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Wednesday, 4 September 2013

Where can I buy a technical effect? EPO BoA Decision T1670/07

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
On appeal however, the TBA went one step further by asserting that none of these features had any technical effect, since the overall effect of producing an ordered list of shops was not technical. In response to a number of arguments put forward by the applicant on appeal, the board saw a prime opportunity to put some apparently over-used arguments to bed and in doing so, coined three new phrases that roll off the tongue.

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)

34 comments:

BluePrint said...

It might have been wise not to have the word 'shopping' in the title and in claim 1. At least they got a nice claim in the US (US-B1-6,954,735) with 608 days of term extension.

I suppose at the EPO this is like a sort of arms race with applicants now having to develop arguments and drafting methods to deal with technical leakages, broken technical chains and non-technical prejudices.

MaxDrei said...

Well said BluePrint. I chuckled.

But such an "arms race" at the frontier of patent eligibility is inevitable and OK, isn't it? Pushing the envelope is what good advocates do, I think.

We see much the same at the frontier with excluded methods of surgery.

At least we in Europe can argue "technical Y/N" with the EPO in a civilised way that chimes with TRIPS and is meaningful and reasonable to engineers, scientists, politicians and journalists.

Contrast that with what you have in the USA. There, you just shout at each other "Abstract", "Not Abstract", "Tis", "Tisn't"

Joeri Beetz said...

To me, having to walk a shorter route certainly is a technical effect. But maybe I should read the decision, before commenting.

Anonymous said...

@Joeri - it is certainly a physical effect, but surely it is only a technical one if you happen to have bionic legs?

MaxDrei said...

Nice comment, that last. Reminds me of the Dunns Licensing salesman, that got revoked. He was in a motor vehicle though, and I remember thinking that fuel economy ought to have been seen as technical.

Anonymous said...

"Technical" is an Alice In Wonderland word.

Anonymous said...

Some boards like to create nicely sounding catchphrases, but are still unable to point out what makes a feature technical or not.
In particular, the "broken technical chain fallacy" (ie "a chain of effects from providing information to its use in a technical process is broken by the intervention of a user") appears to make traffic lights not technical, since the technical effect (the vehicle stopping) is achieved by the driver seeing the red light (ie "the information") and pressing the brakes (ie "the intervention of a user"). For now at least, the driver is usually not a technical object.

Myshkin said...

The idea of a traffic light as a signal for regulating traffic is most likely as non-technical as is the rule that cars should drive on a predetermined side of the road.

The concrete implementation of a traffic light is of course technical, because it is a physical object. A particular implementation might also well be inventive. Aspects of the implementation governed by traffic rules or (somewhat less indisputable) by logistical ideas on how to improve the flow of traffic do not contribute to inventive step, but there seem to be enough possibilities left.

Myshkin said...

@Joeri:
We probably agree that a chess program that calculates the move leading to the quickest mate is not technical. However, one could argue that it allows you to beat your human opponent with less physical effort, as you need to move around fewer wooden pieces.

I'd say the program is solving a chess problem, and chess is not technical. Similarly, I'd say compiling the itinerary is solving a logistics problem and logistics is not technical.

The argument that providing this information allows one to do something with less physical effort must fail, because what is being claimed is simply not technical. There is just a calculation (in fact not even that, the claim does not even specify that the presented order of vendors is a sensible one, let alone how this order is determined).

On the other hand, I do have some doubt about the "broken technical chain fallacy" counterargument. This counterargument is derived from T 1741/08, but there the chain broke because it contained a link that really hinged on a subjective reaction to a particular way of presenting information (it was argued that the user could process the information quicker, so that interaction time was reduced thereby freeing resources quicker or something like that). In the present case, it is not so clear to me that the "effect" of a list of shops to visit depends on subjective cognitive processes.

But let me go back to the analogy of a chess program helping the user to win his game with less physical effort. If we replace the user by a network connection to some other chess playing entity, then finding a faster mate could be argued to have the "technical effect" of using less network bandwidth. Now the "broken technical chain fallacy" does not apply, because there is no human intervention. Still, there is no doubt in my mind that finding a faster mate should not (indirectly) qualify as a technical effect.

