ANNEX II. T 154/04 Estimating sales activity/ DUNS LICENSING ASSOCIATES
In this decision the jurisprudence of the Boards of Appeal on the application of Art. 52, 54 and 56 EPC in the context of subject-matter and activities excluded from patentability under Article 52(2) EPC is summarized. The appellant explicitly disagreed with the “COMVIK approach” applied by the Board for assessing inventive step as it used hindsight to determine the prior art. Furthermore, the Board answers the question whether “methods of business research” are excluded “as such” from patentability under Article 52(2)(c) and (3) EPC.
Summarized jurisprudence of the boards of appeal regarding subject-matter excluded from patentability (reasons, point 5)
(A) Article 52(1) EPC sets out four requirements to be fulfilled by a patentable invention: there must be an invention, and if there is an invention, it must satisfy the requirements of novelty, inventive step, and industrial applicability.
(B) Having technical character is an implicit requisite of an “invention” within the meaning of Article 52(1) EPC (requirement of “technicality”).
(C) Article 52(2) EPC does not exclude from patentability any subject matter or activity having technical character, even if it is related to the items listed in this provision since these items are only excluded “as such” (Article 52(3) EPC).
(D) The four requirements – invention, novelty, inventive step, and susceptibility of industrial application – are essentially separate and independent criteria of patentability, which may give rise to concurrent objections. Novelty, in particular, is not a requisite of an invention within the meaning of Article 52(1) EPC, but a separate requirement of patentability.
(E) For examining patentability of an invention in respect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention.
(F) It is legitimate to have a mix of technical and “non-technical” features appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features “as such”, do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step.
(G) For the purpose of the problem-and-solution approach, the problem must be a technical problem which the skilled person in the particular technical field might be asked to solve at the relevant priority date. The technical problem may be formulated using an aim to be achieved in a non-technical field, and which is thus not part of the technical contribution provided by the invention to the prior art. This may be done in particular to define a constraint that has to be met (even if the aim stems from an a posteriori knowledge of the invention).
Technical character (reasons, point 7)
Taking into account object and purpose of the patentability requirements and the legal practice in the contracting states of the EPO, the boards of appeal considered the technical character of the invention to be the general criterion embodied in paragraphs 2 and 3 of Article 52 EPC (see, for example, decisions T 22/85 – Document abstracting and retrieving/IBM (OJ EPO 1990, 12), Reasons No. 3, Pension Benefits T 931/95 (supra), Reasons No. 2, and more recently decisions T 619/02 – Odour selection/ QUEST INTERNATIONAL (OJ EPO 2007, 63), Reasons No. 2.2 and T 930/05 – Modellieren eines Prozessnetzwerkes/ XPERT (not published in OJ EPO), Reasons No. 2). By having technical character, any product, method etc., even if formally relating to the list enumerated in paragraph 2, is not excluded from patentability under paragraphs 2 and 3 of Article 52 EPC.
Defining the object of the invention (reasons, point 16)
For the purpose of the problem-and-solution approach developed as a test for whether an invention meets the requirement of inventive step, the problem must be a technical problem (see the COMVIK decision T 641/00 (supra), Reasons Nos. 5 ff.). The definition of the technical problem, however, is difficult if the actual novel and creative concept making up the core of the claimed invention resides in the realm outside any technological field, as it is frequently the case with computer-implemented inventions. Defining the problem without referring to this non-technical part of the invention, if at all possible, will generally result either in an unintelligible vestigial definition (DE: unverständliche Rumpfdefinition), or in an contrived statement that does not adequately reflect the real technical contribution provided to the prior art.
The Board, therefore, allowed in COMVIK an aim to be achieved in a non-technical field to 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 (Reasons No. 7). Such a formulation has the additional, desirable effect that the non-technical aspects of the claimed invention, which generally relate to nonpatentable desiderata, ideas and concepts and belong to the phase preceding any invention, are automatically cut out of the assessment of inventive step and cannot be mistaken for technical features positively contributing to inventive step. Since only technical features and aspects of the claimed invention should be taken into account in assessing inventive step, i.e. the innovation must be on the technical side, not in a non-patentable field (see also decisions T 531/03 – Discount certificates/CATALINA (not published in OJ EPO) Reasons Nos. 2 ff., and T 619/02 (supra), Reasons No. 4.2.2), it is irrelevant whether such a non-technical aim was known before the priority date of the application, or not.
Requirement of inventive step (reasons, points 23-28)
Point 23: For assessing inventive step, the system claims 7 of the main request an auxiliary request 1, and the system claims 1 of auxiliary requests 2 and 3 may be considered together since the technical subject matter of these claims is only marginally different.
Point 24: The claimed system essentially consists of a central station connected to a plurality of first (reporting) sales outlets providing sales data to the central station for estimating sales (product distribution, sales volume) of at least one other (nonreporting) sales outlet. Regarding such a system, there is general consent that document D1 is a relevant piece of prior art and an appropriate starting point for assessing inventive step.
Point 25: In the terminology of the present application, document D1 discloses a system comprising a plurality of first sales outlets (figure 1: store 1,…, store N) which generate sales data/ volume/distribution (identification of the retail store, date of transaction, universal product code UPC, quantity purchased etc. enabling a “market basket” analysis, see column 7, lines 19 to 45). This prior art system further comprises a central station (“central site 24”, see figures 1 and 7) receiving these sales data via a data receiver (“telephone 102”) from each of the first sales outlets (see column 11, lines 14 to 23, and column 16, lines 19 to 35). A memory stores a database including data for each of the sales outlets (“very large direct access storage device DASD 112”, see in particular column 16, lines 40 to 45). This database stores data required for market analysis, for example characteristic data and geographic data (see column 7, lines 21 f. and column 19, lines 66 ff.). A central processor/processor (“central processor 110”, “central processor 114”, see figure 7 and column 16, lines 49 to 55) processes the data, for example by “perform[ing] statistical calculations necessary in producing output reports for customers of the market research system”.
Point 26: The claimed system according to the present requests is distinguished therefrom by the following features:
- There is at least one other sales outlet not generating sales data/product distributionand/or not coupled to the central station.
- The system provides a different market analysis; the sales, geographic, and other characteristic data are processed to estimate sales/product distribution/sales volume at the at least one other sales outlet on the basis of a method and algorithm specifically disclosed in the present application.
Point 27: The contribution to the prior art is the use of the known system for performing a new market analysis different from the statistical calculations disclosed in document D1 and hence requiring the implementation of a new algorithm for processing the sales data and creating the desired information about the non-reporting sales outlets. This, however, does not imply the use of any new technical means. The contribution to the prior art is therefore limited to the implementation of the new algorithm.
Point 28: For the reasons given above, this new algorithm and the method of estimating sales activity at a non-reporting outlet are part of a business research method and do not contribute to the solution of any technical problem. They have thus to be ignored in assessing inventive step. The only technical aspect of the claimed system, namely to use a processor to implement the non-technical method and the corresponding algorithm, is an obvious consequence of using computer systems for market analysis like in document D1. Hence, the main request and the auxiliary requests 1 to 3 are not allowable for lack of inventive step (Article 56 EPC).
I. Methods of business research are excluded “as such” from patentability under Article 52(2)(c) and (3) EPC.
II. Gathering and evaluating data as part of a business research method do not convey technical character to the business research method if such steps do not contribute to the technical solution of a technical problem.