UK: Shopping For A Technical Effect (T 1670-07)

Last Updated: 7 November 2013
Article by Gary Small and Ben Husband

We report on a recent Technical Board of Appeal decision at the EPO which gives us a glimpse at how arguments often used when attempting to establish an inventive step may be perceived by the Boards.

During the recent appeal against an Examining Division's decision to refuse a European patent application, the Technical Board of Appeal has clarified its position on some of the arguments often presented by applicants attempting to show that claimed inventions are technical. The Board's decision has provided some useful insight into the utility of such arguments in the form of three so-called fallacies, and also into the circumstances in which they may be deemed to be persuasive.

This decision suggests that when arguing in favour of inventive step and, more particularly, that claimed features are technical, one needs to establish a real technical effect of any novel features without relying on their interaction with other technical features, or user reaction, and one should not rely upon non-technical shortcomings of the prior art.

In the following we summarise the appealed decision of the Examining Division, the Board's decision in brief, and each of the three fallacies formulated by the Board in response to the lines of arguments presented by the patentee.

The appealed decision of the Examining Division

The appealed decision of the Examining Division results from an application concerned with generating an itinerary for shopping from a number of high street vendors. The application was refused during examination due to lack of an inventive step. The claimed invention was defined by the Board as being essentially that a shopper enters two or more desired goods/services into their mobile device before going shopping and the device displays a shopping itinerary showing an order (i.e. sequence) in which the shopper can visit a group of vendors to obtain the desired goods/services. The itinerary is a function of a user profile, e.g. requiring shortest distance between vendors or goods at the cheapest purchase price.

The Examining Division had decided that obtaining goods from a plurality of vendors is not technical and therefore did not contribute to an inventive step. Regarding the feature of providing an itinerary, the Examining Division suggested that the problem to be solved may be how to provide a technical means to optimise an itinerary. The inclusion of the feature of the itinerary in the problem suggests that the Examining Division considered it to be non-technical too. The fact that the itinerary is a function of a profile of the user was considered by the Examining Division to be obvious.

The Board's decision in brief

The Board agreed with the Examining Division that the claimed subject-matter was distinguished from the prior art in that the user can obtain goods from a number of vendors at a shopping location, and in that the user is provided with an itinerary with the choice of an order to visit identified vendors, where the itinerary is a function of a profile of the user.

The Board went further than the Examining Division to say that all of the identified novel features are non-technical. In upholding the decision of the Examining Division, the Board helpfully set out its views on various lines of argument that it has observed in cases coming before it. These lines of argument are summarised as i) the technical leakage fallacy, ii) the broken technical chain fallacy, and iii) the
non-technical prejudice fallacy.

The technical leakage fallacy

The appellant argued that the feature of the selection of a group of vendors at a shopping location contributes to the technical character of the claimed invention in that it involves a non-technical feature that interacts with a technical means. In response, the Board put forward the first of its three fallacies: the technical leakage fallacy.

The technical leakage fallacy is described by the Board as the assertion that the mere interaction with an established technical feature should result in the non-technical feature itself becoming technical. This is to say that the technical nature of the implementation of the invention, e.g. a server, should somehow leak back to the non-technical features of the invention. In the present case, the argument involved the information of a group of vendors interacting with technical elements in the form of a server to produce a technical effect in the selection of vendors and transmission of the selection. Needless to say, the Board did not find this type of argument convincing.

The broken technical chain fallacy

The appellant further argued that the difference of identifying a group of vendors rather than a single vendor as in the prior art implies a problem of logistics. In the Board's view, producing an itinerary is not technical as it involves only standard human behavioural concepts like going to the bank and then to a supermarket. The appellant replied that the physical act of going to the locations conferred technical character to those thoughts. The Board applied its second of three fallacies here: the broken technical chain fallacy.

The broken technical chain fallacy refers to the commonly used argument that a technical effect might exist in the user's reaction to information that is generated by a technical feature of the claim. According to the Board, this argument is often made in view of a previous decision of the Technical Boards of Appeal that involves user interfaces and the existence of a technical effect in a user's reaction to information presented in the interface. This previous decision concluded that a chain of effects from providing information to its use in a technical process is broken by the intervention of the user. Thus, any possible technical effect that is arguably brought about by the action of a user cannot be used to establish an overall technical effect, since any possible technical effect is dependent on a user's reaction. The Board pointed out that a technical effect might arise from the provision of data about a technical process, regardless of the presence of a user or its subsequent use, or from the provision of data that is applied directly in a technical process. However, neither of these was found to be present in the application in question.

The appellant also attempted to draw similarities between its invention and an apparatus set out in a previously appealed case that provided an optical display for providing a current and ideal gear to be selected based on conditions of a gear box. The Board was not swayed in its view, stating that in the present case there is no comparable technical system, since shopping is non-technical, and that the displayed information is not representative of the status of the technical parts of the claimed invention (i.e. the server and the mobile device), rather the displayed information is non-technical information that the technical parts process.

In attempting to persuade the Board that the claimed invention involves an inventive step, the appellant formulated a problem to be solved by the claimed invention as the provision of a technique which has greater flexibility and can provide results tailored to a user's preferences. The Board's view was that this problem is not technical and is too general because it does not take into account the non-technical aspects of the claimed invention. The Board stated that the problem is far more specific and should be how to modify the prior art to implement non-technical aspects of planning a shopping trip that includes orders from different vendors. According to the Board's formulation of the problem, it was considered obvious by the Board to modify the prior art.

The non-technical prejudice fallacy

The appellant reasserted that the system described in the prior art only provides a single facility, which is in contrast to the claimed invention that provides a group of vendors and navigation information on how to get to the group of vendors. According to the appellant, the prior art system would return a single vendor for all the desired items, but a single vendor may not be capable of supplying all the desired items, or the vendor may be located a long way away from the user. Finally, the Board referred to the third of its fallacies: the non-technical prejudice fallacy.

The non-technical prejudice fallacy, put simply, results from attempting to use non-technical aspects of an invention as a motivation not to modify the prior art. In such scenarios, the Board noted that it is not whether the skilled person would consider adding these, non-technical, tasks to the prior art but how the skilled person would. Since these could be added by standard hardware, there is no technical reason why the skilled person cannot modify the hardware to perform non-technical tasks.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.