Decision T102/08 and the 2016 Guidelines
Collective Paper by the CII Thematic Group (Computer Implemented Inventions) of the EPPC
The 2016 version of the Guidelines for Examination in the EPO entered into force on November 1st, 2016.
This edition includes a comprehensive review of the passages in F-IV and G-VII relating to eligibility of computer implemented inventions (CII). The EPO introduced guidance on clarity and four examples of eligible/non-eligible, patentable/non patentable subject matter in CII, with a complete problem-solution approach reasoning with respect to exemplary prior art.
We deem that, on the whole, the introduced examples are very valuable and we appreciate the efforts of EPO, which takes the thoughtful direction in harmonizing the approach to inventions entailing ICT aspects.
In the following, we are concerned with Example 3, G-VII 18.104.22.168, which has been adapted from T102/08 of Board of Appeal 3.5.04. A brief summary of T102/08 is given in the following paragraphs before explaining how, in our opinion, Examiners should construe the guidance of relevant Example 3 above, avoiding taking it literally in some passages.
Decision T102/08 deals with invention entitled "A system for the transmission of a broadcast media channel to a remote client over a data connection". The discussion of the decision is about the features involving the determination of a data rate at which the signal of the media channel is to be transmitted. The Board of Appeal clearly determined that there are two partial problems solved by the invention, namely:
- how to provide channels to subscribers over limited bandwidth data connection at the highest possible quality of service (i.e. at the maximum possible data rate of the data connection); and
- how to implement a pricing model which allows the customer to choose to pay a lower amount and to receive broadcast media channels with a quality of service lower than the highest possible quality of service,
and that both are solved by obvious means. In the second problem (2), the pricing model is included as a constraint to be met according to Comvik decision T641/00. This is likely the reason why decision T102/08 is cited in the Case Law of BoA 2016 in section I.D.9.22 (partial problems).
We performed a search in the BoA online database and found no other BoA decision citing T102/08. Therefore, T102/08 seems not to have been taken as a reference example of an application of Comvik decision.
The Guidelines 2016 G VII 22.214.171.124 example provides a complete problem-solution approach with the steps outlined in G VII 5.4 for mixed-type (technical/non-technical) inventions. The first step provides for a "prima facie" (sic.!) determination of the features making a technical contribution, while at the beginning of third step (determination of the differing features with respect to the closest prior art) the technicality analysis is deepened before formulating the objective technical problem.
In the example at hand, a feature "available data rate being lower than a maximum data rate for the data connection to the remote client" is found non-technical due to a specific disclosure in the description indicating application of a pricing model. The objective technical problem is therefore formulated as "how to implement in the system of the closest prior art a pricing model which allows the customer to choose to pay a lower amount to receive broadcast media channels at a quality of service lower than the highest possible quality of service" (i.e. at a data rate lower than the maximum possible data rate of the data connection).
With respect to the Example 3, for one thing we note that the expression "prima facie" has a well-recognized legal meaning, i.e. a prima facie positive assessment already has a full degree of certainty. For another thing, the fact that section 5.4 provides for a refinement of the assessment, confirms that the legal meaning of "prima facie" was not really meant in both 5.4 and 126.96.36.199.
Therefore, in our opinion, "prima facie" should be construed in this framework as meaning "at first glance".
Moreover, the above objective technical problem "how to implement in the system of the closest prior art a pricing model which allows the customer to choose to pay a lower amount to receive broadcast media channels at a quality of service lower than the highest possible quality of service" contains a clear pointer to the implementation solution, because it contains "quality of service" as a quantitative parameter ("lower than") which is directly tied to a corresponding technical parameter, i.e. "data rate of the data connection", as outlined in the description of the invention.
In our opinion, even if T641/00 allows the non-technical aim to be added to the objective technical problem as a constraint to be met, care should be taken as to not use words in the non-technical aim that have a clear technical meaning within the framework of the invention, as in case T102/08. In T641/00, the problem was defined as "how to implement the GSM system in such a way as to allow user-selectable discrimination between calls for different purposes or by different users", which doesn't contain any pointer to a technical solution and even doesn't mention any pricing model although there was a clear one in the invention's description.
