UK: Inventive Step For Software Inventions At The EPO

The problem and solution approach

The problem and solution approach as applied by the EPO to consideration of inventive step is normally a four step process. The first step is to identify the closest prior art, which may be closest to the invention in terms of structural features or in terms of the problem addressed. In practice, EPO Examiners will select the document based on which they think they can mount the best obviousness argument and there is little mileage in arguing that a document is not the closest prior art document since an invention is to be considered obvious if it is obvious over any document, not just the closest document. The second and third steps, which are somewhat intertwined, are to identify the technical effect achieved by the invention, as compared to the closest prior art, and the objective technical problem to be solved. These two steps are closely related since the objective technical problem must be solved by the features providing a technical effect and distinguishing the invention over the closest prior art. The final step is to determine whether the person skilled in the artwouldhave applied the characterising features to solve the objective problem. In this stage there is often a lot of discussion of could or would, the point being that an invention is not obvious merely because the person skilled in the art could have applied the distinguishing features, there must also be some motivation to do that.

For inventions involving a mixture of both technical and non-technical features, or which solve a non-technical problem, the four step problem and solution approach is modified by the addition of an initial phase which has been referred to variously over the years but is now often referred to as the "requirements phase". This concept was first introduced in theComvikcase (T0641/00 of September 2002). In that case the Board stated:

"where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that is to be met."

Since the non-technical aim or problem precedes the definition of the technical problem to be solved, it cannot contribute to the technical inventive step. Following Comvik, DunsLicensing (T0154/04 of November 2006) confirmed that the non-technical aim can be ascribed to the preliminary phase "even if it derives from an a posteriori knowledge of the invention". In King Loan (T1284/04 of March 2007) the Comvik approach was justified on the basis that it:

"does not consider the non-technical constraints as belonging to the prior art, but rather as belonging to the conception or motivation phase normally preceding an invention since they may lead to a technical problem without contributing to its solution".

Thus, the inventive step of a so-called mixed invention (that is involving both technical features and non-technical features or aims) becomes a five step process:

• Assign non-technical aims and features to the "requirements phase" irrespective of whether they are novel or not. Often examiners do this by copying the claim and striking out the non-technical features.
• Identify the closest prior art, in particular the document that is closest to the identified technical features. In some cases the EPO may have ascribed most of the features of the claim to the non-technical requirements phase leaving only generic technical hardware such as processors, memory and networks. In such a case, the Examining Division commonly asserts that such hardware is "notorious" meaning that it is so well known that there is no need to cite a specific disclosure.
• Identify the technical effect compared to the closest prior art. If at this point only notorious hardware is left in consideration, the Examining Division may directly object that the invention is obvious.
• Determine the objective technical problem, taking into account the closest prior art and features of the invention that distinguish it, in the same way as in wholly technical inventions.
• Finally, as with other inventions, decide whether the technical person skilled in the artwouldhave employed the distinguishing features to solve the technical problem. Could/would considerations again apply.

One of the most contentious issues is what aims and features are to be considered as non-technical and technical. The concept of a "notional business person" is sometimes used to provide a more structured approach to addressing that debate.

The notional business person

The "notional business person" is a colleague of the person skilled in the art, introduced by Technical Board of Appeal 3.5.01 in T 1463/11 to give some objectivity to the process of assigning features and aims to being technical or non-technical. In the modified five step problem and solution approach, the job of the notional business person is to define the non-technical requirements which the person skilled in the art must then implement. The notional business person cannot contribute to inventive step; inventive step must be shown in the implementation of the requirements by the person skilled in the art.

The notional business person made his first appearance in two related decisions given on 29 November 2016 in appeals by CardinalCommerce against rejection of a parent and a divisional (T1463/11 and T1658/15). In these decisions, which have essentially identical reasoning, the Board recognised the need to analyse carefully the division between technical and non-technical features of a claim. The Board of Appeal introduced the "notional business person" and described what he/she does as follows:

"in the assessment of inventive step, the business person is just as fictional as the skilled person of Article 56 EPC. The notion of the skilled person is an artificial one; that is the price paid for an objective assessment. So it is too with the business person, who represents an abstraction or shorthand for a separation of business considerations from technical.

Thus, the notional business person might not do things a real business person would. He would not require the use of the internet, wireless, or XXXX processors. This approach ensures that, in line with the Comvik principle, all the technical matter, including known or even notorious matter, is considered for obviousness and can contribute to inventive step.

Similarly, the notional business person might do things that a real business person would not, such as include requirements that go against business thinking at the time – a sort of business prejudice, as is alleged in this case. If this were not the case, business requirements would need to be evaluated and would contribute to inventive step, contrary to the Comvik principle."

Thus, the requirements must not specify or prohibit technical features but may include innovative business concepts.

To illustrate this, it is worthwhile considering the invention of the CardinalCommerce cases. This related to e-commerce and specifically to websites through which goods or services are to be sold. In order to take payment, a merchant operating such a website needs to communicate with different payment servers in order to allow different forms of payment, such as credit cards, store cards or services like PayPal. According to CardinalCommerce's inventions, an intermediary server is provided which deals with the different payment servers. The merchant therefore only needs to maintain one "plug-in" to interface with the intermediary server and not many separate plug-ins to deal with the various servers of the various payment providers.