My counterargument is not the "broken technical chain fallacy", but one of the arguments from the Hitachi decision (T 258/03). Reducing network usage by playing a faster mate is not a solution but a circumvention of the problem by changing the non-technical scheme. An even better circumvention would be to resign immediately.

The same applies to shopping (assuming the claim would be amended by including a step of executing the itinerary by going shopping). Any plan to go shopping is non-technical. Executing a particular plan takes physical effort, some plans will take more effort than others. Optimising the plan reduces effort compared to other plans, but this is achieved by a change in the non-technical scheme. We circumvent the problem rather than solve it. An even better circumvention would be to not go shopping at all. See also T 1227/05, point 3.2.5 of the reasons.

MaxDrei said...

Would Myshkin (or others) care to comment on two inventions in which colour and brain activity is involved?

1) The squash racquets ball coloured blue. The undisputed evidence is that against a white wall a player can identify and assess the flight of a blue ball much quicker than he or she can when the ball is black? Is that effect technical? Why should the Inventor be deprived a patent in Europe?

2) The electric fence in a stripy yellow and black pattern. Cows think it is a snake so go nowhere near it. Result: less electric shock stress to the cows, and improved cattle management. Is that result technical? If not, how can it be right to deprive the Inventor of a patent?

Anonymous said...

The 'avoidance of a problem' versus 'solving a problem' is just more Alice in Wonderland tomfoolery.

Anonymous said...

The very notion of "useful" necessarily involves brain activity.

Ask: useful for whom? How do you know it is useful?

Myshkin said...

@MaxDrei:
To answer your last question first, if the effect is not technical, there is a lack of inventive step so that a patent cannot be granted.

The blue racquet ball... if it is not just a subjective psychological effect but rather a biological effect, I suppose it might be considered technical. It would probably be advisable to provide some evidence for the existence of the effect using experimental data.

The animal psychology case: see T 1121/02. The Board "provisionally accepted" that the effect existed, but considered it non-technical. This might be a matter of having a bit of luck with the Division or Board, because this again seems a borderline case to me.

MaxDrei said...

Thank you Myshkin. Indeed both borderline. BTW, I'm intrigued by your distinction between "subjective psychological" and biological. A debate about that distinction could get quite metaphysical.

I do understand that i) at the EPO no technical effect means no patent and ii) recognition of the specific technical effect relied upon for patentability must be there, in the text of the application as filed. I was suggesting that here, in both these borderline cases, the subject matter is of a nature that ought to be recognised (intuitively, if you like) as patentable, so the EPO ought to be able to find within itself a capacity to recognise that the effect is indeed "technical". For me, EPO credibility in the world outside patent professionals and specialists depends on maintaining conformity between what engineers accept as "technical" and what the EPO decides is technical.

I wince when you suggest success or failure depends on which EPO individuals sit in judgment on the case. I prefer to think that is less important than the competence of the patent agent who drafted the application, and the EPI member who prosecuted it at the EPO.

Anonymous said...

Myshkin @ 1:54,

Are you not conflating effect (ends) with step (means)?

A classic example from the States may be a new music player - the music itself (ends) would not be patent eligible, while the player (means) most definitely would be.

MaxDrei said...

Myshkin, readers, I suggest that you don't want to answer that insouciantly naive question, from a poster who has already above dismissed the EPO jurisprudence as "tomfoolery" and yet palpably cannot be arsed first to read up about the EPO Problem and Solution Approach on Wikipedia.

You would not want to encourage trolls, well-known on the US patent law blogs, where they get their best yield by insulting other posters. They do it to get attention; and such attention only encourages them.

Anonymous said...

MaxDrei @ 16:41,

Excuse the directness, but you are way too full of yourself.

How exactly is the post at 12:52 a 'troll' post? Where have you asked anyone to read a Wikipedia post on EPO Problem and Solution Approach? How does that even fit into the conversation?

What is wrong with you?

Myshkin said...

@MaxDrei:
I'm intrigued by your distinction between "subjective psychological" and biological

This seems one possible way of drawing the border between technical and non-technical as it concerns the role played by the human mind. I don't know if this is the "correct" way.

