6 May 2021
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Case - T 0258/03

Our extensive arguments in relation to whether a feature is ‘technical’ have proved instrumental in guiding practice for prosecution computer implemented-inventions.

In T 0258/03, Mewburn Ellis represented the applicant (Hitachi Ltd) in front of the EPO Board of Appeal (BoA), arguing for the reversal of a decision from the Examining Division. The decision refused an application related to a process of performing an online auction (specifically a Dutch auction, where the price of something offered is determined after taking in all bids to arrive at the highest price at which the total offering can be sold). The Examining Division refused the application for lacking an inventive step.

This case provided the BoA with an early opportunity to apply the Comvik approach to ‘mixed inventions’ which had recently been set out in T 641/00.

In T 641/00, the BoA set out the requirement that an invention will be assessed with respect to requirement of inventive step by taking account only of those features which contribute to technical character. Those features not contributing to the technical character, so called non-technical aspects, are instead incorporated into the technical problem as constraints to be met.

The BoA Decision in T 0258/03

In investigating the claimed invention, the closest prior art was found to be an auctioning system with an auctioneer’s station connected with various bidder stations.  The auction is of the Dutch type, where auction price (as monitored on an auction ‘clock’) sinks with time.  The bidders are required to follow the auction at their stations, and a bidder may stop the clock remotely using a pushbutton on their bidder station.  The first bidder to stop the clock is successful.  As real-time behaviour is of great importance in Dutch auctions, the time information is transmitted with the messages to determine the order of the stop commands.  So if two bidders press stop, the system is able to rule one the winner. 

In this context, the invention aimed to identify a successful bidder for a product offered for sale.  It works as follows: the auction starts with preliminary steps of data exchange between the client (bidder) computers and the server (auctioneer) computer in order to collect bids from participants.  Each bid includes two prices: a “desired” price, and a “maximum price in competitive state” price. After this initial phase, the auction is automatic and does not need the bidders to follow the auction on-line.  An auction price is set, and successively lowered (as is the way for a Dutch auction) until it reaches the level of the highest bid or bids as pre-determined in the “desired” price.  If several identical bids are found, the price is then increased until only the bidder having offered the highest “maximum price” is left.  They are declared successful.

It was argued that the technical effect of this resides in overcoming the problem in the prior art of delays in propagation of confirmation between the bidders and the auctioneer.  If the auction is performed online, as proposed in the closest prior art, these delays will influence the outcome of the auction.

The solution to this problem was adapting the rules of the auction so that it can be performed automatically, and so any data transmission delay is irrelevant.

However the BoA considered that this cannot contribute to a technical character because the innovation lay in the rules of the auction itself. That is, the invention was not a technical solution to the delay problem described, but rather a solution based on modifying the rules of the auction method.  The key finding by the BoA was that modifications to a business scheme or the like aimed at circumventing a technical problem, rather than solving it by technical means, cannot contribute to the technical character of the invention.

Ramifications

The decision was the first of its kind to consider this ‘circumvention’ type approach to the assessment of technical character.  It was has been cited a significant number of times since then, notably including G 3/08 and the recent G 1/19 decisions. 

Interestingly, it is also a decision which has worked its way into the assessment of computer implemented inventions before the UK IPO.  Broadly, the UK IPO’s test for technical contribution includes examining whether any of the five ‘signposts’ set out in AT&T Knowledge Ventures / Cvon Innovations v Comptroller General of Patents [2009] EWHC.  One of the signposts, number (v), is a determination as to whether the perceived technical problem is actual overcome by the claimed invention, as opposed to merely being circumvented.

Find the decision here.


Our team has a wealth of experience and are trusted by some of the most successful companies on the global stage to handle their opposition cases. We prepare and deliver creative and persuasive submissions, helping to shape EPO practice. In this blog series we explore some of the decisions that stand out for us.



This blog was written by Tom Furnival.

Tom is a Senior Associate and Patent Attorney at Mewburn Ellis. He handles a wide range of patent work, including original drafting, prosecution and opposition, particularly defensive oppositions, in the engineering, electronics, computing and physics fields. He also advises on Freedom-to-Operate, infringement issues and registered designs. Tom works with a mix of multinationals, start-ups, individual applicants and foreign attorneys. These are predominantly UK based, and in the high tech/mechanical engineering spheres.

Stephen is an experienced and successful patent professional with wide opposition experience. He has handled high value cases, multi-opponent cases, cases with parallel international litigation, and cases with substantial amounts of expert evidence. He is focused on obtaining the best outcomes for his clients, using his knowledge of opposition and appeal processes to provide helpful guidance and effective advocacy. His clients cover a diverse range of large, multinational and medium-sized companies in the UK, Japan and the US, as well as research institutes, universities and SMEs. He works primarily in engineering, materials and chemicals sectors, while specialising particularly in aeronautics, rail transport, power generation and medtech.
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