In this decision, the European Patent Office considered the concept of using history data for predicting the future workload of a tiered storage system to be technical. Here are the practical takeaways of the decision T 0943/16 (Tier assignments/MICROSOFT TECHNOLOGY LICENSING) of 25.6.2020 of Technical Board of Appeal 3.5.07:
This European patent application concerns the problem of assigning searchable digital items to tiers in a tiered storage system serving as a search-engine index, with higher tiers offering faster retrieval but having smaller capacity.
According to the application, user history data is used to generate a quality indication of a tier assignment, where a tier assignment indicates to which of several tiers searchable digital items are assigned. The user history data may be obtained by monitoring user interaction, e.g. queries issued by the users, search results provided to the users or search results selected by the users.
Here is how the invention is defined in claim 1 of the main request:
Is it technical?
The first-instance examining division had refused the patent application for lack of inventive step.
The board of appeal started its assessment from a prior art document that concerned the allocation of resources in the form of computing systems to applications with a tiered architecture, and concluded that the invention was not rendered obvious by this prior art. However, the board came to another conclusion with respect to the prior art acknowledged in the application itself:
In paragraphs  and  of its background section, the present application acknowledges a prior-art method of generating an improved tier assignment for storing searchable digital items in a tiered storage system, where the higher tiers have faster access and retrieval times when compared to lower tiers, the tier assignment indicates to which of several tiers the searchable digital items are assigned, and the tiered storage system is a search engine index. The acknowledged prior-art method further includes a step of assigning digital items to the tiered storage system based at least in part on the improved tier assignment.
The board found that claim 1 differed from the acknowledged prior-art method in three aspects:
- (a) user history data is received which includes queries that were issued by users and search results provided to the users in response to the queries;
- (b) an indication of quality of a tier assignment is generated based at least in part on a subset of the user history data; and
- (c) the improved tier assignment is generated based at least in part on the indication of quality.
The first-instance examining division had essentially taken the view that the distinguishing features were not based on technical considerations and did not contribute to a technical effect. Accordingly, they could not contribute to inventive step under the COMVIK approach.
The board did not agree:
In the claimed method, history data is used for predicting the future use or workload of the system. The Board accepts that, in the present context, analysing history data enables a statistically reliable prediction of the system’s operation and does not lead to purely speculative results. Since the claim explicitly and clearly specifies that higher tiers have faster access and retrieval times than lower tiers, an improved tier assignment means improved average access times. Moreover, since the history data is purposively used to improve access times, this improvement is not merely the physical consequence of a non-technical decision but a technical effect to be taken into account in the assessment of inventive step (T 697/17 of 17 October 2019, reasons 5.2.3 to 5.2.5; T 1965/11 of 24 March 2017, reasons 5.1).
As it still had to be determined whether adding distinguishing features (a) to (c) to the acknowledged prior-art method would involve an inventive step, the board of appeal remitted the case back to the examining division for further prosecution.
You can read the whole decision here: T 0943/16 (Tier assignments/MICROSOFT TECHNOLOGY LICENSING) of 25.6.2020
Bastian is a European patent attorney at BARDEHLE PAGENBERG. He specializes in software patents in Europe both from a prosecution and litigation point of view.