Another possibility is to dismiss any and all involvement of the human mind as non-technical. The racquet ball being blue will then not have a technical effect. (Btw, studies showed that blue is the hardest color to see in that sport.)

In any event it cannot be seriously denied that there is a category of "subjective psychological" effects that are not technical. In my view McDonalds could not have received a patent (under the EPC) for its color scheme that does have the effect of shortening the average time people spend in their restaurants (a form of improved herd control). (From this source: One example of a perfect piece of colour psychology was McDonalds (the burgerchain). Apparently, they never thought of colour psychology in the 1950s when they designed their brand colours. However, bright warm red has the property of appearing closer than it is - although red is not technically the most visible colour, it does grab the attention first. Then the warm yellow, bordering on orange, can serve to remind you that you might be hungry; orange activates considerations of food, warmth, shelter and physical comfort, so seeing it outside, you are encouraged to go in and eat. Once inside, however, another property of red takes over: it also creates an overestimation of the speed at which time is passing – so you won’t linger.)

Where the border lies is ultimately not a question of science but of law. The EPC does not give a clear answer, so the answer is developed in case law as needed. (Now the anonymous can bicker again, but this is simply how law develops in all areas of law. Law is full of incompletely defined terms that are gradually developed in more detail by case law. Patent law is not different.)

I wince when you suggest success or failure depends on which EPO individuals sit in judgment on the case. I prefer to think that is less important than the competence of the patent agent who drafted the application, and the EPI member who prosecuted it at the EPO.
Good drafting and arguing is of course important, but what I mean is that reasonable minds can differ on what is technical and what is not. As long as you're in the grey area, there are two possible outcomes. With time, the grey area should get smaller, but it will never go away. (Again, patent law is not different from any other area of law.)

the subject matter is of a nature that ought to be recognised (intuitively, if you like) as patentable,
That is your personal opinion, to which you are entitled. I do not agree that credibility of the EPO hinges on whether it agrees with your personal opinion.

Myshkin said...

@Anonymous:
Are you not conflating effect (ends) with step (means)?

No I am not, see e.g. my response to the traffic light example.

If you have a new and inventive blue paint, then a racquetball with that paint will be inventive.

The mere idea of providing a racquetball that is blue is non-technical, unless one can show a racquetball being blue gives rise to a technical effect. If the idea is indeed non-technical, the technical problem to be solved is how to turn a known racquetball into a blue racquetball. The claim probably does not even state how this is achieved, so the solution must be assumed to be trivial. (And of course it is trivial, because "painting" is well-known.) I was hoping this did not need explaining, but here you go.

Of course you(?) might regard the problem solution approach as just more of the same "tomfoolery". Patent attorneys however have little choice but to try to master the relevant concepts.

MaxDrei said...

I'm enjoying your writings Myshkin. Thanks.

You made me think of automatic reflexes in the brain. When we hear a sudden noise behind our head, we (all of us?) get a muscle twitch which, but only in some of us, actually makes the ears tilt to the rear. Cows (all of them?) are instinctively leary of anything (such as a yellow and white striped electric fence wire) because it triggers a genetic reflex "Snake!" alert in their brain. I dare say though that nervous cows jump away and confident ones don't bother.

Whether these instant reflex reactions are "psychological" or "biological" is the point I'm wondering about.

Turning to when we pass a branch of McDonalds, do we experience an instant irrepressible irresistible urge to get in there and eat a Big Mac? I guess it varies from person to person but that it is not evolution that has installed it in our brain.

Contrast that with the sudden noise behind our head. I guess we all get the ear twitch reflex but the amount of ear wiggle varies from person to person.

But anyway, as you say, we will continue to enjoy debating what is or is not "technical", the more so as our scientific knowledge grows, and helped by the debates that have gone before, on cases such as these.

By the way, on the blue ball, I was thinking of the game called "Squash" that is played in England, and where the ball colour went from black to green to blue. I could not find in your Link any mention of a blue ball, but I'm open to the possibility that the promotion of the blue ball, as allowing perception of the flight of the ball faster than with a green ball, is a load of cow dung. They should show us the evidence, I say

Anonymous said...

