Key points
- This is an appeal against a refusal decision. "The invention concerns a web service enabling the creation, storage and sharing of documents (see published application page 1, lines 6 to 19). Such services are known from the prior art. The key idea is to allow new (prospective) users of the service to access only part of the available functionality in order to reduce resources consumed (page 1, line 30 to page 2, line 13). Claim 1 of the main request recites a method for creating and upgrading user accounts. The service's full users, having an account of the first type, may create their own documents and edit documents shared by others. By contrast, a prospective user, joining the service in response to an invitation from an existing user, gets an account of a second type not allowing him to create his own documents, but only to edit shared documents (page 12, lines 8 to 31)."
- "The main point of dispute in this appeal is whether discriminating between full users and prospective users with limited functionality is the solution to the technical problem of saving resources, as argued by the appellant (see section X, above), or a non-technical requirement that could be envisaged by the business person and thus part of the problem given to the skilled person under the COMVIK approach (see T 641/00 - Two identities/COMVIK) as argued by the division."
- "Decision T 1463/11 - Universal merchant platform/CardinalCommerce, further refining the COMVIK approach, set out that in the assessment of inventive step, circumstances under which inventions are developed in the real world have to be ignored to a certain extent. It introduced the concept of the notional business person who may formulate business requirements to be implemented but will not include in them any technical matter. The notional business person is a legal fiction representing a shorthand for a separation of business considerations from technical ones. Using this legal fiction is the price paid for an objective assessment; a real inventor does not hold such considerations separately from one another "
- "Under the CardinalCommerce approach, the test used in deciding on technicality of a feature is whether the notional business person could have come up with it. This boils down to determining whether there would have been at least one way to devise it without technical considerations. If so, it does not have technical character and may form part of the requirement specification regardless of what alternative ways of arriving at it were disclosed in the application or were conceivable."
- "In the present case, the Board judges that providing limited functionality for some users, such as not enabling the creation of documents, is a business decision which need not be based on technical considerations. There are apparent business reasons for doing it, for example charging the full user a higher subscription fee than the prospective user."
- The present decision is interesting because G 1/19 does not refer to T 1463/11 though it did refer to the follow-up decision T 0817/16. G 1/19 stated that "It was argued in the course of these referral proceedings that a simulation is of a technical nature and has technical effects if the relevant skilled person is a technically skilled person in the field of the simulated system or process (see e.g. the comments of the President of the EPO, points 23 to 25). This argument is partly based on T 817/16 (see Reasons, point 3.12), which relies on the (technically) skilled person in order to distinguish between technical and non-technical features. This approach may be suitable in some cases but may prove difficult in others where the skilled person for the simulation is different from that for the system represented by the model underlying the simulation. "
- " Concerning "simulating" the full user interface [as specified in the claims], the Board judges that including in the user interface a feature which is useless without an account upgrade, for example an empty document container, relates to the presentation of information and is not based on any technical considerations. The appellant's argument attempting to prove that this part of the solution derives technical character from effects produced when the user operates the upgraded user interface is not convincing. In addition to being speculative, it is a typical example of the "broken technical chain fallacy" in the sense of T 1670/07 - Shopping with mobile device/NOKIA, reason 11."
- The appeal was filed in 2014; the Board's first action was a preliminary opinion in 2020. The appeal procedure took 8 years. I don't know what the average is for Board 3.5.01. The prospect of having the patent application pending for 8 more years may of course precisely be the reason for filing the appeal, especially for this kind of software invention. In a way, the backlog at Board 3.5.01 may sustain itself.
EPO T 0909/14
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/2022/08/t-090914-upgrading-user-accounts.html
