Key points
- The applicant of the application at issue is Swiss Reinsurance Company Ltd.
- Board 3.4.03 in the headnote: " If non-technical features have both a technical and a non-technical effect, the technical effect must be taken into account when assessing inventive step, but the technical effect must be clearly derivable from the application as a whole".
- This statement appears to combine two distinct rules: 1) "If non-technical features have both a technical and a non-technical effect, the technical effect must be taken into account when assessing inventive step" and 2) a "technical effect must be clearly derivable from the application as a whole".
- The arguments of the applicant: " Prior to automation, the handling of insured loss cases was handled by an insurance agent who determined the amount of loss to be reimbursed based on similar claims and the insurance policy. In the 1960s, attempts were made to automate the handling of claims by a computer. For this purpose, the procedures were parameterized, which led to an efficient (but less accurate) claims handling. However, there were parts that could not be parameterized. The present procedure solved this problem by automating these non-parameterized parts through pattern matching with historical data by use of seamless integration. The invention represented the complete automation of an insurance premium payment. Automation was technical as such and had a technical effect."
- The Board: " Automation is admittedly technical in itself. This is inherent in the very fact that the method runs on a computer. The board agrees with the Appellant that in the present case technical and non-technical features are interwoven and that generally non-technical features can have a technical effect. If non-technical features have both a technical and a non-technical effect, the technical effect must be taken into account when assessing inventive step, but the technical effect must be clearly derivable from the application as a whole."
- " The Board is not persuaded either that steps (b) to (d) in combination have a technical effect, i.e. improving the stability of the automated system of the invention, for the following reasons."
- "Disclosure as to how the algorithm is implemented in practice must be provided in order to give evidence that the algorithm has any proved further technical effect with respect to known algorithms and that it provides an improvement over the prior art. The present invention has the object to provide a stable system. However, as discussed above, no details are given why the proposed system should be considered to provide better stability than any other system, for example, how and at which level improved stability or accuracy of the algorithm is achieved, which kind of data is used for pattern matching, how historical data is selected, prepared and compared, and which parameters are matched. The only data provided in the application is pure economical data (see e.g. Fig. 3)."
- Note, " The system should be stable and "give basis to better investment grounds for partners and clients supporting the system" (description, page 3, lines 28-33)." The term 'stability' of the automated insurance system may refer, possibly, to financial stability, but the Board's decision does not comment on that point.
- "To summarise, any further technical considerations or effect must be derivable from the application as a whole and the claims must comprise the specific features which contribute to the further technical effect of the invention, ... "
- The Board adds: "... since it must be made clear to third parties what the technical part of the invention is, and the technically skilled person needs these details to carry out the invention (Article 83 EPC). This is not the case for present claim 1."
- As a comment, it may also be said that an inventive step is to be based on features specified in the claim and the technical effect provided by those features (if any).
EPO
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/2022/11/t-069819-technical-effect-must-be.html