Myshkin,

I note that you refer to some examples in the conversation and yet, some examples remain untouched.
(particularly, what does useful mean, music and music player)

I note that your raquetball counter point falls short (notwithstanding the link you present which itself does not link to any actual studies), as MaxDrei clearly showed a 'technical' effect.

I note too that 'technical effect' is augmented with 'further technical effect' when software is concerned. Why the second layer? Because with software the first layer is automatically met.

Given the above, I note that 'technical' is attempted to be equated with 'non-human,' when such is not at all evident in reality. (again, the particular avoidance of dealing with the 'useful' comment).

Lastly, the 'tomfoolery' comment is being misapprehended. I point out the sleight of hand involved in the term not to induce a lack of "master[ing] the relevant concepts," but rather to highlight that 'technical' - without being defined - is merely a psychological ploy, a gloss, to restrain the domain of patents to those useful things from perhaps the merely enjoyable things. To wit, any reasoning that would rule out traffic lights (since they are eminently useful) must be suspect.

I would daresay that mastering the relevant concepts must include being able to distinguish the useful from the merely enjoyable.


Anonymous said...

MaxDrei comments "Whether these instant reflex reactions are "psychological" or "biological" is the point I'm wondering about."

I wonder, why does this even matter?

Is it not the actual effect that matters? Whether the cause is psychological or biological seems far less important than 'A' cause having been uncovered through systematic observation, measurement, and experiment. To the experimenter, it may be quite evident that either cause will suffice.

Anonymous said...

There is a clear difference between the present case and the "broken technical chain fallacy" as defined by BoA, as well as better arguments can be thought of in favor of a technical effect.

@MaxDrei, I really like the idea of a black squash ball, it is, in a way, color blind friendly (also when played in England).

Myshkin said...

@Anonymous:
To wit, any reasoning that would rule out traffic lights (since they are eminently useful) must be suspect.

Did you at all read what I wrote in reply to the traffic light example?

If you are not reading replies, there is no reason to reply. If you are reading replies but either not understanding or willfully ignoring them, it is also not useful to reply further.

Anonymous said...

Myshkin,

Do you mean something other than "The idea of a traffic light as a signal for regulating traffic is most likely as non-technical as is the rule that cars should drive on a predetermined side of the road."

Please point out how I am willfully ignoring your comments.

Anonymous said...

Myshkin,

I neglected that you may have meant the comment about physicality - but I had discounted that comment as self-defeating since actual software equally has physicality (and I noted above that a second level of 'technical' is especially being hand-waved at when software is under discussion).

Myshkin said...

You(?) referred to ends versus means.

Regulating traffic using green and red lights as an end is, at least in my view, non-technical, where "technical" refers to the legal concept referred to in EPO case law.

The physical implementation of a traffic light as a means to achieve this non-technical end is of course technical and a particular traffic light might be novel and inventive over existing traffic lights.

The example of the racquetball being blue (end) and new and inventive blue paint (means) is not different. I don't see much sense in performing the exercise a third time with music and music instruments or music players.

Regarding the term "useful", I don't think we are discussing art. 57 EPC. Usefulness is not a criterion for patentability and inventive step, at least not if we are discussing the EPC and EPO case law.

Maybe this is all nonsense because you think that the law ought to be different, but what the law "ought to be" is a very different discussion from what the law "is".

Anonymous said...

Myshkin,

I cannot tell if you are agreeing with me, or not agreeing with me (but still agreeing with the posts I have made).

Yes, your writing it that unclear.

On the one hand, you seem to want the means of a physical item to be deemed technical while the ends of what that item means to be non-technical -- and that it not at all what the decision underlying this discussion indicates.

On the other hand, your raquetball example is STILL faulty because the blue as means is not inventive, but rather (again as I point out your link fails to do anything but claim it is the worst color) the color produces an effect. Also, as I noted, it simply does not matter which of the two modes actually creates the effect, as BOTH modes are susceptible to scientific discovery.

So that is two strikes against you, and I see why you do not want to swing a third time. Trouble (for you) is that you strike out with the bat sitting on your shoulder.

Lastly, I do not see where you get off accusing me of some type of discussion of what 'ought to be.' Maybe it is the only way that you can feel that you are triumphant in your views, but I would prefer if you stick to what the discussion "is."

