aware of (see T 1082/13, Reasons, point 4.8).
While the contested decision was correct in stating that the claim components were defined in functional terms at a high level of abstraction, this alone is not sufficient to negate the technical considerations involved in providing those components.
3.2.6 It follows that the claimed components could not be envisaged by the business person and are part of the technical implementation which falls within the sphere of the technically skilled person.
3.2.7 The Board is not convinced by the contested decision’s finding that the claimed components were not technical because they modeled the roles of humans interacting within the framework of the administrative postal scheme.
The Board considers that a similarity to a business or administrative solution is not a sufficient reason for denying a technical contribution of a claim feature applied in a technical context and involving technical considerations. Put another way, technical considerations in the technical context cannot be negated merely on the basis of a non-technical analogy.
Against the reasoning that the detailed disclosure lacked any hardware and thus implied an administrative scheme, the Board disagreed with such reasoning:
3.2.10 Neither is the Board convinced by the finding that the lack of detailed disclosure concerning the hardware used implies that the subject-matter of the application is an administrative postal scheme. This lack of technical detail does not remove, as essentially argued by the appellant, the technical contribution of routing electronic messages and ensuring their integrity in a novel manner. The questions as to which hardware should be used and what particular programming techniques should be employed were not the focus of the invention and the application legitimately relies in this respect on the skilled person’s common general knowledge.
The Board then indicated features are technical and do not define administrative matter as the claim defines the integrity check of the message.
3.2.12 In summary, the Board judges that the access portals, message servers, delivery subsystem, system nodes and the message creation and routing functionality carried out by these components are technical features. The same is true for adapting the originating and destination system nodes to perform the integrity checks of the received messages and to discard and resend a message which fails these checks.
3.2.13 The Board judges that these features are not part of a requirement specification provided to the skilled person and in order to assess whether they involve an inventive step (Article 56 EPC), an analysis of the written prior art is necessary.
Therefore, the Board decided that the subject-matter of claims is technical. However, as the features were not fully examined or searched, the Board decided to remit the case back to the Examining Division.
More information
You can read the full decision here: T 1158/17 (Routing electronic message/ESCHER GROUP)of December 12, 2022, of the Technical Board of Appeal 3.5.01