Key points
- This is an application against a refusal decision.
- " The examining division considered the basic idea of the invention to be non-technical. It was seen as a method for managing the funding of catastrophe relief efforts which enabled charitable organisations to put in place funding before a catastrophic event actually occurred."
- The applicant Swiss Re apparently found it a good idea to seek a patent monopoly on this.
- "as stated in e.g. T 2314/16 [] over the years the case law has provided guidance on the issue of technicality. Recently, the Board has tended to use the framework for discussion given in [T1463/11 - CardinalCommerce] to help classify whether borderline features of a claim are on the technical or the non-technical side."
- "The appellant was heavily critical that the division merely alleged that all aspects of the invention were part of a business method with no supporting evidence. It was therefore deprived of a chance to argue for inventive step in a proper way. The business model had to be properly defined. Moreover, if there were no arguments why certain features were deemed to be part of the business model, the right to be heard was not respected. In the present case, a more detailed discussion should have taken place about the feature "parametric trigger", which in the appellant's view was electronic, measurable and therefore technical and which therefore should have been searched. The appellant asked the Board to define criteria that the examining division should use to prove that a feature was not technical."
- "The Board agrees that in this field there is a danger of simply asserting that certain features are non-technical with no basis. Indeed, the Board has seen decisions where the reasoning has not been fully convincing. But this is not one of them."
- "It is thus clear that some discussion can and ought to take place [about whether borderline features are technical]. However, rather like objections against added subject-matter, one is essentially trying to prove a negative which tends to be a rather short exercise. On the other hand, the appellant is trying to prove a positive which involves more argument. Thus an objection from the division should probably start with a prima facie assertion that the feature in question is non-technical, perhaps because it is in one of the exclusions listed in Article 52(2) EPC, or a related or analogous field. If this is uncontested then this would be enough. However the Board considers that it is then up to the appellant to provide arguments why there is a technical effect or that some technical considerations are involved. The division should consider these arguments and give reasons why they are not convincing. As mentioned above, the Board is satisfied that this happened in the present case."
- This analysis of the debate may be of even greater general relevance as the framework for Article 123(2), mutatis mutandis. I don't recall it having been spelled out for Art. 123(2) before but the outline approach seems to make sense.
- The Board seems to say the the opponent (or examining division) "is essentially trying to prove a negative" when arguing that a feature is non-technical, but at least when the argument is that the feature is in fact the implementation of a business method, the opponent seems to make an positive assertion.
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/05/t-055014-trying-to-prove-negative.html