Myshkin said...

I am quite confident that my writing is not unclear at all for a trained scholar of patent law.

What should I agree or disagree with? That all terms and concepts that your are unfamiliar with are "tomfoolery"?

On the one hand, you seem to want the means of a physical item to be deemed technical while the ends of what that item means to be non-technical -- and that it not at all what the decision underlying this discussion indicates.
Show me where the decision underlying this discussion states that a physical item is non-technical.

On the other hand, your raquetball example is STILL faulty because the blue as means is not inventive, but rather (again as I point out your link fails to do anything but claim it is the worst color) the color produces an effect.
First of all, what you write here makes no sense at all. "Blue as means is not inventive, but the color produces an effect?" What point are you trying to make? It is simply making no sense. Are you working in patent law at all? Then it is time to take up your education in a more serious manner.

Anyway, my link is irrelevant for this example. For the purpose of this discussion I am accepting that the human brain perceives the trajectory of a blue racquetball faster than that of balls in other colors.

IF this effect (faster processing by the human mind) is non-technical, THEN the idea of providing a racquetball that is blue is non-technical and may form part of the formulation of the technical problem. The skilled person starts from a known racquetball, is given the task of turning it blue, and will based on his common general knowledge trivially solve this problem by painting the ball in the desired color using a known paint. There is therefore lack of inventive step. This is basic stuff. Read COMVIK or something.

IF the effect is technical, THEN the problem is how to provide a racquetball that achieves this effect and the question is whether something in the prior art suggested that the color blue has this advantage. If not, there is an inventive step.

I have not expressed my personal view on whether this effect is technical or not (technical referring to the LEGAL term used in the EPO case law). I did state that in my view this effect is in the grey area where no firm conclusion can yet be drawn from the existing case law.

That you are confusing what the law according to you ought to be with what the law is, I am deducing from the fact that you seem to be of the view that anything useful is (or ought to be?) patentable. But I am probably already reading far too much into your ramblings.

Anonymous said...

Myshkin,

I think you mean a trained scholar of gobbedlygook, as your ramblings are not clear at all, and you engage in accusing others of the very actions you take.

If someone tells you that your writing is unclear, the proper response is not "It's clear enough to me."

Clearly, your writing is not clear enough. Clearly, you have not discussed the examples presented, and clearly, you are missing the point about the distinction of usefulness (and the critical link between usefulness and the human mind that judges usefulness).

You can rant all you want or something, but such is just more tomfoolery.

Tufty the Cat said...

@Myshkin: I sympathise with you regarding the difficulties you have with the 'tomfoolery' anonymous commenter but would suggest, in line with Max's earlier comment, that it is not worth the effort in feeding the troll. It would be a shame if comments in the IPKat went the same way as Patently-O, where comments are now effectively useless due to the excessive trolling. Perhaps the moderators can take a more active role in keeping things in line. I certainly would. More comments does not necessarily mean more illumination.

MaxDrei said...

Thank you Tufty.

I want to say that I should hate to lose Myshkin from this blog. I find comments from Myshkin full of useful insights, and educational, almost like in a tutorial back at University. I should like to encourage him to stay with the blog.

I am active on the Patently-O blog and agree with what you say about that one. These days it is so troll-ridden that most genuine commentators have thrown up their hands in frustration, and gone away.

But the active moderation you suggest is rather time-consuming.

On a non-patent blog I did see one neat idea, namely, to divide the thread into a general unfiltered stream and a second stream of comments confined to those that the blog master thinks do develop the debate. One can simply trust the bog master, and select the second thread for one's reading. Would that work on Patently-O I wonder.

Anonymous said...

I think the 'technical' term that Myshkin, MaxDrei, and Tufty are looking for is:

Wah.

Anonymous said...

MaxDrei,

Your comments concerning Patently-O comes across as pure sour grapes.

It is more than evident that you merely want an echo chamber of agreement for your views.

I suggest that you actually attempt to answer the points raised against you instead of whining that others who disagree with you are "trolls."

Grow up, grow some, and engage the counter points raised against your posts. In law you do not get to whine to the judge, why would you want to whine to a blog controller?

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