The IPKat was alerted to the Decision of the Technical Board of Appeal 3.5.1 of the European Patent Office T 1670/07 Shopping with mobile device/NOKIA, of 11 July 2013, by a proprietary subscription service. This led to a bit of difficulty since although this moggy loves patent-related matters, he is not so at home in the field of technically excluded subject matter. So he
coerced persuaded his colleagues Sam Town and Paul Beynon (thanks guys!) into writing this note for him.
In the decision, the members of Technical Board of Appeal 3.5.1 took it upon themselves to “clear up” what they perceived to be some popular misconceptions that applicants hold in regards to what makes an invention “technical”. In particular the decision addressed that precarious area where a claimed invention incorporates both technical and non-technical features.
The application in question related to a method for expediting shopping (I suspect the inventors had spent too much time carrying their partner’s shopping bags). The user entered two or more desired goods/services into their mobile and they would be provided with a shopping itinerary showing an order, based on that user’s profile, in which they could efficiently visit various shops to purchase the desired items. It was accepted that this differed from the closest prior art in that the user could obtain goods from a plurality of vendors and that the user was provided with an itinerary with the choice of an order to visit the identified vendors, the itinerary being a function of a profile of the user.
With the solution to such “travelling salesman” problems having been the consternation of computer scientists for many years, the applicant (perhaps not unreasonably) expected there to be a seed of technicality in the provided solution. Indeed, having decided that the features of obtaining goods from a plurality of vendors and providing an itinerary were not technical, the examining decision found such a seed planted in the feature of the itinerary being a function of the profile of the user, which, unfortunately for the applicant, the examining division went on to decide was obvious.
|IPKat out shopping|
The first of these is the technical leakage fallacy. The appellant had tried to argue, relying on the principles of G 1/04 and T 603/89, that the alleged non-technical features interacted with technical elements (in the form of a server), to produce a technical effect (in the selection of vendors and the transmission of processed information regarding the selection to the mobile). However, the board insisted that the overall effect was not technical, and therefore the mere interaction with the intrinsically technical elements required to implement the invention was not enough to make the whole process technical. Hence, the board appeared to reinforce the current understanding of EPO practice, namely that while including such technical elements in a claim may avoid rejection as a mere computer program, they cannot be relied upon for demonstrating a technical effect.
In a further attempt to save the application, the appellant had rather imaginatively put forward the argument that the physical act of the user going to the locations conferred technical character to the claimed invention. The board seemed to at least half swallow this argument, as in response, rather than reject the argument out of hand, the board cited T 1741/08 in which it was concluded that a chain of effects from providing information to its use in a technical process is broken by the intervention of a user. Perhaps the board were simply loath to waste the opportunity to unveil a second new phrase, because this principle was swiftly branded the broken technical chain fallacy.
The appellant then attempted to rely on T 362/90, which ruled that providing a status indication about the state of a system was a technical effect. The board pointed out that the difference between that system, which related to the selection of an optimum gear for a running piece of machinery, and the application in question, which related to shopping, was vast, hammering home the point by stating that “shopping is intrinsically non-technical”. Hence, the board demonstrated that a technical effect may arise from the provision of data about a technical process, but not the provision of data regarding shopping. The choice of language used here does seem to raise the question that if the invention provided a list of activities that were more technical than shopping, such as an ordered list of sites of machines requiring maintenance, would the board have conceded that a technical effect had been provided?
True to form, the board seized the opportunity to create one last new phrase; “the non-technical prejudice fallacy” defining arguments that essentially invoke non-technical aspects as a reason for not modifying the prior art. The board refused to consider whether the skilled person would consider providing the novel features of the claim. Rather, because the board had already decided that these features were non-technical, the features therefore properly belonged in the formulation of the problem, and the question therefore became “how would the skilled person provide the novel features”. The objective technical problem therefore became “how to modify the prior art to plan a shopping trip (itinerary) that includes orders from different vendors”. The solution it seems, in this case at least, was rather obvious.
Merpel points out that it’s easier to shop online anyway.
(This decision is also covered on K's law here)