Besides the fact of introducing a pointer, the passage from "data rate of the data connection" to "quality of service" in T102/08 changes the framework for evaluating novelty and inventive step, in that a formerly technical feature disappears which could have contributed to the technical character, and a non-technical feature appears in its place, which is, per se, not only devoid of any technical meaning, but also very general and thus well known ("pricing model" is everywhere in the commerce field). Thus, application of the Guideline example in its present form to other cases would lead to inventions being unfairly prejudiced.
In the case at hand, we can push the reasoning even to the point where there is a clear technical effect in that a lower bandwidth consumption is required. The non-technical aim behind (the customer may pay less when he/she consumes less bandwidth) should not play a role when assessing the technical problem-solution, although it is clear that there is such an aim as a general constraint. The invention may be obvious because the implementation is within the average skill of the skilled person, but such assessment should be based on a correct problem-solution substantiation.
These considerations are confirmed in the comment to the objective technical problem formulation given in the same Example 3. Indeed, the Guidelines state:
"Thus the only technical effect achieved is determining the transmission data rate in accordance with the pricing model. The pricing model itself represents an aim to be achieved in a non-technical field which may be included in the formulation of the objective technical problem as a constraint to be met."
In accordance with the Comvik decision T641/00, the formulation of the technical problem has to be construed as to not include any statement about the "data rate" but only the implementation of a pricing model allowing to choose between two different pricing options corresponding to different levels of service.
We fully understand that the aim of the EPO was to illustrate that a non-technical aim can be included in the formulation of the technical problem. This is why we propose changing the technical problem in the Example 3 in the next edition of the Guidelines and to interpret the present one, in the meantime, as above indicated.
Further, the reference to T102/08 should be removed. In fact, once a decision is in the Guidelines in a specific section, it is seen as established case law by the Office for cases dealt with in that section. However, in the present case, when looking at the more recent decision T963/09 (Selective auditing/ORACLE), the opposite conclusion about aim to be achieved in a non-technical field and objective technical problem is given - namely that, once there is a technical implementation which solves a technical problem in an inventive way, it does not matter whether there is a non-technical aim behind (point 7 of the decision).
Lastly, a search of other subsequent decisions of the Board 3.5.04 on the same subject-matter (mixture of technical and non-technical features) has revealed only the following ones:
1) T1869/08 of 4.10.2012
2) T2407/10 of 8.10.2013
which do not refer to T102/08, as above mentioned.
The first decision though repeats the scheme of T102/08 considering the differing features non-technical and integrally including them in the technical problem. Upon examination of the main request claims, we deem that one of them is technical instead (cf. decision, sections 2.8-2.9), so that the technical problem has a pointer to the solution again and is thus also defective.
The second decision takes a milder approach, since it offers two different equivalent formulations of the technical problems (cf. decision, beginning of sec. IX), and one is certainly devoid of any pointer. Moreover, the main claim features are such that the result is the same with both problems (inventive).
Hence, the above confusion in T102/08 between non-technical aim and objective technical problem, with all the ensuing drawbacks, seems to be little propagated although not officially validated by this Board of Appeal.
As a conclusion, Example 3 should be interpreted as providing an example of a two-stage assessment of technicality in a claim, i.e. a "first glance" assessment and a final, well considered assessment, and as providing a formulation of the technical problem which includes a non-technical aim (providing choice according to a pricing model) but which is focused on the relevant implementation, and avoiding any reference to technical features that are associated to pricing model, which have to be assessed in the inventive step assessment. Corresponding reformulation of the Guidelines would be highly welcomed.
This topic has been discussed with the EPO at a meeting of SACEPO/WPG (Standing Advisory Committee to the EPO/Working Party on Guidelines) and we believe that a satisfactory amendment of the Guidelines has been found.